On 20/06/2013,
you requested for the version in force on 20/06/2013
incorporating all amendments published on or before 20/06/2013.
The closest version currently available is that of 31/07/2005.
PART III
RIGHTS IN REGISTERED DESIGNS
30.
—(1) The registration of a design under this Act gives to the registered owner the exclusive right —
(a)
to make in Singapore or import into Singapore —
(i)
for sale or hire; or
(ii)
for use for the purpose of trade or business; or
(b)
to sell, hire, or offer or expose for sale or hire, in Singapore,
any article in respect of which the design is registered and to which that design or a design not substantially different from it has been applied.
(2) For the purposes of this Act, the right in a registered design is infringed by any person who, without the consent of the registered owner and while the registration is in force —
(a)
does anything which by virtue of subsection (1) is the exclusive right of the registered owner;
(b)
makes anything for enabling any article referred to in subsection (1) to be made in Singapore or elsewhere;
(c)
does anything in relation to a kit that would constitute an infringement of the design if it had been done in relation to the assembled article; or
(d)
makes anything for enabling a kit to be made or assembled, in Singapore or elsewhere, if the assembled article would be an article referred to in subsection (1).
(3) In subsection (2), “kit” means a complete or substantially complete set of components intended to be assembled into an article.
(4) In the application of subsection (2) to a registered design of which there is more than one registered owner, the reference to the registered owner shall be construed —
(a)
in relation to any act, as a reference to the registered owner or those registered owners who is or are entitled to do that act by virtue of section 33 or any agreement; and
(b)
in relation to any consent, as a reference to the registered owner or those registered owners who is or are the proper person or persons to give the consent by virtue of section 33 or any agreement.
(5) For the purposes of this Act, the right in a registered design is not infringed by —
(a)
the doing of any act for a private non-commercial purpose; or
(b)
the doing of any act for the purpose of evaluation, analysis, research or teaching.
(6) The right in a registered design is not infringed by the reproduction of a feature of the design which, by virtue of paragraph (b) of the definition of "design" in section 2(1), is left out of account in determining whether the design is registrable.
(7) The right in a registered design is not infringed by the import, sale, hire, or offer or exposure for sale or hire of any article to which the design has been applied, and which has been placed on the market, whether in Singapore or elsewhere, by or with the consent (conditional or otherwise) of the registered owner.
[UK Designs 1949, s. 7; HK Designs, s. 31]
31.
—(1) A person who, before the date of registration of a design —
(a)
does in good faith in Singapore an act which would have constituted an infringement of the design if the registration had been in force at the time the act is done; or
(b)
makes in good faith effective and serious preparations to do such an act in Singapore,
has the right to continue to do the act or, as the case may be, to do the act.
(2) If the act was done, or the preparations were made, in the course of a business, the person entitled to the right conferred by subsection (1) may —
(a)
authorise the doing of that act by any of his partners for the time being in that business; and
(b)
assign that right, or transmit it on death (or in the case of a body corporate on its dissolution), to any person who acquires that part of the business in the course of which the act was done or the preparations were made.
(3) The right conferred by subsection (2) shall not include a right to grant a licence to any person to do an act referred to in subsection (1).
(4) Where an article is disposed of to another person in exercise of a right conferred by subsection (1), that other person and any person claiming through him may deal with the article in the same way as if it had been disposed of by the owner of the design concerned.
[HK Designs, s. 35]
32.
—(1) A registered design or any right in it is personal property and may be assigned or transmitted in the same way as other personal property.
(2) A registered design or any right in it may be vested by an assent of personal representatives.
(3) A licence may be granted for the use of a registered design and, to the extent that the licence so provides, a sub-licence may be granted under any such licence.
(4) Any such licence or sub-licence —
(a)
may be assigned or transmitted in the same way as personal property; and
(b)
may be vested by an assent of personal representatives.
(5) Subsections (1) to (4) shall have effect subject to this Act.
(6) An assignment of a design or a right therein, or an assent relating to a registered design or a right therein, is not effective unless it is in writing and signed by or on behalf of the assignor or, as the case may be, a personal representative.
(7) Subsection (6) may be satisfied in a case where the assignor or personal representative is a body corporate by the affixing of its seal.
(8) Subsections (6) and (7) shall apply to an assignment by way of security as they apply to any other assignment.
(9) An assignment of a registered design or any right in it, or an exclusive licence in relation to a registered design, may confer on the assignee or licensee the right of the assignor or licensor to bring proceedings under section 23 or 36.
[HK Designs, s. 32]
33.
—(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 an equal undivided share in the rights in the design.
(2) Subject to this section and to any agreement to the contrary, where there is more than one registered owner of a registered design, each of them shall be entitled, by himself or his agent, to do in relation to the design and for his own benefit and without the consent of, or the need to account to, the other or others, an act which would otherwise amount to an infringement of the design.
(3) Subject to any agreement to the contrary, where there is more than one registered owner of a registered design, no registered owner shall, without the consent of each of the others, grant a licence for the use of the design or assign any interest in it.
(4) Nothing in subsection (1) or (2) shall affect the mutual rights or obligations of trustees or personal representatives of a deceased person, or their rights or obligations as such.
[HK Designs, s. 33]
34.
—(1) On application being made to the Registrar by —
(a)
a person claiming to be entitled to any interest in a registered design by virtue of a registrable transaction; or
(b)
any other person claiming to be affected by such a transaction,
the prescribed particulars of the transaction shall be entered in the Register.
(2) The following are registrable transactions under subsection (1):
(a)
an assignment of a registered design or any right in it;
(b)
the grant of a licence or sub-licence for the use of a registered design;
(c)
the grant of any security interest (whether fixed or floating) over a registered design or any right in it;
(d)
the making by personal representatives of an assent in relation to a registered design or any right in it;
(e)
an order of the Court or other competent authority transferring a registered design or any right in it.
(3) Until an application has been made for registration of the prescribed particulars of a registrable transaction, the transaction is ineffective as against a person acquiring a conflicting interest in the registered design in ignorance of it.
(4) Notwithstanding any provision of this Act, a person who becomes the registered owner or licensee of a registered design by virtue of a registrable transaction is not entitled to —
(a)
damages or account of profits in respect of any infringement of the registered design occurring after the date of the transaction and before the date of application for registration of the prescribed particulars of the transaction; or
(b)
compensation under section 46, pursuant to terms as agreed between the Government and the registered owner, or as determined by the court, in respect of the use of the design for the services of the Government occurring after the date of the transaction and before the date of application for registration of the prescribed particulars of the transaction.
[Trade Marks 1999 Ed., s. 39]
35.
—(1) Sections 32, 33 and 34 shall, with the necessary modifications, apply in relation to an application for registration of a design as they apply in relation to a registered design.
(2) For the purposes of subsection (1), the reference in section 34 to the making of an application for registration of particulars shall be construed as a reference to the giving of a written notice to the Registrar in the prescribed manner of particulars of the relevant transaction, instrument or event relating to the application for registration.
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]
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]
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]
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]
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]
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]
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]
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]
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]