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.
