Second Reading Speech by Senior Minister of State for Law, Indranee Rajah SC, on the Registered Designs (Amendment) Bill

8 May 2017 Posted in Parliamentary speeches and responses

Madam Speaker,

1. I beg to move, “That the Bill be now read a Second Time”.

1. Introduction

2. Design is an important driver of innovation and value creation for businesses.
   1. Good design enhances the value of a product. It can turn something plain and ordinary into a product that is attractive, inspiring and user-friendly.
   2. It also allows businesses to differentiate their products from their competitors’.
   3. Thus, enabling businesses to grow and create good, well-paying jobs in Singapore.

3. Recognising this, the Design 2025 master plan was developed last year.

4. To support the growth of the design industry, we need a progressive and forward-looking design protection regime. The Ministry of Law and the Intellectual Property Office of Singapore (“IPOS”) have reviewed our registered designs regime.

5. This Bill implements the recommendations from the review. The main amendments are:
   1. First, to broaden the scope of design protection under the Registered Designs Act (“RDA”).
   2. Second, to change the default position on ownership of a commissioned design.
   3. Third, to broaden the scope of, and lengthen, the designs grace period provision.
   4. Fourth, to allow multiple designs to be filed in a single application more easily.

6. I will now describe the main features of the Bill.

2. Broaden the scope of design protection

7. The first set of amendments broadens the scope of design protection under the RDA.

8. First, clause 2(a) amends the definition of “article” to clarify that it is any thing that is manufactured, whether by an industrial process, by hand or otherwise.
   1. With the internet transforming advertising and customer acquisition, small businesses with low volume products targeting niche markets are becoming viable. For example, an artisan designing and making jewellery by hand can operate a “blog shop” selling handmade jewellery, with items in each particular design sold in small quantities.
   2. Under the current definition, it is not completely clear whether the designs of such articles, produced outside an industrial factory setting, can be protected.
   3. Clause 2(a) now makes it clear that they can be protected.

9. Second, clause 2(c) amends the definition of “design”.
   1. It removes the requirement for features constituting a design to be applied by an industrial process.
   2. It also accords protection to colours as a design feature.
      1. Colours can play a significant role in the appearance of products.
      2. Businesses that look to build a strong association between a particular colour scheme and their products can now protect such colour schemes as part of their designs.
      3. I should clarify that our intent is not to accord design protection to colours per se. For example, a designer cannot simply claim the colour orange, without any other design feature, for its vacuum cleaner, and prevent all others from using the colour orange for their vacuum cleaners.

10. Third, we will allow the registration of designs of non-physical products.
    1. We have noticed an emerging trend of new products that do not have a physical form.
    2. We want to better prepare our design protection regime in anticipation of such products becoming more common in the future.
    3. An example of a non-physical product is a virtual keyboard that is projected by light onto a surface, and that can be used to type characters in the same manner as a physical computer keyboard.

11. Clause 2(e) therefore introduces a new definition of non-physical products. Such a product
    1. does not have a physical form;
    2. is produced by the projection of a design on a surface or into a medium, such as air; and
    3. has an intrinsic utilitarian function, meaning it does not merely portray the appearance of the thing or convey information.

12. We are also making other related amendments. For example, clause 17(a) of the Bill amends the exclusive rights that a registered design owner has, to take into account non-physical products.

13. These amendments to broaden the scope of design protection are timely, as the design landscape has evolved significantly since the RDA was first enacted more than 10 years ago. With these amendments, the design registration system will better serve the needs of designers and businesses.

3. Changing the default position on ownership of a commissioned design

14. I now turn to the amendments to change the default position on ownership of a commissioned design.

15. Under the current section 4 of the RDA, when a design is created under commission, the person commissioning the design is treated as the owner of the design by default, unless there is an agreement to the contrary.

16. Clauses 3(a) to 3(c) of the Bill amend the current legislation so that in commissioning situations, the designer will be treated as the owner of the design by default.

17. However, the designer is free to deal with his design by contract. For example, he can assign the design to the person commissioning the design.

18. By recognising the value of design creation and the creative effort of designers, these amendments will encourage the growth of our local design industry.

4. Amendments related to the grace period provision for the registration of designs

19. Let me now touch on the amendments related to the grace period provision for the registration of designs.

20. Before speaking about the amendments proper, I should provide some background.
    1. Generally, only designs which are new may be registered under the RDA.
    2. A design that is registered or published before the application to register is filed is not considered new. Therefore, it cannot be registered.
    3. However, section 8 of the RDA contains a few narrow exceptions to this general rule. For example, if the design has been displayed at one of the few recognised international exhibitions, and the application was filed within 6 months of the opening of the exhibition, then the design can be registered. This 6-month period is commonly referred to as the “grace period”.

21. We have received feedback from the industry that the current grace period provision should not be so restrictive. It needs to support modern business practices, where designers increasingly need to disclose their designs before applying to register them. For example, they could be trying to source for investors at an exhibition that is outside the narrow list of recognised international exhibitions.

22. To this end, clause 7 of the Bill inserts a new section 8A which will give designers greater flexibility by:
    1. extending the grace period from 6 months to 12 months; and
    2. expanding the situations under which the grace period provision may be relied upon to include any disclosure originating from the designer.

23. It should be emphasised that disclosing a design before applying for protection still carries risks. Not all jurisdictions have a similarly broad or long grace period provision. We would therefore strongly encourage designers to always be judicious about disclosing their designs before applying for design registration.

24. IPOS will work with stakeholders and IP professionals to ensure that this message is conveyed clearly to design applicants.

5. Allowing multiple designs to be filed in a single application more easily

25. I now turn to clause 10 of the Bill.

26. Clause 10(b) amends section 11 of the RDA to enable multiple designs to be filed in a single application, subject to certain requirements.

27. This amendment will make it easier for applicants to file multiple designs in a single application. It will also lead to more efficient processing by the Registry of Designs.

6. Consequential amendments to the Copyright Act

28. The Bill also makes consequential amendments to the Copyright Act.

29. Our current policy is to minimise concurrent copyright and registered design protection. This is to prevent over-protection.

30. This policy is articulated in the Copyright Act, which provides that in certain circumstances, copyright is not infringed.

31. As we will now allow the registration of designs of non-physical products under the RDA, these provisions in the Copyright Act have to be amended to take into account design protection for non-physical products. This is effected by clause 28 of the Bill which amends sections 7, 70, 73 and 74 of the Copyright Act.

7. Conclusion

32. This Bill implements recommendations from our review of the registered designs regime in Singapore. It allows our regime to stay up to date as design creation and technology evolve, and to be more conducive for the design community.

33. Our IP regime should provide a balanced and effective means for designers to protect their creative works. In this way, we support the growth of the design industry and the use of designs in Singapore.

34. Madam Speaker, I beg to move.

Last updated on 08 May 2017