Design

What is a Design

 

A Design refers to the features of shape, configuration, pattern or ornament applied to an article by an industrial process. Through registration of your design, you will obtain an exclusive right to the design and the right to prevent third parties from using the design without your permission.

 

Protection and Term

 

Before filing an application for the registration of a design, it is advisable to first conduct a search of the existing designs to ensure its registrability.

 

It is necessary to file a design registration in order to protect your designs. Registration for a design in Singapore may be obtained in two ways:

 

  • 1. A national application filed with the Registry of Designs with the Intellectual Property Office of Singapore (IPOS), or
  • 2.An international application under the Hague System for the International Registration of Industrial Designs, designating Singapore as a country where protection is sought. The Hague system offers the owner of an industrial design a means of obtaining protection in several countries (please see the list of countries here: http://www.wipo.int/treaties/en/documents/pdf/hague.pdf) by simply filing one application with the International Bureau of WIPO. An international registration has the same effect as if the design had been registered directly with each national office.

 

Design registrations are valid for an initial 5 years from the date of filing the registration. The registration can then be renewed every 5 years up to a maximum of 15 years.

 

Criteria for Registration

 

There are, in general two key criteria for a design to qualify for registration:-

 

  • The Design must be new: If the design is the same, or substantially the same as any other design that has been registered or published in Singapore or elsewhere, or differs only in immaterial details from other designs that are commonly found in trade, it is not new. If there has been prior disclosure of the design in the public domain, it is also not new. However, a disclosure of a design made during business negotiations which imports an obligation of confidentiality would not destroy the novelty of the design.

 

  • The Design must be industrially applied onto an article: The registered design has to be applied to an article by an industrial process i.e. more than 50 copies of the article have been or are intended to be produced for sale or hire.

 

In Singapore, the following are some examples of designs which cannot be registered:-

 

  • designs for articles which are of a primarily artistic character such as wall plaques, medals, book jackets, dress-making patterns.
  • computer programmes or layout designs of integrated circuits.
  • designs that are contrary to the public order or morality.
  • designs that are solely functional
  • methods or principles of construction.

 

Some of the above which are not protectable under design law may be protected by other forms of intellectual property, for example, computer programmes may have protection under the copyright law.

 

Ownership Rights and Infringement

 

The general rule is that the owner of a design is the person who created the design, and he is the one entitled to apply for registration of the design.

 

There are however, two exceptions to this general rule:

 

  • 1. Design created by an employee in the course of employment - unless there is an agreement to the contrary, the employer shall be treated as the owner.

 

  • 2.Design created in pursuance of a commission – unless there is an agreement to the contrary, the commissioning party shall be treated as the owner.

 

The registered owner has the exclusive rights to make or import for the purposes of trade (eg. sale, hire) articles, in respect of which his design is registered, which embody the registered design (or one that is substantially the same). Infringement occurs not only when a person does any of the above exclusive rights without authorisation.

 

A registered design owner may assign or licence his rights in the registered design. If the registered design is assigned or licenced, this should be recorded at the Registry of Designs.

 

Overlap with Copyright Protection

 

In some instances, designs which qualify for protection are also material where copyright subsists.

 

Where there is an overlap with copyright protection, there is no cumulative protection under registered design and copyright law, protection is available under registered designs only. Therefore, if the artistic work is a registrable design, you should take steps to apply to register the design, or there will be no protection for the design.