The Law
Singapore does not have a Registry where designs can be registered to obtain protection. Instead, design protection in Singapore is obtained by registering the design in the United Kingdom ("UK") under the UK Registered Designs Act, 1949 ("the UK Act") as amended by the UK Copyright, Designs and Patents Act, 1988. The provisions of the UK Act are extended to Singapore by virtue of Singapore's United Kingdom Designs (Protection) Act, Cap. 339 ("the local Act").
With respect to the validity of the design protection in Singapore, section 4 of the local Act provides that "the High Court shall have the power to declare that exclusive privileges and rights in a design have not been acquired in Singapore under the provisions of this Act upon any of the grounds upon which the United Kingdom registration might be cancelled under the law for the time being in force in the United Kingdom".
Section 11(2) of the UK Act provides for "the cancellation of the registration of the design on the ground that the design was not, at the date of the registration thereof, new ....".
Section 1(4) of the UK Act amplifies the requirement that the design must be "new" by providing that "a design shall not be regarded as new for the purposes of this Act if it is the same design .... published in the United Kingdom .... before the date of the application ....".
Facts
Solite Impex Pte Ltd ("Solite") was the registered proprietor of a UK registered design in respect of frames and corner pieces that were used for decorative purposes for the corners of window frames. Solite commenced an infringement action in the Singapore High Court against Ang Lay See and others ("Ang"). In their counterclaim, Ang attacked the validity in Singapore of the UK design registration on the ground that, inter alia, there was prior use of the design in Singapore which therefore rendered the design not novel. At the trial, the parties agreed to certain facts. Ang admitted that their corner piece is not substantially different from Solite's. Solite on its part admitted that its design was published in Singapore before the date of application for its UK design registration.
Issue
The primary issue before the High Court was whether prior publication in Singapore of the UK registered design was sufficient ground for the High Court to declare that the exclusive privileges and rights in the registered design had not been acquired in Singapore.
High Court Decision - in favour of Solite
The High Court stated that it was of the view that the local Act was enacted in 1938 for the sole purpose of conferring on British manufacturers, who already had a registered design in the UK, design protection in the British colonies and dependencies without the need for re-registration and that all matters affecting the validity of the registered design were to be judged according to the position in the UK under the law there. It held that the wording of section 4 of the local Act and section 1(4) of the UK Act were clear and unambiguous. Consequently, prior publication in Singapore would not invalidate Solite's privileges and rights in Singapore that arose from its UK registered design. Solite's claims were therefore allowed and Ang's counterclaim dismissed. However, the High Court opined that such a situation was unsatisfactory but stated that it was reluctantly constrained by the plain words of section 1(4) of the UK Act.
Court of Appeal - High Court decision reversed
Upon appeal by Ang, the Court of Appeal reversed the High Court's ruling. It held that section 4 of the local Act and section 11 and section 1(4) of the UK Act were not "plain and unambiguous". In particular, it stated that section 1(4) of the UK Act only explains that which "shall not be regarded as new" and is not exhaustive. It was open to the Singapore Court as well as a UK Court to decide other instances in which the design is not to be regarded as new. The Court of Appeal found that it is not plain from section 4 of the local Act that the High Court should act merely as a UK Court. It is arguable that the High Court is to adapt the principle recognised in the UK to the appropriate local equivalents.
After finding that section 4 of the local Act is ambiguous, the Court of Appeal went on to decide the proper interpretation to be placed on the section. It found that the High Court's interpretation would lead to consequences which clearly could not have been intended by Parliament. Therefore, the grounds upon which the High Court could declare that there is no registered design protection in Singapore must be read to include the local equivalents of the grounds applicable to the cancellation of registrations in the UK.
Comment
In coming to its decision, the Court of Appeal set out two situations in which the High Court's interpretation of the legislation would lead to consequences which clearly could not have been intended by Parliament.
Firstly, it would allow the registration and subsequent protection in Singapore of commonplace local designs which happen to be novel in the UK. Novelty of design is central to the registration process. To allow design protection in Singapore where the design is not novel in Singapore would strike at the core object of design legislation, a result which Parliament could not have intended.
Secondly, it would lead to inconsistency with Singapore's Copyright Act. To eliminate dual protection, protection under the Copyright Act is not available for registered designs. Further, if a design is registrable but is not registered, once it has been industrially applied, it has no protection under the Copyright Act. Therefore, for protection in Singapore after the industrial application of a design, the Copyright Act places the burden on the owner of the design to register the design in the UK before the design is industrially applied. However, the High Court's interpretation would eliminate this burden. This is because after the design has been industrially applied in Singapore, the owner of the design can still register it in the UK provided that there is no publication in the UK yet.
Another bizarre consequence that could arise out of the High Court's interpretation is in a situation where the owner of a design in Singapore uses the design in Singapore but does not register it in the UK. Another party could obtain a UK registration for the said design based on novelty in the UK and thereafter seek to exercise the UK registered design rights in Singapore against the actual owner of the design in Singapore. This would in effect allow a party to steal a design.
In light of the above scenarios, the position taken by the Court of Appeal appears reasonable and appropriate. On policy grounds, the position also appears proper. As Singapore is an independent nation, it would indeed appear odd that design protection (which is premised on the novelty of the design) in Singapore does not take into consideration novelty of the design in Singapore itself.
New Design Laws
The present laws on design protection in Singapore based upon a UK registered design is outdated. A review is presently under way and new legislation is expected to be enacted towards the end of 1998 or in 1999.
This article is intended to provide a general guide to the subject matter and should NOT be treated as legal advice. Specific legal advice should be sought by you about your particular case and special circumstances.
You may also wish to read through related material on Intellectual Property matters in Singapore provided by Donaldson & Burkinshaw. You can view the entire archive via the Internet on Mondaq Business Briefing (http://www.mondaq.com), or via your online provider by entering "Donaldson & Burkinshaw" and "Mondaq" as a free text search.
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