Division 1 — Rights of Registered Owner of Registered Design
Rights conferred by registration
30.—(1) The registration of a design under this Act gives to the registered owner the following exclusive rights:(a)
to make in Singapore, or import into Singapore, for sale or hire, or for use for the purpose of trade or business —(i)
any article in respect of which the design is registered and to which that design, or a design not substantially different from that design, has been applied; or
(ii)
any device for projecting a non‑physical product (being a non‑physical product in respect of which the design is registered and to which that design, or a design not substantially different from that design, has been applied);
(b)
to sell, hire, or offer or expose for sale or hire, in Singapore —(i)
any article or non‑physical product in respect of which the design is registered and to which that design, or a design not substantially different from that design, has been applied; or
(ii)
any device for projecting a non‑physical product mentioned in sub‑paragraph (i).[29/2017]
(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 is to 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) or (c) of the definition of “design” in section 2(1), is left out of account in determining whether the design is registrable.[29/2017]
(7) The right in a registered design is not infringed by —(a)
the import, sale, hire, or offer or exposure for sale or hire of —(i)
any article to which the design has been applied, if the article has been placed on the market, whether in Singapore or elsewhere, by or with the consent (conditional or otherwise) of the registered owner; or
(ii)
any device for projecting a non‑physical product (being a non‑physical product to which the design has been applied), if the device has been placed on the market, whether in Singapore or elsewhere, by or with the consent (conditional or otherwise) of the registered owner; or
(b)
the sale, hire, or offer or exposure for sale or hire of any non‑physical product to which the design has been applied, if the non‑physical product has been placed on the market, whether in Singapore or elsewhere, by or with the consent (conditional or otherwise) of the registered owner.[29/2017]
Registration subject to disclaimer
30A.—(1) An applicant for registration of a design, or the registered owner of a registered design, may disclaim any right in relation to a specified feature of the design.
(2) Where the registration of a design is subject to a disclaimer, the rights given by section 30 are restricted accordingly.
(2A) Where an applicant for registration of a design, or the registered owner of a registered design, disclaimed any right in relation to a specified feature of the design —(a)
at any time before 26 May 2022; and
(b)
in any application, request or other document that otherwise complied with the requirements of this Act and the rules made under this Act,
then —
(c)
subsection (1) applies in relation to that disclaimer as if that subsection were in force on the date of the making of the disclaimer; and
(d)
subsection (2) applies in relation to the registration of that design and (if the disclaimer was to apply beginning on a date before 26 May 2022) is taken to have always applied in relation to the registration beginning on the date the disclaimer was to begin to apply.[Act 31 of 2022 wef 01/11/2022]
(2B) However, nothing in subsection (2A) applies to, or may be construed to affect —(a)
any decision or judgment issued by any court given before 12 September 2022 in relation to that design; or
(b)
any proceedings before any court commenced before 12 September 2022 in relation to that design.[Act 31 of 2022 wef 01/11/2022]
(3) The Minister may make rules under section 75 as to the publication and entry in the Register of a disclaimer.[Act 7 of 2022 wef 26/05/2022]
[Act 31 of 2022 wef 01/11/2022]
Rights of third parties to continue use of registered designs
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 the person’s 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) does not include a right to grant a licence to any person to do an act referred to in subsection (1).
(4) Where an article, a non‑physical product, or a device for projecting a non‑physical product, is disposed of to another person in exercise of a right conferred by subsection (1), that other person, and any person claiming through that other person, may deal with the article, non‑physical product or device in the same way as if the article, non‑physical product or device had been disposed of by the owner of the design concerned.[29/2017]
Division 2 — Registered Design as Object of Property
Nature of registered design
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) 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) apply to an assignment by way of security as they apply to any other assignment.
(9) A registered design or any right in it may be the subject of a charge in the same way as other personal or movable property.[16/2012]
(10) 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.
Co-ownership of registered design
33.—(1) Subject to any agreement to the contrary, where there is more than one registered owner of a registered design, each of them is 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 is entitled, by himself, herself or itself or the registered owner’s agent, to do in relation to the design and for the registered owner’s 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, a registered owner must not, without the consent of each of the others —(a)
grant a licence for the use of the design;
(b)
assign any interest in the design; or
(c)
charge his, her or its share in the rights in the design.[16/2012]
(4) Nothing in subsection (1) or (2) affects the mutual rights or obligations of trustees or personal representatives of a deceased person, or their rights or obligations as such.
Registration of transactions affecting registered design
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 must 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) Despite 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.
(5) Provision may be made by rules as to the amendment, alteration or removal from the Register of any particulars in the Register relating to any registrable transaction.[16/2012]
Rights in application for registration
35.—(1) Sections 32, 33 and 34 apply, with the necessary modifications, 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 is to 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.
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 may 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.
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 is 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 must be made a party or parties to the proceedings, but any other registered owner if made a defendant is not liable for any costs or expenses unless that registered owner takes part in the proceedings.
Infringement proceedings by exclusive licensee
38.—(1) The holder of an exclusive licence under a registered design has 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 are to 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 the registered owner is not liable for any costs or expenses unless the registered owner takes part in the proceedings.
General restriction on recovery of damages or profits
39.—(1) In infringement proceedings, the Court must not award damages, nor make an order for an account of profits, against a defendant who proves that at the date of the infringement the defendant 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 is not to 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, a non‑physical product, or a device for projecting a non‑physical product, or to any printed matter accompanying an article, a non‑physical product, or a device for projecting a non‑physical product, 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.[29/2017]
Order for delivery up
40.—(1) Where the defendant to proceedings for infringement of a registered design has in the defendant’s possession —(a)
any infringing article in relation to that design;
(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; or
(c)
any infringing device in relation to that design,
the Court may, in addition to any relief granted under section 36, order the article, thing or infringing device to be delivered to the claimant.
[29/2017]
[Act 25 of 2021 wef 01/04/2022]
(2) An order is not to 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, thing or infringing device is delivered up pursuant to an order made under this section must, 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.[29/2017]
(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.
(5) In this section and section 41, an infringing device in relation to a registered design is a device for projecting a non‑physical product where —(a)
the design, or a design not substantially different from that design, has been applied to the non‑physical product; and
(b)
either or both of the following apply:(i)
the device is made in Singapore or imported into Singapore in such a way as to infringe the design;
(ii)
the device is sold, let for hire, or offered or exposed for sale or hire in Singapore in such a way as to infringe the design.[29/2017]
Order for disposal
41.—(1) Where any infringing article or thing, or any infringing device, has been delivered up pursuant to 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.[29/2017]
(2) In deciding what order (if any) should be made, the Court must have regard to —(a)
whether other remedies available in proceedings for infringement would be adequate to compensate the claimant and protect the claimant’s interest; and[Act 25 of 2021 wef 01/04/2022]
[Act 31 of 2022 wef 01/11/2022]
(b)
the need to ensure that no infringing article or thing, and no infringing device, is disposed of in a manner that would adversely affect the claimant.[29/2017]
[Act 25 of 2021 wef 01/04/2022]
(3) The Court is to issue directions as to service of notice on persons having an interest in the article, thing or infringing device.[29/2017]
(4) Any person having an interest in the article, thing or infringing device 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.[29/2017]
(5) An order made under this section does 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, thing or infringing device, the Court may —(a)
direct that the article, thing or infringing device be sold, or otherwise dealt with, and the proceeds divided; and
(b)
make any other order as the Court thinks just.[29/2017]
(7) If the Court decides that no order should be made under this section, the person in whose possession the article, thing or infringing device was before being delivered up is entitled to its return.[29/2017]
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, even though 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 the registered owner with full particulars in writing of the act in question; and
(b)
the registered owner has refused or failed to give any such acknowledgment.
Certificate of contested validity of registration
43.—(1) If in any proceedings before the Registrar or the Court the validity of the registration of a design is contested, and the Registrar or the Court finds that the registration of the design is valid, the Registrar or the Court may certify the finding and the fact that the validity of the registration was so contested.[23/2019]
(2) Where a certificate is given under subsection (1) and in subsequent proceedings for infringement of the design or for revocation of the registration of the design before the Registrar or the Court —(a)
the validity of the registration is again questioned; and
(b)
the registered owner obtains a final order or judgment in the registered owner’s favour relying on the validity of the registration as found in the earlier proceedings,
the registered owner is entitled to the registered owner’s costs as between solicitor and client unless the Registrar or the Court directs otherwise.
[23/2019]
(3) Subsection (2) does not extend to the costs of an appeal in any such proceedings.
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 the person has sustained by the threats,
and the claimant is entitled to such relief unless —
(d)
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
(e)
the claimant fails to show that the registration of the design concerned is invalid.[Act 25 of 2021 wef 01/04/2022]
(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 renders an advocate and solicitor liable to an action under this section in respect of an act done by him or her in his or her professional capacity on behalf of a client.
Source: Singapore Statutes Online (Attorney-General's Chambers), © Government of Singapore.
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