Design infringement is more common than you think!
In 2016, a gadget called the Fidget Cube was launched on Kickstarter by a start-up company, Antsy Labs. Soon, it became one of Kickstarter’s Top 10 most funded projects in history – raising nearly US$6.5 million in funding from interested buyers. But when the product was delayed by manufacturing issues, numerous imitators of the original industrial design quickly sprung up, depriving Antsy Labs of massive profits, with one imitator earning more than US$350,000 in less than two months, revenue which would have accrued to Antsy Labs had it registered its design prior to its disclosure to the public.
This wholesale reproduction and copying of Antsy Labs’ flagship product is but one example in an increasingly problematic environment where copying of registered designs is rampant and diminishes the profit margins of businesses and entrepreneurial designers.
From complaints by British engineering company Dyson and other Kickstarter rip-offs about imitation products made in Shenzhen, China; to mass market fashion boutiques being accused of copying by indie designers, it increasingly underscores the need to ensure robust laws that keep up with the times in order to sufficiently protect new designs.
What protections for registered designs exist in Singapore, and what does it cover?
In Singapore, new designs are protected under the Registered Designs Act, which was recently updated with effect from 30 October 2017.
Under the amended Registered Designs Act, a “design” is defined as the features of a shape, configuration, colours, pattern or ornament applied to an “article”, or “non-physical product” that gives that “article”/”non-physical product” its appearance. It can be two-dimensional or three dimensional, and it can be applied to everyday items.
Under the Act, an “article” is defined as anything that is manufactured – whether it is via industrial process, by hand, or otherwise – and includes any part of an article (if that part is made and sold separately), and any set of articles.
This means that independent designers and freelance artisans would be able to avail themselves of protection under the Act for items made in small quantities for a niche market, such as handmade jewellery.
The Act also defines a “non-physical product” as any thing that does not have a physical form, and is produced by the projection of a design onto a surface, or into a medium (such as air). Moreover, the “non-physical product” (which also includes any set of “non-physical products) should also have an intrinsic utilitarian function that goes beyond merely portraying the appearance of the thing, or to convey information.
However, certain objects are excluded from protection if they fall under the following categories:
- Designs that are offensive, and contrary to public order or morality;
- Computer programmes, or layout designs of integrated circuits;
- Designs on certain articles such as wall plaques, medals, medallions, and printed matter that is primarily of an artistic or literary nature (e.g. book jacket illustrations, greeting cards, calendars, postcards etc);
- Methods or principles of construction;
- Features of shape, configuration or colours of an article which is solely functional;
- Features of shape, configuration or colours of an article whose appearance is dependent upon another article, or non-physical product, of which the article or non‑physical product is intended by the designer to become an integral part; or
- Features of shape, configuration or colours of an article that enable the article or non-physical product to be connected to, or placed in, around or against, another article or non-physical product, so that either articles or non-physical product may perform its function; or
- Features consisting of only one or more colours that are not used with any feature of shape, configuration; and does not give rise to any feature of pattern or ornament.
Who owns the rights to a registered design?
The owner of the rights in a registered design follows the same principle in copyright law in that ownership vests in the creator of the design. As in copyright law, there are two exceptions to this rule:
- When the design was created as a result of a commission – i.e. where the client pays the designer a sum of money to create a design. Unless there is a pre-existing contract stating otherwise, the client in this situation will be considered as the owner of the rights to the design.
- When the design was created in the course of employment – i.e. where a designer in the employment of a company creates a design, the rights to the design is automatically transferred to the company, unless there is a pre-existing contract stating otherwise.
However, it must be noted that with the recent amendments, ownership in commissioned designs now vests by default in the creator retaining full design ownership to the design.
What are my exclusive rights from holding onto a registered design, and how long do I have it for?
Generally, in order for a design to be registered, it should be new and not previously disclosed publicly before filing an application to register it. However, the Registered Designs Act provides certain exceptions where previously disclosed designs may still be validly registered provided that this is done within a grace period such as where the design was displayed at a recognised international exhibition..
Where the aforesaid grace period was 6 months, the recent amendments extended it to 12 months. The amended Act also expanded the circumstances under which the grace period may be relied upon to include prior disclosure. For instance, if a designer discloses the design for the first time to investors, business partners, or customers at various trade exhibitions, then the designer would have 12 months to submit his application to register the design. However, it must be noted that despite this longer grace period under Singapore law, designers wishing to register their designs overseas should keep the respective foreign countries’ application period in mind, and ensure that you file your design with the appropriate foreign authority within their guidelines.
Once you have successfully registered your design, your design will be protected for an initial five years from the date of the filing. Subsequently, you will continue to enjoy exclusive rights to your design if you renew your registration every five years, up to a period of 15 years.
During this time, you enjoy the exclusive rights to ownership, exploitation of your design, and the right to prevent others from using your design without permission. Some rights that you enjoy include:
- The right to make or import articles embodying the registered design (or a substantially similar one) for the purposes of trade – i.e. sale or hire in exchange for financial remuneration;
- The right to protect your market share by barring others from copying your work; and
- The right to license your design to others for commercial returns, or to sell the design for a sum of money.
How is an infringement of my design defined?
Infringement is considered to have occurred when there is a clear use of your design without your consent, or when someone encroaches on your exclusive rights without your prior authorisation. Even if the infringer only committed preparatory acts – such as making something that would cause the registered design to be subsequently made – that would also be considered a form of infringement.
Under the Registered Designs Act, you are allowed to seek a range of remedies against the party that allegedly infringed on your registered design. These include:
- Damages – the amount of which the court will consider based on the losses suffered or likely to be suffered by the exclusive licensee as a result of the infringement;
- An account of profits – where the court will take into consideration the profits derived from the infringement, and that which is attributable to the infringement of the exclusive licensee’s rights.
- An order for delivery up, and/or disposal of the infringing articles – where the court can order the infringing party to hand over any and all objects that are infringing on the exclusive licensee’s rights and/or to dispose of all of the articles.
However, you must be careful when issuing cease and desist letters to alleged infringers, as you may be vulnerable to an action for making groundless threats of infringement; such actions may only be successfully defended if you succeed in proving your claim. Otherwise, you may face an injunction against the continuance of the threats, a court order for you to pay damages, and/or a declaration that your threats are unjustifiable.
Need advice on protecting your works?
If you need legal advice on the Intellectual Property matters, you can get a Quick Consult with Vicki Heng or other practicing lawyers for a transparent, flat fee of S$49 and expect a call back within 1-2 days to get your questions answered.
This article is written by Vicki Heng from Vicki Heng Law and edited by Tang Chee Seng of Asia Law Network.
This article does not constitute legal advice or a legal opinion on any matter discussed and, accordingly, it should not be relied upon. It should not be regarded as a comprehensive statement of the law and practice in this area. If you require any advice or information, please speak to a practicing lawyer in your jurisdiction. No individual who is a member, partner, shareholder or consultant of, in or to any constituent part of Interstellar Group Pte. Ltd. accepts or assumes responsibility, or has any liability, to any person in respect of this article.
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