Review of Registered Designs Regime in Singapore

By Denise Loh (Ella Cheong LLC)

The Intellectual Property Office of Singapore (IPOS) is carrying out its first major review of Singapore’s registered designs regime since the year 2000. The key objectives of this review are to accommodate new technologies and business models as well as to support the growth of designs-related industries. As part of the review, IPOS conducted a public consultation from 16 May 2014 to 6 June 2014 on possible changes to the current registered designs regime.

The issues raised for public consultation included:

• Whether the definition of “design” (namely, features of shape, configuration, pattern or ornament applied to an article by any industrial process) should be broadened to include other types of designs (eg. dynamic Graphical User Interfaces, arrangement or interior layout of a room).
• Whether there should be protection for partial designs, similar to the UK, where a part of the article, rather than the entire article, is protected.
• Whether an unregistered design right, similar to the UK, should be created to provide automatic and free protection for designs without requiring the designs to be registered.
• Whether there should be a change from the current formalities-only examination to include substantive examination.
• Whether a grace period, similar to the UK and EU, should be introduced to enable a design owner to publicly disclose his design prior to filing for protection.
• Whether the requirements for multiple design applications and divisional applications should be simplified.
• Whether the exclusion of copyright protection for industrially applied designs (ie, > 50 articles produced) should be removed in favour of dual protection under the copyright and registered designs regimes for original artistic works.
• Whether any changes should be made to take into account the impact of emerging 3-D printing technology.
• Whether to retain the “must match” and “must fit” exclusions against the protection spare parts.
• Whether to limit the impact on novelty of prior novelty-destroying disclosures to only those which are reasonably available to the relevant industry in the normal course of business, like in the UK.

IPOS has since issued a new Practice Direction for the registration of Graphical User Interfaces (GUIs) as designs. This Practice Direction came into effect on 11 December 2014.

The Practice Direction clarified that applicants can file applications to register GUIs as designs under the Registered Designs Act and stated that the following practices must be adopted when filing such applications:

• Applicants must indicate the articles that the GUI is applied to (eg. “electronic devices display, with Graphical User Interface applied to it”).
• Applicants must file a dynamic GUI as a series of static representations of the design, where each representation (in the form of a drawing or photograph) shows a freeze-frame of the GUI in action.
• Each application should contain a sufficient number of different views to completely disclose the appearance of the claimed design. A total of up to 40 different views of the same GUI may be filed and the Registry may, on written request, allow more than 40 views to be filed.

The ongoing review of the registered designs regime presents a valuable and long-awaited opportunity to address issues in the protection of designs in Singapore and to bring about a designs regime that is more relevant to stakeholders today. Design owners may wish to look out for changes to Singapore’s designs regime in the near future, starting with the registration of GUIs.