Registered designs in Singapore (Part 3)

Except for the period of protection, the Registered Designs Act 2000 ("the Act") does not make any change to the existing scope of protection for a design under the Copyright Act ("CA"). Under the CA, the scope of protection depends on whether the design is registered under the Act or, if not registered, whether it has been industrially applied and commercially exploited.

Registered design

Section 74(1) of the CA provides that, except for cases falling within the Schedule (concerning false registration of industrial designs),

"Where copyright subsists in an artistic work and a corresponding design is registered or deemed registered under the Registered Designs Act 2000, it shall not be an infringement of the copyright in the work -

(a) to do anything during the subsistence of the copyright in the registered design, which is within the scope of the copyright in the design;or

(b) to do anything after the copyright in the registered design has come to an end, which, if it had been done while the copyright in the design subsisted, would have been within the scope of that copyright as extended to all associated designs and articles."

The effect of this provision is that during the term of the protection conferred by registration under the Act (i.e. maximum 15 years), any act which is an infringement of the registered design right would not amount to copyright infringement in the artistic work. After the term of protection, the reliance on copyright becomes more restricted. This is because any act which would have infringed the registered design during the term of protection would not, after the term, infringe the desigh right as well as copyright in relation to

(a) articles for which it was registered; and

(b) all associated designs and articles for which it could have been registered.

The expression "deemed registered" refers to designs which are registrable under the Act but were not.

Unregistered design industrially applied and commercially exploited

Section 74(2) of the CA provides that where copyright subsists in an artistic work, and -

(a) a corresponding design is applied industrially (whether in Singapore or elsewhere) by or with the licence of the owner of the copyright in the work;

(b) articles to which the design has been so applied are sold, let for hire, or offered for sale or hire whether in Singapore or elsewhere; and

(c) at the time when those articles are sold, let for hire or offered or exposed for sale or hire, they are not articles in respect of which the corresponding design has been registered or is deemed registered under the Act,

the following consequences arise:

(1) During the period of 15 years, it shall not be an infringement of the copyright in the work to do anything which, at the time when it is done, would have been within the scope of the copyright in the design if the design had, immediately before that time, been registered in respect of all relevant articles; and

(2) After the period of 15 years, it shall not be an infringement of the copyright in the work to do anything which, at the time when it is done, would have been within the scope of the copyright in the design if the design had, immediately before that time, been within the scope of the copyright in the design as extended to all associated designs and articles.

What this means is that if the copyright owner has a corresponding design of his artistic work and wants to industrially apply and commercially exploit it, he should apply for design protection under the Act. Such a design would still be considered to be new even though the artistic work had been published (section 9(1) of the Act). If he does not apply for design protection but proceeds to industrially apply and commercially exploit the design, he would not be able to rely on copyright protection during the period of 15 years when the design should have been registered. After the period of 15 years, he cannot rely on copyright protection not only in respect of the relevant articles but also associated designs and articles.

Property in Designs

A registered design or any right in it is considered personal property and may be assigned or transmitted in the same way as any other personal property.

A person claiming to be entitled to any interest in the registered design by virtue of a transaction should register the transaction, failing which the transaction is ineffective as against a person acquiring a conflicting interest in the registered design in ignorance of the transaction.

Criminal Offences

The Act makes it an offence for any person to make a false entry in the Register, to make any thing false purporting to be a copy of an entry in the Register or to produce any such thing as evidence. It is also an offence to falsely represent that a design is registered when it is not

Transitional Provisions

Designs registered before the date of commencement of the Act are deemed registered designs under the Act if the registration has not expired or been cancelled by that date. The period of registration of such designs may be extended for additional periods of 5 years at a time, but may not exceed 25 years from the date of its registration under the United Kingdom Act.

Where such a design is ordered to be rectified in the United Kingdom, the Registrar shall, either on his own initiative or upon application by an interested party, make a corresponding rectification in Singapore.

Conclusion

The Act is not only long overdue but also timely in Singapore where great emphasis is currently being placed on the protection of intellectual creation as a catalyst for further economic growth. It is part of a national programme to make Singapore a centre of excellence for innovation and creativity. It also reflects Singapore's commitment to effective protection and enforcement of IP rights.

Tan Tee Jim,SC
Allen & Gledhill

(Editor’s Note: This article first appeared in Asian Legal Business, July 2003 and is kindly reproduced with permission from the publisher)

On 24 June 2003, the Singapore Court of Appeal in Peng Lian Trading Co v Contour Optik Inc & 2 Ors [2003] SGCA 25 gave judgment and allowed the defendant’s appeal relating to the defendant’s contention that claims 3 and 4 of the patent in suit lacked inventive step. The plaintiffs did not sue on these claims but on claims 1 and 2 only.

The case involved two patents in respect of spectacle frames comprising a primary frame and an auxiliary frame. The inventions comprised in the patents were the methods by which the auxiliary frame was attached to the primary frame. The methods of attachment involved the use of magnets and magnetisable substances.

One of the patents had four claims. The plaintiffs sued the defendants for infringing claims 1 and 2 of the patent by selling spectacles embodying the inventions without permission. The defendants challenged the validity of all the four claims and sought an order for their revocation.

The trial judge found that claims 1 and 2 of the patent were not new and did not involve an inventive step. However, he found that claims 3 and 4 were new and involved an inventive step.

Unfortunately, the plaintiffs had furnished to the registrar false information of a material particular. The trial judge found that the patent was not the same or substantially the same invention as the corresponding patent on which the patent was based. This was sufficient for the trial judge to revoke the patent under Section 80 of the Singapore Patents Act.

However Section 80(5) of the Singapore Patents Act provided for mitigation of “the blunt sword of revocation”. The trial judge allowed the plaintiffs to amend the patent within six months from the date of the judgment to conform to the narrower scope of the corresponding patent.

Both the plaintiffs as well as the defendant appealed, but the plaintiffs decided to withdraw their appeal a few days before the hearing. The defendant proceeded with the appeal.

The defendant appealed against the trial judge’s finding that claims 3 and 4 of the patent involved an inventive step. As a preliminary point, the defendant contended that it had standing to challenge the validity of claims 3 and 4 of the patent even though the plaintiff did not allege infringement of claims 3 and 4. In any event, the defendant contended that the court had jurisdiction to determine the validity of claims 3 and 4.

The Court of Appeal did not expressly rule on this point. However, the Court of Appeal allowed the appeal and declared that claims 3 and 4 were invalid and ordered them to be revoked. By necessary implication, the Court of Appeal’s decision means that all the claims of a patent are open to challenge for want of validity and can be revoked even if the patentee did not sue on all of them.

In the light of the Court of Appeal’s decision that claims 3 and 4 were invalid, there was no longer a basis for the plaintiffs to amend the patent.

This case is also significant in that the Singapore High Court had to consider for the first time whether a patentee had furnished to the Registrar false information of a material particular under Section 80(1)(f) of the Patents Act.

The patent was obtained pursuant to Section 29(1)(c) of the Patents Act. Under this route, the patentee relied on the approval given to a corresponding application in a foreign jurisdiction. In this case, the plaintiffs relied on a corresponding application filed in the United States prior to filing in Singapore. The Singapore patent was granted on the basis of that US patent and the same priority date as the US patent.

Section 29(1)(c) of the Patents Act is one of the routes towards getting a patent granted in Singapore. The plaintiffs had applied for the patent under this subsection. An advantage of this route is that there is no formal examination by the Singapore Registry of Patents.

However, the patentee must have filed a “corresponding application” for a patent at any prescribed patent office. Another advantage of this route is that the patentee can rely on the priority date of an earlier foreign application. However the foreign application must be “the same or substantially the same invention” as the one filed in Singapore.

In reaching his decision that the plaintiffs had furnished false information on a material particular, the trial judge found that the plaintiffs had in effect gained a dispensation of examination in respect of the widened scope of the claims and an earlier priority date for that widened scope than that which the plaintiffs would otherwise have been entitled to.

This case is a reminder that patent infringement actions carry certain risks and thus the specifications of a patent must be appropriately drafted to minimize such risks.

ATMD acted for the defendant.

Alban Kang
Koh Chia Ling
Alban Tay Mahtani & de Silva

LES(S) Seminar Series
22 October 2003, 4:00-7:00 PM
Please note that the venue has been changed to Rodyk & Davidson, 80 Raffles Place, #33-00 UOB Plaza 1

LES(S) has brought together a panel of distinguished speakers consisting of Mr Christian Appelt, Dr Heinz Goddar and Mr Alan Kasper, who will be speaking on recent developments in technology transfer in the European Union as well as Business Method Patents in the US and Europe. As places are limited, do register your attendance early in order to avoid disappointment. Closing date for registration is 14 October 2003.

The seminar programme and registration form can be obtained from Ms Rosa Kang at less_sec@yahoo.com.sg.

LES(S) Basic Licensing Course
Orchard Hotel, 21-22 November 2003

LES(S) is pleased to present its Basic Licensing Course. The course covers aspects of the licensing of intellectual property - trademarks, copyright, patents and registered designs. The course also includes a practical workshop where the participants will learn to identify the issues in a hypothetical licensing deal and practice negotiation in teams. The maximum number of participants is limited to 24. Closing date for registration is 7 November 2003

The course outline and registration form can be obtained from Ms Rosa Kang at less_sec@yahoo.com.sg.

LESI "Train the Trainer Session - Asia"
Tokyo, 12-14 December 2003

LESI Annual Conference
Paris, 28 March-1 April 2004

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