Long Title

Part I PRELIMINARY

Part II REGISTRATION OF DESIGNS

Division 1 — Ownership of Designs

Division 2 — Registrable Designs

Division 3 — Proceedings for Registration

Division 4 — Duration of Registration

Division 5 — Proceedings for Determination of Rights in Registered Designs

Division 6 — Surrender and Revocation of Registration

Division 7 — Miscellaneous

Part III RIGHTS IN REGISTERED DESIGNS

Division 1 — Rights of Registered Owner of Registered Design

Division 2 — Registered Design as OBJECT OF PROPERTY

Division 3 — Infringement Proceedings

Part IV GOVERNMENT USE OF REGISTERED DESIGNS

Part V ADMINISTRATIVE AND OTHER SUPPLEMENTARY PROVISIONS

Division 1 — Registrar

Division 2 — Register

Division 3 — Powers of Registrar

Division 4 — Hours of Business of Registry

Part VA THE GENEVA ACT OF THE HAGUE AGREEMENT, ETC

Part VI OFFENCES

Part VII MISCELLANEOUS AND GENERAL PROVISIONS

THE SCHEDULE Transitional Provisions

Legislative Source Key

Legislative History

Comparative Table

Division 3 — Infringement Proceedings
Infringement proceedings
36.
—(1)  An infringement of a registered design is actionable by the registered owner.
(2)  Subject to the provisions of this Act, the relief the Court may grant in infringement proceedings includes —
(a)
an injunction (subject to such terms, if any, as the Court thinks fit); and
(b)
either damages or an account of profits.
(3)  Subject to the provisions of this Act, no proceedings shall be taken for an infringement of a registered design committed before the date on which the certificate of registration of the design is issued under section 18.
[HK Designs, s. 48; Trade Marks 1999 Ed., s. 31]
Infringement proceedings by co-owner
37.
—(1)  Subject to any agreement to the contrary, where there is more than one registered owner of a registered design, each of them shall be entitled to bring proceedings for an infringement of the design.
(2)  In proceedings taken by a registered owner by virtue of this section, the other registered owner or owners shall be made a party or parties to the proceedings, but if any other registered owner is made a defendant he shall not be liable for any costs or expenses unless he takes part in the proceedings.
[HK Designs, s. 49]
Infringement proceedings by exclusive licensee
38.
—(1)  The holder of an exclusive licence under a registered design shall have the same right as the registered owner to bring proceedings for an infringement of the design committed after the date of the grant of the licence, and references to the registered owner in the provisions of this Act relating to infringement shall be construed accordingly.
(2)  In awarding damages in any infringement proceedings taken by an exclusive licensee, the Court may take into consideration only the losses suffered or likely to be suffered by the exclusive licensee as a result of the infringement.
(3)  In ordering an account of profits in any infringement proceedings taken by an exclusive licensee, the Court may take into consideration only the profits derived from the infringement which are attributable to the infringement of the exclusive licensee’s rights.
(4)  In any infringement proceedings taken by an exclusive licensee, the registered owner need not be made a party to the proceedings, but if the registered owner is made a defendant he shall not be liable for any costs or expenses unless he takes part in the proceedings.
[HK Designs, s. 50; Patents 2002 Ed., s. 74]
[21/2004]
General restriction on recovery of damages or profits
39.
—(1)  In infringement proceedings, the Court shall not award damages, nor make an order for an account of profits, against a defendant who proves that at the date of the infringement he was not aware, and had no reasonable grounds for believing, that the design in question was registered.
(2)  For the purposes of subsection (1), a person shall not be taken to have been aware, or to have had reasonable grounds for believing, that the design was registered by reason only of the application to an article, or to any printed matter accompanying an article, of the word “registered”, or any word or words or abbreviation expressing or implying that the design has been registered, unless the registration number of the design accompanied the word or words or abbreviation.
[HK Designs, s. 51]
Order for delivery up
40.
—(1)  Where the defendant to proceedings for infringement of a registered design has in his possession —
(a)
any infringing article in relation to that design; or
(b)
anything predominantly used for the making of infringing articles, which the defendant knows or has reason to believe has been or is to be used to make infringing articles,
the Court may, in addition to any relief granted under section 36, order the article or thing to be delivered to the plaintiff.
(2)  No order shall be made under this section unless the Court also makes, or it appears to the Court that there are grounds for making, an order under section 41.
(3)  A person to whom any article or thing is delivered up in pursuance of an order made under this section shall, if an order under section 41 is not made, retain them pending the making of an order, or the decision not to make an order, under that section.
(4)  In this section and section 41, an article is an “infringing article” in relation to a registered design if the design or a design not substantially different from it has been applied to the article and —
(a)
the application of the design to the article was an infringement of the design;
(b)
the article is imported into Singapore in such a way as to infringe the design; or
(c)
the article is sold, let for hire, or offered or exposed for sale or hire in Singapore in such a way as to infringe the design.
[Trade Marks 1999 Ed., s. 33]
Order for disposal
41.
—(1)  Where any infringing article or thing has been delivered up in pursuance of an order made under section 40, an application may be made to the Court —
(a)
for an order that it be destroyed or forfeited to such person as the Court thinks fit; or
(b)
for a decision that no such order should be made.
(2)  In deciding what order, if any, should be made, the Court shall have regard to —
(a)
whether other remedies available in proceedings for infringement would be adequate to compensate the plaintiff and protect his interest; and
(b)
the need to ensure that no infringing article or thing is disposed of in a manner that would adversely affect the plaintiff.
(3)  The Court shall issue directions as to service of notice on persons having an interest in the article or thing.
(4)  Any person having an interest in the article or thing is entitled —
(a)
to appear in proceedings for an order under this section, whether or not that person is served with notice; and
(b)
to appeal against any order made, whether or not that person appears in the proceedings.
(5)  An order made under this section shall not take effect until the end of the period within which notice of an appeal may be given or, if before the end of that period notice of appeal is duly given, until the final determination or abandonment of the proceedings on appeal.
(6)  Where there is more than one person interested in the article or thing, the Court may direct that the article or thing be sold, or otherwise dealt with, and the proceeds divided, and shall make any other order as the Court thinks just.
(7)  If the Court decides that no order should be made under this section, the person in whose possession the article or thing was before being delivered up is entitled to its return.
[Trade Marks 1999 Ed., s. 34]
Declaration as to non-infringement
42.  A declaration that an act does not, or a proposed act would not, constitute an infringement of a registered design may be made by the Court in any proceedings between the person doing or proposing to do the act and the registered owner, notwithstanding that no assertion to the contrary has been made by the registered owner, if it is shown that —
(a)
that person has applied in writing to the registered owner for a written acknowledgment to the effect of the declaration claimed, and has furnished him with full particulars in writing of the act in question; and
(b)
the registered owner has refused or failed to give any such acknowledgment.
[HK Designs, s. 55]
Certificate of contested validity of registration
43.
—(1)  If in any proceedings before the Court the validity of the registration of a design is contested, and the Court finds that the design is validly registered, the Court may certify the finding and the fact that the validity of the registration was so contested.
(2)  If the Court gives such a certificate and in subsequent proceedings for infringement of the design or for revocation of the registration of the design —
(a)
the validity of the registration is again questioned; and
(b)
the registered owner obtains a final order or judgment in his favour,
the registered owner is entitled to his costs as between solicitor and client unless the Court directs otherwise.
(3)  Subsection (2) does not extend to the costs of an appeal in any such proceedings.
[UK Designs 1949, s. 25]
Remedy for groundless threats of infringement proceedings
44.
—(1)  Where a person (whether or not entitled to or interested in a registered design or an application for registration of a design) threatens any other person with proceedings for infringement of a registered design, any person aggrieved thereby may bring proceedings against the person making the threats for relief under this section.
(2)  The relief which may be applied for are —
(a)
a declaration that the threats are unjustifiable;
(b)
an injunction against the continuance of the threats; and
(c)
damages in respect of any loss he has sustained by the threats,
and the plaintiff is entitled to such relief unless —
(i)
the defendant proves that the acts in respect of which the proceedings were threatened constitute, or if done would constitute, an infringement of the design; and
(ii)
the plaintiff fails to show that the registration of the design concerned is invalid.
(3)  Proceedings may not be brought under this section as regards a threat to bring proceedings for an infringement alleged to consist of the making or importing of anything.
(4)  For the purposes of this section, a notification that a design is registered does not of itself constitute a threat of proceedings within the meaning of this section.
(5)  Nothing in this section shall render an advocate and solicitor liable to an action under this section in respect of an act done by him in his professional capacity on behalf of a client.
[UK Designs 1949, s. 26; HK Designs, s. 57]