Legal Bulletin November 2016

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Published date: 29 Nov 2016

IPOS seeks feedback on proposed designs-related legislative amendments

On 11 November 2016, the Intellectual Property Office of Singapore (“IPOS”) announced that it is seeking feedback on proposed designs-related legislative amendments. The consultation closes on
11 December 2016.
 
When the Ministry of Law (“MinLaw”) and IPOS completed the review of Singapore’s registered designs regime on 16 March 2016, both parties jointly issued a “Final Report - Review of the Registered Designs Regime” (“Final Report”) (available on the MinLaw website www.mlaw.gov.sg, or by clicking here) which sets out a list of 20 conclusions. Please click here to read an article entitled “MinLaw and IPOS complete review of Singapore’s registered designs regime” that was featured in a previous issue of the Allen & Gledhill Legal Bulletin (March 2016).
 
The proposed designs-related legislative amendments currently under consultation relate to some of the conclusions from the Final Report. Set out below are the key proposals which will be implemented through the proposed legislative amendments:
 
·         Broadening scope of design protection: The new definition of “design” in the Registered Designs Act (“RDA”) will relate to things which are “articles” as well as things which are “non-physical products”. “Non-physical products” is a new category in the RDA which will extend design protection to virtual or projected designs. The IPOS Designs Registry intends to amend its practice direction to also cover non-physical products. The existing reference to “applied to an article by any industrial process” will be removed because of the inclusion of handmade items in the proposed amended definition of “article”. The new definition of “design” will also specify “colours” as one of the “features” of a “design”. There will also be amendments to the list of exclusions to the definition of “design”.
 
·         Treating the designer as owner of a design created under commission: Section 4 of the RDA will be amended so that in the situation where a design is created under a commission, the designer is treated as the owner of the design by default. Such rights can still be assigned to the commissioner by written agreement.
 
·         Broadening of grace period: The existing section 8 of the RDA will be replaced with a new provision to increase the length of the grace period for pre-filing disclosures from six months to
12 months. The requirement that disclosures can only be made at select international exhibitions will be removed. IPOS is also proposing that
the amended section 8 of the RDA would apply where the disclosure has been made on or after the commencement date of the new designs legislation. The existing section 8 of the RDA will still continue to apply where the disclosure was made before the commencement date of the new designs legislation.
 
·         Maintaining minimal overlap between design protection and copyright protection: Legislative provisions relating to the overlap between design protection and copyright protection will be amended for clarity, as well as for consistency between the RDA and the Copyright Act. For example, section 7(3) of the RDA as well as Rule 9 of the Registered Designs Rules will be amended to exclude from registration non-physical products of a primarily literary or artistic character. For such items, protection should be sought under copyright as a literary or artistic work. To ease confusion and lack of awareness about the legislative regime governing the interface between copyright protection and design protection, IPOS and/or its training arm IP Academy will organise awareness events in partnership with industry and design associations to educate the design community.
 
·         Allowing filing of multiple designs within a single application and division of design applications: Section 11 of the RDA and Rule 22 of the Registered Designs Rules will be amended to permit multiple designs to be filed in the same design application subject to certain conditions:
(i) t
he applicant can elect to file multiple designs in the same application only at the point in time when the applicant first lodges the design application, (ii) the articles or non-physical products to which the multiple designs relate to, must all relate to the same class, or alternatively, must all relate to the same classes, and (iii) the maximum number of designs that may be filed in one application shall not exceed the number as specified in practice directions issued by the Registrar.
 
·         Reaffirming that dynamic designs can be registered: The new definition of “design” in the RDA is flexible as it does not restrict the features of shape, configuration, colours, pattern or ornament that are applied, to only static features. It is therefore possible for such features to be dynamic in nature. Nor does the definition of “design” specify how these features are to be applied to an article or to a non-physical product. Going forward, IPOS proposes to have a practice direction that applies to all design applications where the features of appearance of the design are dynamic in nature, and for such designs, applicants will be required to file the “design” through a series of static representations. The static representations that are filed are very important, as they will be taken into consideration by the court when determining the issue of infringement.
 
Reference materials
 
The following materials are available from the IPOS website www.ipos.gov.sg:
 
 
 
 
 
 
 
 
For further information, please contact:
 
+65 6890 7883
 
+65 6890 7516
 

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