Apr 05 2017 | by OrionW
Singapore’s Registered Designs Act (Chapter 266) (“RDA”) came into force in 2000. The RDA protects designs – meaning the shape, configuration, pattern or ornament applied to an article of manufacture by an industrial process – by granting the registered owner the exclusive right to make in Singapore, and to import into Singapore, articles for sale or hire to which the design is applied. Designs can be protected for up to 15 years.
The RDA’s focus on designs for physical objects (“articles of manufacture”) is unsuited to protect designs for the growing class of products that do not have a tangible form. To modernise the RDA, and to better support Singapore’s design industry generally, the Registered Designs (Amendment) Bill 2017 (“Amendment Bill”) was tabled in Parliament in early April 2017.
The Amendment Bill seeks to update the RDA in several important respects:
The objects to which designs can be applied would be expanded to include articles manufactured by any process, including by hand, and to non-physical products.
The definition of ‘design’ would be expanded to include colours.
In the case of a commissioned design, ownership of the design would by default remain with the designer, meaning the person or persons who create it. This changes the RDA’s default rule that the commissioner of a design would own the design. Ownership of a design can still be transferred by agreement or operation of law.
A grace period of 12 months before an application for registration is filed would be established during which the designer may publicly disclose the design without affecting its registrability. In contrast, the RDA provides a 6 month grace period and only for disclosures in limited circumstances.
An application for registration could include multiple designs if the objects to which all the designs would be applied are all in the same class or classes.
It is worth noting that the Bill would narrowly define a “non-physical product”. In addition to not having a physical form, a non-physical product must be produced by projection on a surface or into a medium such as air or water, and must have a utilitarian function. The Amendment Bill identifies a virtual keyboard as an example of a non-physical product. A projection that only portrays the appearance of something or that only conveys information would not qualify as a non-physical product.
If the Amendment Bill becomes law, corporations will need to consider changing their operating procedures in two important respects:
1. In light of the change in default ownership of commissioned designs, corporations should review the agreements under which they commission design work to ensure ownership of the designs is expressly assigned to them, if that is their expectation.
2. With the longer and broader 12 month grace period, corporations could adjust their registration practice to file after a new design has been in the market for several months. This would enable cost savings by electing not to protect designs that are abandoned before the filing deadline.
Please contact us if you have questions concerning the Amendment Bill or about the Registered Designs Act generally.