Protecting Your Design in Singapore: Rights, Registration and Renewal
If you are a business owner, you may wish to protect the design of your product by registering it under the Registered Designs Act (RDA), which governs the registered designs regime in Singapore. Designs intended to be of industrial application (i.e. used in relation to more than 50 manufactured products) must be registered under the RDA.
What is a Design?
Under the RDA, a design refers to the features of a shape, configuration, colours, pattern or ornament that give a product its external appearance. It should be noted that colours are not protected unless they are applied in combination with or give rise to one other design feature (i.e. shape, configuration, pattern or ornament).
The design can be two-dimensional and/or three-dimensional. The product that the design is applied to can be physical (e.g. jewellery or furniture) or non-physical (e.g. a virtual keyboard that is projected onto a surface, or a typeface that is used in word-processing software).
Differences between designs and works protected by copyright
An original artistic work such as a painting, sculpture, drawing or engraving may be protected by copyright. The work enjoys copyright protection from the moment of creation and does not have to be registered with the authorities.
At first glance, there appears to be an overlap between the copyright and registered design regimes since a design may also be considered an artistic work. However, a design that is registered or qualifies for registration under the RDA does not enjoy copyright protection.
Hence, if your artistic work is eligible for registration as a “design” under the RDA, you should register it under the RDA to obtain ownership rights to your design (see below).
Difference between designs and works protected by patent
Unlike a patent, which protects the technical functions of a product, a registered design protects the product’s visual appearance.
You may wish to seek protection under the patent regime if your main concern is protecting the technical functions of your design or if your design offers a solely functional purpose.
Benefits of Registering a Design
Registering a design allows you to obtain ownership rights to that design, which are extended throughout Singapore. This gives you the exclusive right to control how the design is used.
For example, you can prevent competitors from using the design without your consent, and this can protect your market share. You are also better positioned to exploit the design for commercial gain as you can assign, license or mortgage your rights in the registered design to others.
Who Owns the Rights in Registered Designs?
As a general rule, the designer owns the rights in the registered design. However, if the designer is an employee who created the design in the course of his employment, the rights in the registered design will be owned by the employer unless the parties agree otherwise.
In a case where the design is generated by a computer and there is no human designer, the person who made the arrangements necessary for the design to be created is deemed to be the designer.
For example, a software engineer who creates a computer program that is able to generate the designs through artificial intelligence would be considered the designer.
How to Register a Design in Singapore
To qualify for registration under the RDA, the design must be new. It must not have been registered in Singapore or elsewhere previously, or published anywhere in the world prior to the date of application.
Additionally, the RDA excludes the following from registration:
- Designs that are contrary to public order or morality
- Computer programs or layout designs of integrated circuits
- Designs for products such as wall plaques, medals and medallions, and printed matter primarily of a literary or artistic character (e.g. calendars or certificates)
- Methods or principles of construction
- Designs that are solely functional
- Designs that are dependent upon the appearance of another product, where the designer intends for this product to form an integral part of the design or enable the product to be connected to, or placed in, around or against, another product so that the latter product may perform its function.
Finally, prior to submitting an application, you should also conduct a search of existing designs using the IPOS Digital Hub by the Intellectual Property Office of Singapore (IPOS). This will help you check if your design already exists, and avoid possible infringements of existing registered or filed designs.
Stage 1: Submission of application
You can file an electronic application using Form D3 through the IPOS Digital Hub. If you wish to submit the form manually, additional service bureau charges may apply. Your application should include:
- The designer’s name and address;
- A statement of novelty describing which features of the design are considered new and which you wish to claim rights to;
- At least 1 representation(s) of the design, such as line drawings or photographs; and
- (Optional) A request for deferment if you wish to defer the publication of the design in IPOS’ Designs eJournal for up to 18 months from the application date. Otherwise, your design will be published upon registration.
For more information on the types of representations that are accepted by IPOS, you may refer to page 15 of IPOS’ Registered Designs Infopack. Please note that your application must also be lodged in the appropriate class or subclass of the design.
An administrative fee of S$200 is payable to IPOS. To defer the publication of your design, an additional payment of S$40 is required.
If you wish to amend your application after it has been submitted, you can file for an amendment using Form D5. An additional administrative fee of S$45 will be charged.
During the interim period when an application has been filed but the Certificate of Registration has not yet been issued, it is a criminal offence to apply the words “Registered Design” to your products. The words “Pending Registration” should be used instead.
Stage 2: Formalities examination by IPOS
Once you have submitted your application, IPOS will check that the information you have provided is accurate and complete. If your application fails to meet certain requirements, IPOS will send you a letter informing you of the deficiencies in your application.
You must respond to this letter in writing within 3 months from the date of the letter. Sometimes, IPOS may request that you file an application to amend your registration application using Form D5. In such cases, a further administrative fee of S$45 is payable.
Failure to respond to the deficiency letter may result in your application being treated as withdrawn.
Should you wish to reinstate the application, you will have to do so by filing Form CM13 within 6 months after the date the application was withdrawn, along with a reply to the deficiencies and a fee of S$100.
Stage 3: Registration and publication of the design
You can generally expect the registration process to be within 4 months from the filing date of the application. The process may take longer if your application is incomplete or contains deficiencies that must be corrected.
Once your design is registered, you will be issued a Certificate of Registration. Your design will be published in the Designs eJournal and the IPOS Digital Hub register unless you previously requested for a deferment of the publication.
What if you have already registered your design overseas?
The registration system in Singapore operates on a first-to-file basis. This means that if multiple people wish to claim ownership over the same design in Singapore, the first person to file the application will have priority over later claims for the same design and will enjoy ownership rights to that registered design. Persons who subsequently try to file an application will not succeed as the design is no longer considered new.
This principle also applies to designs that have already been registered overseas. Generally, such a design is not eligible for registration in Singapore unless certain requirements are met.
If your overseas application was filed in a country that is a party to the Paris Convention (e.g. China or Japan) or a member of the World Trade Organization (e.g. Australia or the United Kingdom), and you file for registration in Singapore within 6 months of filing your first overseas application, you can claim priority to the ownership rights in the design.
After Your Design Has Been Registered
After your design has been successfully registered, you may apply the words “Registered Design” on your products.
Length of protection and renewal of registration
The registration provides protection over your design for an initial period of 5 years from the date of the application.
To extend the registration for a further 5-year period you must file Form D8 before the expiry of the registration. The administrative fee for filing an extension application is S$220 for the first extension and S$330 for the second extension.
The maximum period of protection for a registered design is 15 years from the date of filing. Nevertheless, if your design was originally registered in the United Kingdom and has been extended to Singapore, you may file up to a third and fourth extension at S$440 and S$550 respectively.
If you fail to renew the registration before the end of the registration period, your registered design will be removed from the register.
However, you may still restore the registration by filing Form D8 and making an additional payment of S$135, along with the applicable extension fees.
Applying to register your design overseas
The registration system under IPOS only provides protection for your design within Singapore’s territorial boundaries.
If you wish to obtain protection for your design overseas, you can file an application in the national registration office of each individual country. This can be a complex and time-consuming process as you will have to file a series of different applications that may require knowledge of different languages and fee structures.
Alternatively, you may take advantage of the Hague system, which is an international registration system administered by the International Bureau of the World Intellectual Property Organization (WIPO).
The Hague system streamlines the application process by requiring only a single application to be filed in order to obtain protection in countries that are a party to the Hague Convention. This includes countries such as the United States and Korea.
The application can be filed directly with the WIPO with the applicable fee payable in Swiss francs or through IPOS in Singapore by paying a transmittal fee.
What If Your Registered Design Has Been Infringed Upon?
An infringement may occur if there is clear use of your design without your consent.
If you believe that your registered design has been infringed upon, you may commence infringement proceedings. The court may grant:
- An injunction that restrains the infringing party from actions that infringe on your registered design; and
- Order the infringing party to pay you an account of the profits gained, or compensation for the losses you incurred from the infringement.
If you are interested in registering your design, you may wish to consult one of our experienced intellectual property lawyers. They can provide advice on whether your design is eligible for registration under the RDA and assist you with preparing the necessary documentation.
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