Registered Designs (Amendment) Bill

Order for Second Reading read.

The Senior Minister of State for Law (Ms Indranee Rajah): Mdm Speaker, I beg to move, "That the Bill be now read a Second time."

Design is an important driver of innovation and value creation for businesses. 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. It also allows businesses to differentiate their products from their competitors', thus enabling businesses to grow and create good, well-paying jobs in Singapore.

Recognising this, the Design 2025 master plan was developed last year. To support the growth of the design industry, we need a progressive and forward-looking design protection regime. The Ministry of Law (MinLaw) and the Intellectual Property Office of Singapore (IPOS) have reviewed our registered designs regime. This Bill implements the recommendations from the review.

The main amendments are, first, to broaden the scope of design protection under the Registered Designs Act (RDA); second, to change the default position on ownership of a commissioned design; third, to broaden the scope of, and lengthen, the designs grace period provision; and fourth, to allow multiple designs to be filed in a single application more easily. I will now describe the main features of the Bill.

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

First, clause 2(a) amends the definition of "article" to clarify that it is anything that is manufactured, whether by an industrial process, by hand or otherwise. 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. Under the current definition, it is not completely clear whether the designs of such articles, produced outside an industrial factory setting, can be protected. Clause 2(a) now makes it clear that they can be protected.

Second, clause 2(c) amends the definition of "design". It removes the requirement for features constituting a design to be applied by an industrial process. It also accords protection to colours as a design feature. Colours can play a significant role in the appearance of products. 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. 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.

Third, we will allow the registration of designs of non-physical products. We have noticed an emerging trend of new products that do not have a physical form. We want to better prepare our design protection regime in anticipation of such products becoming more common in the future. 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.

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

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.

These amendments to broaden the scope of design protection are timely, as the design landscape has evolved significantly since 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.

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

Under the current section 4 of 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. 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. 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.

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

Let me now touch on the amendments related to the grace period provision for the registration of designs. Before speaking about the amendments proper, I should provide some background.

Generally, only designs which are new may be registered under RDA. A design that is registered or published before the application to register is filed, is not considered new. Therefore, it cannot be registered. However, section 8 of 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 six months of the opening of the exhibition, then the design can be registered. This six-month period is commonly referred to as the "grace period".

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.

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

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. IPOS will work with stakeholders and intellectual property (IP) professionals to ensure that this message is conveyed clearly to design applicants.

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

The Bill also makes consequential amendments to the Copyright Act. Our current policy is to minimise concurrent copyright and registered design protection. This is to prevent over-protection. This policy is articulated in the Copyright Act, which provides that in certain circumstances, copyright is not infringed.

As we will now allow the registration of designs of non-physical products under 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.

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.

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. Mdm Speaker, I beg to move.

Question proposed.

Mdm Speaker: Mr Patrick Tay.

4.17 pm

Mr Patrick Tay Teck Guan (West Coast): Mdm Speaker, I rise in support of the proposed amendments to RDA. This is the first major amendment of the Act since its enactment in 2000. I am glad that the proposed amendments in the Bill are progressive to keep pace with developments in the field of design and to encourage the flourishing of creative works.

I believe these changes will reduce barriers for smaller players in the market, such as small and medium enterprises (SMEs) and freelance professionals in the creative and design fields to seek protection of their IP rights and benefit from their designs. There are three key revisions to the Act.

First, the scope of registrable designs under the Act has been broadened. Second, the designer of the registrable design is now the recognised owner instead of the commissioner of the work; and third, the administrative burden and cost of registration will be reduced. I will address each of these key revisions.

First, by broadening the scope of protection to include designs of non-physical products and colour as a design feature, designers will be able to register a wide range of designs and, consequently, allow for their exploitation of a greater range of creative expressions. The extension of coverage to include virtual designs or non-physical designs recognises the increasing prevalence of virtual products as we become more immersed in virtual environments.

Removing the requirement for application of the design to an article by way of an industrial process is also a boon for designers and small design businesses. In the 2014 National Design Industry Survey, it was found that 86% of design firms in Singapore were micro-SMEs. In Singapore, there has also been an observable rise in interest in artisanal work, craftsmanship and the provision of bespoke handcrafted products ranging from furniture, bicycles, stationery, clothes, shoes and bags to jewellery to cater to consumers' pursuit of individualism.

The Creative Craftsman Apprenticeship Programme, launched in February 2014 and offered by the Singapore Furniture Industries Council (SFIC) Institute is a Place and Train programme aimed at those who want to pursue a career as a craftsman in the furniture industry. The programme has attracted entrants from various age groups, qualifications and industries wishing to make a career switch into carpentry, and 70 Singaporeans have since graduated from the programme. Businesses and freelancers offering bespoke handcrafted products are usually smaller players in the market who would not have been able to seek protection under the Act as their designs are not applied to articles by industrial process. With the proposed amendments to the Act, designs for handcrafted items can be registered, thereby providing these artisans, craftsmen and small businesses with an avenue for protection of their work.

Second, recognising the designer as the owner of the design for commissioned work instead of the commissioner of the work, shifts some amount of bargaining power to the designer when it comes to negotiating the terms of engagement for commissioned work. Based on the current law, designers, especially those from smaller business outfits or freelancers, would find themselves hard pressed to wrangle ownership from the commissioner of the work. Some designers may not even be aware that the position at law is such and omit to negotiate terms of ownership of the commissioned work with the commissioner of the work.

This amendment will not only align the legal position in Singapore with other jurisdictions, for example, Australia, the European Union (EU), Japan and the United States (US), but is also timely, given the advent of the gig economy.

In the recent Graduate Employment Survey released in February 2017, it was found that while the overall employment rate for the Nanyang Technological University's (NTU's) art, design and media graduates has been at about 80% from 2014 to 2016, the full-time permanent employment rate dropped from 68% in 2014 to 46.6% in 2016. With the increase of freelancers in the art, design and creative industries, this amendment can provide freelancers with greater bandwidth to make strategic decisions on the terms of engagement for commissioned work.

Third, amendments aimed at reducing the administrative burden and cost of registration, such as through the allowing of the registration of two or more designs in one application and allowing for correction of non-compliance with formal requirements in earlier registration applications, greatly reduce barriers to access IP protection. Ease of registration and more affordable registration processes will benefit small businesses and freelancers working with smaller margins. Allowing for a 12-month period for qualified disclosure of the design prior to registration also takes into consideration the practical needs of the creative industry to test their designs in the market.

With these amendments, designers in Singapore can also seek international protection with greater ease. Through the Hague system, designers can register their designs in Singapore and apply for international protection of the design in member countries of the Hague Union. This is in alignment with our national industry transformation efforts and the Design 2025 Masterplan to encourage our design firms to internationalise.

While efforts have been made to widen the scope of protection under the Bill and to increase access to protection of designs, these efforts will come to naught if the public lacks awareness of these rights. It is notable that out of a total of 4,268 designs filed at the IP Office of Singapore (IPOS) in 2014, only 818 are designs filed by Singapore-based or local applicants. In the review of the Act conducted by MinLaw and IPOS, it was found that the level of awareness on the use and enforcement of design rights in Singapore appeared to be low.

I, therefore, urge for more to be done to ensure that SMEs and freelancers in the design industry are aware of the availability of such protection and know when, how and where to seek enforcement of their rights. With the passing of the Bill, education and outreach efforts need to be made to raise awareness of design rights and address overlaps of copyright and trademark protection with the registered designs regime. For example, IPOS can work with our Labour Movement's U SME, U Start-Up, U Creative and the Freelancers and Self-Employed Unit (U FSE) teams to reach out to SMEs, startups, creative professionals and freelancers in the design industry on developing and managing their IP strategy.

Enforcement is a critical piece to an effective IP regime. Under the Act, infringement actions must be commenced in the High Court and such legal action may be too costly for small businesses and freelancers to pursue. It is also timely to consider whether a simpler and less costly adjudication regime can be made available to smaller players to protect their registered rights.

Mdm Speaker, in conclusion, in a data, design and innovation-driven new economy, IP rights are increasingly important business assets. The ability to develop and maintain a robust IP strategy is crucial for businesses and freelancers alike. An efficient and equitable IP system which strikes a balance between the interests of innovators and public interest, not only provides an environment for creativity to flourish but can also be a catalyst for economic development and social and cultural well-being of the nation.

Mdm Speaker: Mr Louis Ng.

4.25 pm

Mr Louis Ng Kok Kwang (Nee Soon): Madam, I stand in support of this Bill which brings registered design laws in Singapore closer to the level of protection accorded to designers in the EU. For example, extending the grace period from six months to 12 months matches that of the EU. Recognising colour as a protectable design feature and clarifying that ownership rests in designers rather than the commissioning parties are other examples of matching EU standards.

While I am broadly supportive of these updates which reflect technological advances, as well as the swell in businesses dealing in artisanal and handcrafted products, I would like to raise a few points for clarification.

The suggested definition for "non-physical product" includes a requirement that it has "an intrinsic utilitarian function that is not merely to portray the appearance of the thing or to convey information".

Alvin Tay, a law student, wrote to me and helpfully highlighted to me that this seems to put designers of non-physical products at a relative disadvantage to their peers designing physical products. Hence, I would like to clarify the reason for the additional requirement of utility for non-physical products.

Additionally, in the definition of "design", the words "article" and "non-physical product" are used interchangeably. As such, it is difficult to see why a higher hurdle is imposed for "non-physical products".

If what we are protecting are really the shapes, configurations, colours, patterns or ornaments that give non-physical products their appearances, what is the rationale for the requirement of a utilitarian function?

The utility of a product would be pertinent in patent law where protection should only be afforded if there is industrial application.

Design laws are distinct from patent laws, and the focus should be on giving protection for each designer's aesthetic work, regardless of whether or not there is a utilitarian function.

The IP Students' Association, comprising law students in both the National University of Singapore (NUS) and the Singapore Management University (SMU), also raised the concern that non-physical products under RDA could lead to some overlap with patent law, since the line between the design and the function of a non-physical product is less clear. This opens up the possibility of abuse, where a designer may register the design of his product after its patent protection period has expired, to extend the exclusivity of the product.

Could the Minister clarify how the registered design regime will manage the potential overlap with the patent protection for a non-physical product?

Using the example of the virtual keyboard in the Bill's explanatory notes, could a person who invents such a keyboard obtain patent protection and design protection at the same time? If so, what would be the scope of the protection under each regime?

Next, the amended section 30(1) provides the designer with certain exclusive rights over any device for projecting a registered non-physical product. It is possible that a device may not be for the exclusive use of projecting a non-physical product whose design is registered, but may be able to project a range of non-physical products irrespective of design. Can the Minister clarify how the rights to the device will be allocated in such a situation? Madam, notwithstanding the above clarifications, I stand in support of the Bill.

Mdm Speaker: Senior Minister of State Indranee Rajah.

4.29 pm

Ms Indranee Rajah: Mdm Speaker, I thank the Members who have spoken for their support of the Bill.

Mr Patrick Tay rightly noted the need to increase the level of awareness about the registered designs regime amongst businesses, especially SMEs. IPOS regularly partners industry and design associations to do so. For example, on World IP Day last month, IPOS and the Design Business Chamber Singapore ran a workshop on Transforming Enterprises Through Business Design, where participants learnt about the upcoming changes to the designs regime and how design can bring value to businesses.

IPOS is also working with the DesignSingapore Council to raise awareness about registered design protection and how such protection can be used as a strategic business tool. I welcome Mr Patrick Tay's invitation for IPOS to work with the National Trades Union Congress' (NTUC's) various units and I will ask IPOS to do so.

In addition to these collaborations, IPOS will explore issuing guidance notes to address specific knowledge gaps, for example, the interface between registered design protection and copyright protection. This will add to the wealth of IP information and guidance that businesses can obtain from IPOS' website, as well as at IPOS' one-stop Service Centre IP101 at Manulife Centre.

Mr Patrick Tay also spoke about the importance of ensuring that businesses, especially smaller businesses, have a cost-effective means of enforcing their registered design rights. This is something that MinLaw is looking into. We had appointed a Committee, comprising representatives from the judiciary, the IP Bar, academia, IP-rich companies and Government agencies to review the IP dispute resolution system in Singapore. The Committee has made recommendations on how enforcement costs can be reduced. My Ministry is currently considering these recommendations in conjunction with our ongoing broad-based review of Singapore's civil justice system.

Mr Louis Ng raised three main points for clarification about the Bill, and I will address them in turn.

The first point is about the requirement for a non-physical product to have an intrinsic utilitarian function. The registered designs regime is intended to protect design features of commercial products with useful functions. For example, designs intended to be applied to articles which are works of sculpture will be refused registration. This can be seen from section 7 of RDA read with rule 9 of the Registered Designs Rules. Further, the Third Schedule of the Registered Designs Rules gives an idea of the products for which designs can be protected. These include table knives, forks and spoons, and jewellery, for example.

This intention currently applies to tangible articles and will apply to non-physical products going forward. Hence, the requirement that non-physical products have an intrinsic utilitarian function. Designs of other things that do not fulfil this criterion may be protected under the copyright regime.

Mr Louis Ng's second point is about the interface between patent protection and registered design protection. Mr Louis Ng raised a concern about the possibility of a designer registering the design of his non-physical product after a patent over it has expired, thereby extending the exclusivity period.

This is not possible. The patent specification is made public as part of the patent application process. If the patent specification contains the design drawing, then a design based on it cannot be registered as the design is no longer new. Because as Members may recall, a design has to be new to be registrable.

Mr Louis Ng also asked about the potential overlap between the registered designs regime and the patent regime. The registered designs regime and the patent regime confer different protections. Design features that are dictated solely by the function which the article or non-physical product has to perform are excluded from protection under the registered designs regime. In contrast, functional features may be protected by patents, if they fulfil the patentability requirements.

Using the example of a virtual keyboard, its design features, such as a new combination of shapes and colours, can be protected under the registered designs regime. At the same time, patent protection may be sought for new and inventive functional features of the virtual keyboard.

Mr Louis Ng's third point is about exclusive rights in relation to devices which project a range of non-physical products.

Mr Louis Ng referred to a situation where a device is capable of projecting a range of non-physical products, of which just one bears a registered design. An example could be a device that can project virtual computer keyboards in different designs, and just one of the designs is registered.

In this case, the owner of that one registered design can pursue civil infringement action if a third party sells the device without his permission. This is because the registered design owner's exclusive rights include selling a device that can project his registered design. Mdm Speaker, I beg to move.

Question put, and agreed to.

Bill accordingly read a Second time and committed to a Committee of the whole House.

The House immediately resolved itself into a Committee on the Bill. – [Ms Indranee Rajah.]

Bill considered in Committee; reported without amendment; read a Third time and passed.