Today’s second blog post takes a closer look at what SMEs should pay attention to when registering their designs in Singapore. It gives a brief overview of design protection in Singapore, followed by a case study demonstrating the importance of consulting with local experts or lawyers before filing for design registration in Singapore.
Registered Designs in Singapore
A registered design is a right granted to the owner of a design to stop others from making, importing or selling, without their permission, an article to which that design or a design not substantially different from it has been applied.
In order to obtain a registered design, the design must be ‘new’ (i.e. not yet published or disclosed to the public) at the time the application for registered design protection is filed. It is possible to claim the filing date of an earlier application filed in a country that is a member of the Paris Convention or World Trade Organisation (WTO) for protection of the same design, provided that the Singapore application is filed within six months of the earlier application. Therefore, SMEs should ensure that their design is not disclosed to others until an application has been filed.
SMEs should consider applying for a registered design as soon as possible, as Singapore has a ‘‘first-to-file system’’. That is, the first person to file an application in respect of the design will have priority over others. This means that if a third party files his/her application on the design before the design owner, any registered design obtained afterwards will be in danger of being revoked for lack of ‘novelty’.
Singapore became a Member of the 1999 Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs on April 17, 2005. The Hague Agreement makes it easier for foreign businesses to obtain industrial designs in Singapore.
Design registration application must include the statement of novelty, but the Singapore Intellectual Property Office only conducts formalities examination and not a substantial examination, which means that in theory a design that lacks novelty could still be registered. Similarly, a design that does not meet all requirements to be protected under Singapore design protection laws could theoretically still be registered in the country. This however, may cause problems in the future, as the below case study reveals.
The below case study explains the importance of SMEs discussing design registration with local experts or lawyers who could help to make sure that the SMEs’ design would actually comply of the laws and regulations concerning registered designs in Singapore, so that once registered, the design could be enforceable and might not become invalidated at a later stage.
Company P and D were two independent manufacturers of electrical isolators in Singapore. Company P alleged that Company D’s model of its electrical isolator which had an attached right-angled jack plug infringed its registered industrial design for electrical isolators.
Company P filed a lawsuit against Company D before the Singapore Civil court. Company D argued that (1) the registered industrial design was invalid; and (2) there was no infringement by its product.
The court found that the registered industrial design was invalid because it had been disclosed prior to its application date and was thus non-novel. Further, the design fell into certain categories of design which could not be registered. Under Singapore law, if a design is solely functional in nature (e.g. dictated by industry standards) or its features served the purpose of accommodating and enabling other articles to perform their function (e.g. shape or dimensions of the design planned to be compatible with other articles). Lastly, the difference in orientation of the jack plug in Company D’s electrical isolator rendered it substantially different from the registered design such that there was no infringement.
- Owners of registered industrial designs should be reminded that as there is no substantive examination of the design’s registrability, there can be increased uncertainty as to whether the design can survive an attack on validity.
- Owners must ensure that the industrial design does not fall within any of the exceptions to registrability as provided under the applicable law.
- Articles must be identical or substantially similar to the registered industrial design before infringement will be found.
South-East Asia IPR SME Helpdesk Team
The South-East Asia IPR SME Helpdesk supports small and medium sized enterprises (SMEs) from European Union (EU) member states to protect and enforce their Intellectual Property Rights (IPR) in or relating to South-East Asian countries, through the provision of free information and services. The Helpdesk provides jargon-free, first-line, confidential advice on intellectual property and related issues, along with training events, materials and online resources. Individual SMEs and SME intermediaries can submit their IPR queries via email (email@example.com) and gain access to a panel of experts, in order to receive free and confidential first-line advice within 3 working days.
The South-East Asia IPR SME Helpdesk is co-funded by the European Union.
To learn more about the South-East Asia IPR SME Helpdesk and any aspect of intellectual property rights in South-East Asia, please visit our online portal at http://www.ipr-hub.eu/.