On 22/05/2013,
you requested for the version in force on 22/05/2013
incorporating all amendments published on or before 22/05/2013.
The closest version currently available is that of 31/07/2005.
PART II
REGISTRATION OF DESIGNS
4.
—(1) Subject to this section, the designer of a design shall be treated for the purposes of this Act as the owner of the design.
(2) Where a design is created in pursuance of a commission for money or money’s worth, the person commissioning the design shall be treated as the owner of the design.
(3) Where, in a case not falling within subsection (2), a design is created by an employee in the course of his employment, his employer shall be treated as the owner of the design.
(4) Subsections (2) and (3) are subject to any agreement to the contrary between the parties concerned.
(5) Where a design, or the right to apply a design to any article, becomes vested, whether by assignment, transmission or operation of law, in any person other than the owner, either alone or jointly with the owner, that other person or, as the case may be, the owner and that other person, shall be treated for the purposes of this Act as the owner of the design or as the owner of the design in relation to that article.
(6) In the case of a design generated by computer in circumstances such that there is no human designer, the person by whom the arrangements necessary for the creation of the design are made shall be deemed to be the designer.
[UK Designs 1949, s. 2; HK Designs, s. 3]
5.
—(1) Subject to the provisions of this Part, a design which is new may, upon application by the person claiming to be the owner, be registered in respect of an article specified in the application.
(2) A design for which an application for registration is made shall not be regarded as new if it is the same as a design —
(a)
registered in respect of the same or any other article in pursuance of a prior application; or
(b)
published in Singapore or elsewhere in respect of the same or any other article before the date of the first-mentioned application,
or if it differs from such a design only in immaterial details or in features which are variants commonly used in the trade.
(3) The Registrar may, in such cases as may be prescribed, direct that, for the purpose of deciding whether a design is new, an application for registration of the design shall be treated as filed on a date earlier or later than that on which it was in fact filed.
[UK Designs 1949, ss. 1 and 3]
6. A design is not registrable if the publication or use of it would be contrary to public order or morality.
[HK Designs, s. 7]
7.
—(1) No computer program or layout-design may be registered under this Act.
(2) For the purposes of subsection (1), “layout-design” has the meaning assigned to it in the Layout-Designs of Integrated Circuits Act (Cap. 159A).
(3) The Minister may make rules —
(a)
to exclude from registration under this Act designs for such articles of a primarily literary or artistic character as the Minister considers appropriate; and
(b)
to provide that any design described in the rules shall not be registered under this Act, or shall not be so registered unless such conditions as may be prescribed are met.
[UK Designs 1949, s. 1; HK Designs, s. 8]
8.
—(1) An application for registration of a design shall not be refused, and the registration of a design shall not be revoked, by reason only of —
(a)
the disclosure of the design by the owner to any other person in such circumstances as would make it contrary to good faith for that other person to use or publish the design;
(b)
the disclosure of the design in breach of good faith by any person other than the owner of the design;
(c)
in the case of a new or original textile design intended for registration, the acceptance of a first and confidential order for goods bearing the design; or
(d)
the communication of the design by the owner to a Government department or the Office or to any person authorised by a Government department or the Office to consider the merits of the design, or of anything done in consequence of such a communication.
[3/2001]
(2) An application for registration of a design shall not be refused, and the registration of a design shall not be revoked, by reason only —
(a)
that a representation of the design, or any article to which the design has been applied, has been displayed, with the consent of the owner of the design, at an official international exhibition;
(b)
that after any such display as is mentioned in paragraph (a), and during the period of the exhibition, a representation of the design, or any article to which the design has been applied, has been displayed by any person without the consent of the owner; or
(c)
that a representation of the design has been published in consequence of any such display as is mentioned in paragraph (a),
if the application for registration of the design is made no later than 6 months after the opening of the exhibition.
(3) In this section, “official international exhibition” means an official, or officially recognised, international exhibition falling within the terms of the Convention on International Exhibitions signed at Paris on 22nd November 1928, and any protocols to that Convention, as revised or amended from time to time.
[UK Designs 1949, s. 6; HK Designs, s. 9]
9.
—(1) Subject to subsection (2), where an application is filed by or with the consent of the owner of copyright in an artistic work for the registration of a corresponding design, the design shall not be treated for the purposes of this Act as being other than new by reason only of any use previously made of the artistic work.
(2) Subsection (1) shall not apply if the previous use consisted of or included the sale, letting for hire, or offer or exposure for sale or hire of articles to which had been applied industrially —
(a)
the design in question; or
(b)
a design differing from it only in immaterial details or in features which are variants commonly used in the trade,
and that previous use was made by or with the consent of the copyright owner.
(3) The Minister may make rules to provide for the circumstances in which a design is to be regarded as having been applied industrially to articles or any description of articles for the purposes of this section.
[HK Designs, s. 10]
10.
—(1) Where the registered owner of a design registered in respect of an article files —
(a)
an application for registration of the registered design in respect of one or more other articles; or
(b)
an application for registration of a design consisting of the registered design with modifications or variations not sufficient to alter the character or substantially to affect the identity of the registered design, in respect of the same or one or more other articles,
the application shall not be refused, and the registration made on the application shall not be revoked, by reason only of the previous registration or publication of the registered design.
(2) The right in a design registered by virtue of subsection (1) shall not extend beyond the end of the period, and any extended period, for which the right subsists in the original design.
(3) Where a person files an application for registration of a design in respect of an article and either —
(a)
the design has been previously registered by another person in respect of some other article; or
(b)
the design to which the application relates is a design previously registered by another person in respect of the same or some other article with modifications or variations not sufficient to alter the character or substantially to affect the identity of the registered design,
then, if at any time while the application is pending, the applicant becomes the registered owner of the design previously registered, subsection (1) shall apply as if, at the time of filing the application, the applicant had been the registered owner of that design.
[UK Designs 1949, s. 4]
11. An application for registration of a design shall be filed in the prescribed manner with the Registrar, and is subject to the payment of the prescribed application fee.
12.
—(1) Subject to subsection (7), where —
(a)
a person has filed an application for the registration of a design in a Convention country in respect of certain articles;
(b)
that application is the first application for the registration of the design to be filed in any Convention country in respect of those articles (referred to in this section as the first Convention application); and
(c)
within 6 months after the date on which the first Convention application is filed, that person or his successor in title applies under this Act for the registration of the design in respect of all or any of those articles,
that person or his successor in title may, when filing the application under this Act, claim a right of priority for the registration of the design in respect of all or any of the articles for which registration was sought in the first Convention application.
[44/2004]
(2) Where any person claims a right of priority in accordance with subsection (1) in respect of an application for the registration of a design —
(a)
the person shall have priority from (and including) the date on which the first Convention application was filed; and
(b)
the application shall be treated, for the purposes of determining whether that or any other design is new, as filed on the date on which the first Convention application was filed.
[44/2004]
(3) Subsection (2) shall not be construed as excluding the power to give directions under section 5(3) in relation to the application for the registration of a design.
[44/2004]
(4) Notwithstanding any of the provisions of this Act, where a right of priority is claimed in respect of an application for the registration of a design, the application shall not be refused, and the registration of the design under this Act shall not be revoked, by reason only of the fact that the first Convention application has been published during the period between —
(a)
the date the first Convention application was filed; and
(b)
the date the application under this Act was filed.
[44/2004]
(5) Any filing of an application for the registration of a design which in a Convention country is equivalent to a regular national filing, under its domestic legislation or an international agreement, shall be treated as giving rise to the right of priority.
[44/2004]
(6) In subsection (5), “regular national filing” means a filing which is adequate to establish the date on which the application was filed in the Convention country, whatever may be the outcome of the application.
[44/2004]
(7) Where a subsequent application for registration of a design concerning the same subject as an earlier application is filed, whether in the same or a different Convention country, and these are the first 2 applications concerning that subject to be filed in any Convention country, the subsequent application shall be considered the first Convention application if, at the date the subsequent application is filed —
(a)
the earlier application has been withdrawn, abandoned or refused, without having been laid open to public inspection and without leaving any rights outstanding; and
(b)
the earlier application has not yet served as a basis for claiming a right of priority.
[44/2004]
(8) For the avoidance of doubt, where subsection (7) applies —
(a)
the date on which the subsequent application was filed, rather than that of the earlier application, shall be considered the starting date of the period of priority under subsection (2); and
(b)
the earlier application may not thereafter serve as a basis for claiming a right of priority.
[44/2004]
(9) The Minister may make rules as to the manner of claiming priority under this section.
[44/2004]
(10) A right to priority arising under this section may be assigned or otherwise transmitted, either with the application or independently, and the reference in subsection (1) to the applicant’s “successor in title” shall be construed accordingly.
[Trade Marks 1999 Ed., s. 10]
[44/2004]
13.
—(1) The Minister may by order confer on a person who has filed an application for registration of a design in a country or territory to which the Government has entered into a treaty, convention, arrangement or engagement for the reciprocal protection of registered designs, a right to priority, for the purpose of registering the same design under this Act for some or all of the same articles, for a specified period from the date of filing of that application.
(2) An order under this section may make provision corresponding to that set out in section 12 or such other provision as appears to the Minister to be appropriate.
[Trade Marks 1999 Ed., s. 11]
14.
—(1) An applicant may withdraw his application for registration of a design by filing a notice of withdrawal with the Registrar in the prescribed manner before the date on which preparations for publication under section 18 have been completed, as determined by the Registrar.
(2) Where a notice of withdrawal is filed in accordance with subsection (1), the application shall be treated as withdrawn, and such withdrawal is irrevocable.
[HK Designs, s. 18]
15.
—(1) The Registrar may, on his own initiative or upon request made to him in the prescribed manner by the applicant and payment of the prescribed fee, amend an application for registration of a design.
(2) An application for registration of a design shall not be amended if, as a result of the amendment, the scope of the application would be increased by the inclusion of matter that was not in substance disclosed in the application as filed.
(3) The Registrar shall not be obliged to correct on his own initiative any error not due to the default of the Registrar.
(4) Where the Registrar proposes to make any amendment on his own initiative, he shall give notice of the proposal to every person who appears to him to be likely to be affected by the amendment, and shall give the person an opportunity to be heard before making the amendment.
[UK Designs 1949, s. 21; Aust. Designs 1906, s. 22B]
16.
—(1) The Registrar shall examine an application for registration of a design, being an application which has not been withdrawn, to determine whether it satisfies the formal requirements.
(2) If the Registrar determines that an application fails to comply with the formal requirements, he shall notify the applicant and give him an opportunity to correct the non-compliance within such period as the Registrar determines.
(3) If the non-compliance is not corrected within the period referred to in subsection (2), the application shall be treated as withdrawn, but the Registrar may, upon —
(a)
the filing by the applicant of a notice in the prescribed form requesting reinstatement of the application;
(b)
the payment of the prescribed fee; and
(c)
the compliance by the applicant with such conditions as the Registrar may impose,
reinstate the application.
(4) Upon reinstatement of an application, any right or means of redress lost by the applicant as a result of the withdrawal shall be restored to him.
(5) In this section and sections 17 and 18, "formal requirements" means those requirements of section 11, and of rules made for the purposes of that section, that are prescribed as formal requirements.
[HK Designs, s. 24]
17.
—(1) The Registrar may refuse an application for registration of a design if —
(a)
after an examination by him under section 16; and
(b)
after giving the applicant the opportunity to correct any non-compliance with the formal requirements,
the Registrar determines that the application does not satisfy the formal requirements.
(2) The Registrar may refuse an application for registration of a design if, on the face of the application, the design is not new or is not registrable for any other reason.
(3) The Registrar shall give notice of any refusal under this section to the applicant.
[HK Designs, s. 26]
18. Subject to section 17, if the Registrar determines that an application for registration of a design satisfies the formal requirements, he shall as soon as practicable —
(a)
register the design by entering the prescribed particulars in the Register;
(b)
enter the name of the applicant, or the successor in title to the application, in the Register as the owner of the design;
(c)
issue a certificate of registration to the person who is the registered owner of the design at the time the design is registered; and
(d)
publish a notice of the registration and a representation of the design in the prescribed manner.
[HK Designs, s. 25]
[26/2001]
19. The Registrar, in determining whether to accept an application for registration of a design, shall not be required to consider or have regard to —
(a)
the registrability of the design;
(b)
whether the applicant is entitled to any right of priority claimed in the application; or
(c)
whether the design is properly represented in the application.
[HK Designs, s. 27]
21.
—(1) The initial period of registration of a design is 5 years from the date of registration of the design.
(2) The period of registration of a design may be extended for a second and third period of 5 years, by applying to the Registrar for an extension, and paying the prescribed extension fee, before the expiry of the current period of registration.
(3) The Minister may make rules for the Registrar to inform the registered owner of a design, before the expiry of the current period of registration, of the imminent expiry of the registration and the manner in which it may be extended.
(4) If the application and payment are not made before the expiry of the current period of registration, the registration of the design shall cease to be in force upon the expiry of that period and shall be removed from the Register.
(5) If, during the period of 6 months immediately following the expiry of the current period of registration, an application for extension is made and the extension fee and any prescribed late fee are paid, the registration of the design shall be treated as if it had never ceased to be in force, and accordingly —
(a)
anything done under or in relation to any rights in the design by or with the consent of the owner during that period shall be treated as valid;
(b)
an act which would have constituted an infringement of the design if the registration had not ceased to be in force shall be treated as an infringement; and
(c)
an act which would have constituted use of the design for the services of the Government under Part IV if the registration had not ceased to be in force shall be treated as such use.
[UK Designs 1949, s. 8]
22.
—(1) Notwithstanding section 21, where it is shown that a registered design —
(a)
was at the time it was registered a corresponding design in relation to an artistic work in which copyright subsists under the Copyright Act (Cap. 63); and
(b)
by reason of a previous use of that work would not have been registrable but for section 9(1),
the period of registration of the design expires when the copyright in that work expires, if that is earlier than the time at which it would otherwise expire, and it may not thereafter be extended.
(2) Notwithstanding section 21, the period of registration of a design registered by virtue of section 10(1) shall not extend beyond the end of the period of registration, and any extended period of registration, of the original registered design.
[UK Designs 1949, s. 8]
23.
—(1) After a design is registered, any person having or claiming an interest in the design may apply to the Court to determine —
(a)
who is the true owner of the design;
(b)
whether the design should have been registered in the name of the person in whose name it was registered; or
(c)
whether any right in the design should be transferred or granted to any other person,
and the Court shall determine the question and may make such order as it considers appropriate to give effect to the determination.
(2) Without prejudice to the generality of subsection (1), an order referred to in that subsection may contain one or more of the following directions:
(a)
that the name of the applicant be entered in the Register as the owner or one of the owners of the design (whether or not to the exclusion of any other person);
(b)
that the transaction by virtue of which that person has acquired any right in the design be registered;
(c)
that a licence for the use of the design be granted; and
(d)
that the registered owner of the design or any person having any right in the design carry out such act as the Court considers appropriate to give effect to any directions in the order.
(3) If any person to whom a direction referred to in subsection (2) (d) was given fails to comply with the direction within 14 days after the date of the order, the Court may, on application made to it by any person in whose favour or on whose application the order was made, authorise the second-mentioned person to do that thing on behalf of the person to whom the direction was given.
(4) If an application under this section is made after the end of the period of 2 years from the date of issue of the certificate of registration referred to in section 18 (c) in respect of the design in question, no order shall be made under subsection (1) transferring any right in the design from the registered owner to any other person on the ground that the registered owner was not entitled to be registered as the owner, unless it is shown that the registered owner knew at the time of the registration or of the transfer of the design to him, as the case may be, that he was not entitled to be registered as the owner.
(5) The Court shall not make any order under subsection (1) unless notice of the application has first been given to —
(a)
the registered owner of the design; and
(b)
each person registered as having a right in the registered design who is not a party to the application.
[HK Designs, s. 41; Patents 1995 Ed., s. 47]
24.
—(1) Where an order is made under section 23(1) that a registered design be transferred from any person or persons (referred to in this section as the old owner or owners) to one or more persons (whether or not including an old owner), then, except in a case falling within subsection (2), any licences or other rights granted or created by the old owner or owners shall, subject to section 34 and to the provisions of the order, continue in force and be treated as granted by the person or persons to whom the design is ordered to be transferred (referred to in this section as the new owner or owners).
(2) Where an order is so made that a registered design shall be transferred from the old owner or owners to one or more persons none of whom was an old owner (on the ground that the design was registered in the name of a person not entitled to be registered as an owner), any licences or other rights in the design shall, subject to the provisions of the order and subsection (3), lapse on the registration of that person or those persons as the new owner or owners of the design.
(3) Where an order referred to in subsection (2) is made and, before particulars of the reference resulting in the making of the order are entered in the Register, the old owner or owners or a licensee —
(a)
carried out in good faith an act which would have constituted an infringement of the design if particulars of the reference had been registered at the time the act was done; or
(b)
made in good faith effective and serious preparations to carry out such an act,
the old owner or owners or the licensee shall, on making a request to the new owner or owners within the prescribed period, be entitled to be granted a licence (but not an exclusive licence) to continue to do the act or, as the case may be, to do the act.
(4) A licence under subsection (3) shall be for a reasonable period and subject to reasonable terms.
(5) The new owner or owners of the registered design or any person claiming that he is entitled to be granted a licence under subsection (3) may apply to the Court for a determination of whether —
(a)
that person is so entitled; or
(b)
the period or terms of any such licence granted are reasonable.
(6) The Court shall make the determination under subsection (5) and may —
(a)
order the grant of a licence on such terms and for such period as it considers reasonable; or
(b)
vary the period or terms of the licence.
[HK Designs, s. 42; Patents 1995 Ed., s. 48]
25. Any order made under section 23(1) or 24(6) for the grant of a licence shall, without prejudice to any other method of enforcement, have effect as if it were a deed, executed by the registered owner of the registered design and all other necessary parties, granting a licence in accordance with the order.
[HK Designs, s. 43]
26.
—(1) The registration of a design may be surrendered by the registered owner in respect of all or any of the articles for which the design is registered.
(2) The Minister may make rules —
(a)
as to the manner and effect of a surrender; and
(b)
for protecting the interest of other persons having a right in the design.
[HK Designs, s. 30]
27.
—(1) At any time after a design has been registered, any interested person may apply to the Registrar or the Court for the revocation of the registration of the design on the ground that the design was not, at the date of its registration, new, or on any other ground on which the Registrar could have refused to register the design; and the Registrar may make such order on the application as he thinks fit.
(2) At any time after a design has been registered, any interested person may apply to the Registrar or the Court for the revocation of the registration on the ground that —
(a)
the design was at the time it was registered a corresponding design in relation to an artistic work in which copyright subsisted; and
(b)
the right in the registered design has expired in accordance with section 22(1),
and the Registrar may make such order on the application as he thinks fit.
(3) If proceedings concerning a design are pending in the Court, an application for the revocation of its registration must be made to the Court.
(4) If an application for the revocation of the registration of a design is made to the Registrar, he may at any time refer the application to the Court.
(5) An application to the Registrar for the revocation of the registration of a design shall be made in the prescribed manner and be accompanied by the prescribed fee.
(6) A revocation takes effect —
(a)
in the case of a revocation under subsection (1), from the date of registration; and
(b)
in the case of a revocation under subsection (2), from the date on which the right in the registered design expired.
(7) The Minister may make rules to provide for revocation proceedings before the Registrar and for matters relating thereto.
[UK Designs 1949, s. 11; Trade Marks 1999 Ed., s. 22]
28.
—(1) After the registration of a design and upon the filing of a written request by any person in the prescribed manner and the payment of the prescribed fee, the Registrar shall —
(a)
give the person making the request such information; and
(b)
permit him to inspect such documents,
relating to the application for registration of the design (including any representation or sample of the design) as may be specified in the request, subject, however, to such conditions as may be prescribed.
(2) Rules may be made empowering the Registrar to refuse any request in respect of such information or documents as may be prescribed.
(3) Until notice of registration of a design is published under section 18, any information or documents constituting or relating to the application for registration shall not, without the consent of the owner or the applicant, as the case may be, be published or communicated to any person by the Registrar.
(4) Subsection (3) shall not prevent the Registrar from publishing or communicating to others any prescribed information relating to an application for registration of a design.
(5) Where a person is notified that an application for registration of a design has been made and that the applicant will, if the design is registered, bring proceedings against that person in the event of his doing an act specified in the notification, that person may make a request under subsection (1).
(6) The Registrar may grant the request under subsection (1) without the consent of the applicant, notwithstanding that the design has not been registered.
[HK Designs, s. 70]
29.
—(1) Where an application for registration of a design has been made and it appears to the Registrar that the design is one of a class notified to him by the Minister as relevant for defence purposes, the Registrar shall give directions for prohibiting or restricting —
(a)
the publication of information with respect to the design; or
(b)
the communication of such information to any person or class of persons specified in the directions.
(2) Rules may be made for securing that where such directions are given —
(a)
the representation of the design; and
(b)
any evidence filed in support of the application for registration,
shall not be open to public inspection in the Registry during the continuance in force of the directions.
(3) Any person who fails to comply with a direction of the Registrar shall be guilty of an offence and shall be liable on conviction to a fine not exceeding $5,000 or to imprisonment for a term not exceeding 2 years or to both.
(4) Where such directions are in force, the application —
(a)
shall be held in abeyance after the formal requirements referred to in section 16 have been satisfied; and
(b)
notwithstanding section 18, shall not proceed to be processed in accordance with that section until the directions are revoked under subsection (5) (d).
(5) Where the Registrar gives such directions, he shall give notice of the application and of the directions to the Minister, and thereupon the following provisions shall have effect:
(a)
the Minister shall consider whether the publication of the design would be prejudicial to the defence of Singapore;
(b)
the Minister may at any time inspect the representation of the design, or any evidence referred to in subsection (2) (b);
(c)
if, upon the consideration of the design at any time, it appears to the Minister that the publication of the design would not, or would no longer, be prejudicial to the defence of Singapore, notice may be given to the Registrar to that effect; and
(d)
on the receipt of such notice, the Registrar shall revoke the directions and may, subject to such conditions (if any) as he thinks fit, extend the time for doing anything required or authorised to be done by or under this Act in connection with the application for registration, whether or not that time has previously expired.
(6) Where —
(a)
directions given under this section in relation to an application for registration of a design are revoked;
(b)
the design is registered; and
(c)
it appears to the Minister that the applicant has suffered hardship while the directions were in force,
the Minister may make such payment (if any) by way of compensation to the applicant as appears to the Minister to be reasonable having regard to all relevant circumstances.
(7) Nothing in this section shall prevent the disclosure of information concerning a design to a Government department or authority for the purpose of obtaining advice as to whether the directions under this section with respect to an application for registration of that design should be made, amended or revoked.
[UK Designs 1949, s. 5; Patents 1995 Ed., s. 33]