22 September 2016, Singapore
As Singapore gears towards an innovation-driven economy, more and more businesses are recognising the potential that good design has to enhance the value of their products.
This is demonstrated by the increasing number of designs filed with the Intellectual Property Office of Singapore (IPOS). According to statistics provided by IPOS, there has been a 46% increase in design applications filed by Singapore-based or local applicants from 2005 to 2014, with jewellery and communication devices being the most popular types of designs filed.
Recognising the increasing significance of designs as a potential growth sector, the Singapore Design 2025 Masterplan was released by the Design Singapore Council, revealing a 10-year initiative intended to develop the design sector in Singapore and to expand the role of designs as a driver of innovation and value creation.
The fostering of designs as a key innovation driver must be supported by the strengthening of the legal framework for the protection of corresponding intellectual property rights. Businesses must be able to fully capitalise upon their intellectual property rights in the design, as well as rigorously enforce these rights against third party infringers, in order to derive the full benefits from their design works.
To achieve this strengthening of the legal framework, in conjunction with the release of the Masterplan, a review and reform of the Singapore Registered Designs Act (RDA) has been undertaken. The legislative reform, being the first of its kind since the RDA’s enactment in 2000, is welcomed by legal practitioners and design owners alike. The proposed amendments ensure that the legislation is up to date in addressing the issues and challenges posed by newer and non-traditional forms of design arising from technological advances and changing business models, and in affording stronger design protection to design owners.
Amendments to the RDA are expected to be implemented in late 2016.
What, then, is the practical significance of these legislative amendments to design owners?
Under the present regime, a design only qualifies for registration if it is applied to an article via an “industrial process”. This restrictive definition limits the protection of designs to factory-manufactured and industrially produced articles, which is not in keeping with the newer and more innovative methods for the making of products in this day and age (e.g. by 3D printing).
The removal of the “industrial process” requirement also presents a broader and more inclusive scope for the types of registrable designs, which can now encompass handmade or artisanal items. Undoubtedly, this is good news for small businesses in the artistic and creative industries, which can now rely on the RDA for protection of the intellectual property rights in their design works.
Designs no longer have to be applied onto a physical article. Instead, virtual designs projected onto various different mediums and surfaces, or even space (e.g. a virtual keyboard), would be eligible for protection under the revised RDA. To qualify for protection, however, the subject matter of the design must nonetheless be sufficient, certain, and definable. In other words it must:
Graphical User Interfaces (GUIs) refer to the visual interface which allows a user to interact with a computer system. The importance and commercial value of a GUI has long been recognised by the IPOS, which had previously issued a document to confirm the registrability of the GUI under the current RDA. In this regard, the revamped RDA will continue to affirm the registrability of GUI designs, whether static or animated. However, the GUI designs must be:
Under the current regime, a design must satisfy the criteria of novelty before it is registrable. In other words, it must not have been disclosed or made available to the public anywhere in the world prior to the filing of the application, save in limited prescribed circumstances (e.g. at selected international exhibitions).
The strict requirement for novelty, as well as a general lack of awareness of the legal position, has caused a number of design owners and designers to unwittingly jeopardize the novelty of their own designs by disclosing these to the public prior to filing an application. Even when design owners are aware of the legal requirements, they are often faced with a dilemma as to whether or not to invest in the filing of a design application, given the costs involved and the uncertainty as to the market’s receptivity to their products.
The revised RDA addresses these issues by allowing a 12-month grace period for design owners to file the design application after disclosure of the design, in line with the grace period available under EU Community design law. The restriction on disclosure at international exhibitions will also be removed which will enable design owners to test the popularity of their designs on the market before deciding whether filing an application is worthwhile. This also provides a “second chance” to design owners who wish to seek protection of their design rights after disclosure of their design.
The amended legislation reverses the default position of ownership of rights in a commissioned design work, with the intention of providing stronger protection to individual designers and small-medium sized enterprises, such as design-houses, who might be unaware of their legal position and rights.
Whereas the commissioner used to own the rights in a commissioned design work by default, the amended legislation means that the default position is that ownership falls to the designer. Parties, however, remain free to modify this default position amongst themselves via contractual agreements.
Under the present regime, design protection is afforded to the features identified in a registration certificate, as to the shape, configuration, pattern or ornamentation, regardless of colour.
The amended legislation, on the other hand, recognises that the use of colours (and their interplay or combination) could create a distinctive visual effect which serves as a significant design feature of a pattern or ornamentation, and is thus worthy of protection. Colour is therefore protectable as a design feature in the revised legislation.
It should be noted, however, that the design protection will not extend to colours per se.
Overall, the reformed RDA will bring the regime more closely into alignment with the business practices and realities in the present-day design landscape, and will more effectively address issues posed in protecting newer and more innovative forms of designs.
Designers and design owners can now look forward to stronger protection of their design rights under the RDA, which will be effected by changes such as the broadening of the scope of protection, and the relaxation of the grace period allowed for the filing of a design application after the disclosure of the design to the market. It follows that this will also mean an increase in the valuation of design registrations for businesses.
Designers and design owners should closely monitor the legislative changes expected to take place at the end of this year in order to effectively leverage the stronger protection of design rights available following this reform.
Originally published in DesignWrites 9th Edition. Co-authored by Ling Yee Neo.
Lorraine is highly regarded as a leading intellectual property practitioner with experience in international and cross-border issues.
Lorraine is the joint managing partner and head of the Intellectual Property & Technology Group of our office in Singapore. Lorraine is highly regarded as a leading intellectual property practitioner with experience in international and cross-border issues. Lorraine is the joint managing partner and head of the Intellectual Property & Technology Group of our office in Singapore.
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