REGISTERED DESIGNS : THE PROTECTION OF INDUSTRIAL DESIGNS IN SINGAPORE

• Author: JUPITER KONG CHOON
• Citation: (1994) 6 SAcLJ 409
• Date: 01 December 1994
• Published date: 01 December 1994

“The past is a foreign country: they do things differently there” — L P Hartley, “The Go-Between”

A Singapore company looking to protect its industrial design in Singapore has to register the design in the United Kingdom. This company would have to act with great expedience, because if some other party manages to beat the company to registration of the design in the UK, it would be difficult to challenge the registration. Besides the difficult points of law involved, any small company starting off in Singapore would have to face considerable expenses and logistical problems in order to challenge a registration made in the UK.

The implication of failing to remove the rogue registration is that the company will not be able to register the design for itself in the UK. Protection for the company’s design in Singapore would be lost, however deserving it may be. Worse still, its use of the design may be vulnerable to attack in Singapore. Unfortunately, the probability of some other party successfully registering the company’s design is not too remote, considering the fact that the test of “novelty” in the UK is based upon publication only in the UK.

Such is the state of Singapore law relating to registered designs. We have been over-reliant on the British registration system, creating inequities that only we can free ourselves from. This article seeks to examine the root of our problems and to map out the direction in which we should proceed in the immediate future in the realm of registered designs.

THE LAW OF REGISTERED DESIGNS IN SINGAPORE

The regime of registered designs meets demands for the protection of design elements in articles mass-produced by an industrial process. Its advantage to an innovator is that it gives him a lead-time to introduce a new product onto the market. This is a system which recognises innovation in industry — and rewards it.

The United Kingdom Designs (Protection) Act1 forms the basis of our registered designs protection. It provides, inter alia, that the registered proprietor of any design registered in the UK under the Registered Designs Act 19492 or any person deriving his right from such registered proprietor by assignment shall enjoy in Singapore the like privileges and rights as though the certificate of registration in the United Kingdom had been issued with an extension to Singapore.3

To be registrable, a design must satisfy the following requirements:

1. (a) it must be new;

2. (b) it must have eye appeal;

3. (c) the features of shape or configuration of the design of an article must not be dictated solely by the function which the article has to perform;

4. (d) the features of shape or configuration of the design of an article must not be dependent upon the appearance of another article of which the article is intended by the author of the design to form an integral part; and

5. (e) the appearance of the article based on the design must be material.4

At the outset, it must be said that registered designs form a very important part of our system for the protection of industrial designs. If a design is registrable and registered, the RDA 1949 will confer on the registered proprietor of the design a monopoly over its use. The monopoly for a registered design is a stronger one than for copyright5 in that there is no need to prove copying. Registration will give the exclusive right “(a) to make or import (i) for sale or hire, or (ii) for use for the purposes of a trade or business, or (b) to sell, hire or offer or expose for sale or hire, an article in respect of which the design is registered”.6

The maximum period of protection is 25 years from the date of registration.7 The monopoly will however only extend to the articles in respect of which the design is registered and to which that design has been applied.

THE REASONS FOR CHANGING OUR SYSTEM

1. Test for “novelty”

Although the requirements for registration and the protection registration offers are largely clear, the whole problem with our system of “registered designs by importation” is that it does not cater to local needs. There are several requirements which a design has to meet in order to be registrable, as laid out in section 1 of the RDA 1949 (above) and a primary requirement for registrability is the need for “novelty”. The test of whether a design is new is whether it has been “published in the United Kingdom in respect of the same or any other article before the date of the application”.8 Thus, if there has been prior publication of the design in the UK,

even if it had only been embodied in a document, the design will no longer be regarded as new.9 The problem with this test in the local context is: What does it matter whether a design made by a Singaporean for use in Singapore has been published in the United Kingdom for the purposes of deciding whether he has a right to exclusive use of it in Singapore?

2. The necessity to register industrial designs

There is an overlap between the systems of copyright protection and protection under the RDA. However, statutory intervention has ensured that an industrial designer should not rely solely on any rights founded on copyright. Most notably, under Singapore copyright law, where the design is registrable under the RDA but the design has not in fact been registered, the general effect is that copyright cannot be asserted to protect the design in the situation where the design has been applied industrially with the consent of the copyright owner and articles to which that design has been so applied are sold, let for hire, or offered for sale or hire in Singapore or elsewhere.10 The phrase “applied industrially” has been defined by regulations to mean application to more than 50 articles.11

The essence of these provisions is that once the copyright owner has decided to apply his design industrially and to exploit it commercially, then he will not be able to rely on copyright protection; it will be necessary for him to seek registration of the design. If he does not do so, then during a period of 15 years (commencing from the date on which the articles were first sold, hired or offered for sale or hire), he cannot use copyright to restrain acts which would otherwise have been covered by the registered design monopoly. Once this 15-year period expires, then the copyright bar broadens to include all associated designs and articles for which registration could have been sought.12 If, however, the...