REGISTERED DESIGNS BILL

Order for Second Reading read.

The Minister of State for Law (Assoc. Prof. Ho Peng Kee): Mr Speaker, Sir, I beg to move, "That the Bill be now read a Second time."

Sir, over the past 5 years we have been active in reforming our legislation in Intellectual Property or "IP". We enacted major amendments to the Patents, Trade Marks and Copyright legislation. We introduced new legislation in areas such as Geographical Indications and Integrated Circuits. As part of this ongoing effort to finetune our IP legislation, it is now timely to revise our law relating to Industrial Designs by this - the Registered Designs Bill - now before the House.

Sir, in drafting this Bill, we consulted various relevant parties. The Intellectual Property Office of Singapore or (IPOS) worked closely with the Inter-Ministry Committee overseeing Singapore's compliance with the World Trade Organisation's Agreement on Trade Related Aspects of Intellectual Property or "TRIPS". The Committee includes representatives from the Economic Development Board and the Trade Development Board through which the industry was consulted. IPOS also consulted the Law Faculty of the National University of Singapore, the Law Society of Singapore and the World Intellectual Property Organisation (WIPO).

Basically, this Bill creates a registration system in Singapore for the protection of industrial designs. It will replace the existing legislation - the United Kingdom Designs (Protection) Act (Cap 339) - which provides that all designs registered under the United Kingdom Registered Designs Act 1949 enjoy the same rights and privileges here, as in the United Kingdom. Hence, currently, local designers have to register their designs in the United Kingdom in order to enjoy protection in Singapore. This is a circuitous, time-consuming and costly process. It will therefore further promote entrepreneurship if we have our own system to protect registered designs.

A design will be accepted for registration if it is new and applied industrially. It will not be accepted for registration if it is a design that is dictated purely by the function that it has to perform. These definitions are consistent with the approach taken in the United Kingdom. However, in line with recent trends in other countries, the definition now does not require that the features of the design appeal to and are judged by the eye, or that aesthetic considerations must be taken into account.

Applications will now be registered more expeditiously as they will be examined to ensure that they meet formal requirements only. This is similar to the international system of registration adopted at the WIPO diplomatic conference in 1999 as reflected in the Hague Agreement for the International Registration of Designs. The period of protection for registered designs has been shortened to 15 years from the current 25 years. This again is in line with trends in other countries where the periods range from 10 to 15 years. Disputes arising from the registration, for example, where the registration is being contested on any of the grounds on which registration could have been refused will be adjudicated by the Courts or by the Registrar of the Design Registry.

Sir, this Bill reflects many key provisions in other Intellectual Property legislation. Let me mention a few areas. The rights that the design registrant enjoys under the new Bill are similar to the rights enjoyed under other IP legislation. These are that he has the exclusive right to make or import into Singapore for commercial purposes, sell or hire, articles to which his design or any design, which is substantially similar to his design, has been applied. Infringement of this right gives him recourse to injunctions, damages or account of profit, order for delivery up and order for disposal of infringing articles.

Defences available to an alleged infringer are also similar to those available under other IP legislation. It is not an infringement if an act is done for private non-commercial purposes, or if a design is used for evaluation, analysis, research or teaching.

The Government uses provisions that are similar to those in the Patents Act. The Government may use a registered design for the security and defence of Singapore, for the implementation of civil defence measures in the event of a state of emergency or civil defence emergency and public non-commercial purposes. Such use is ordinarily subject to terms agreed with the registered owner, including payment of compensation.

Sir, consequential amendments will be made to the Copyright Act. Presently, designs which do not qualify for registration under the Registered Designs Act may seek protection under Copyright law. Up to now, they may be protected under section 70 of the Copyright Act for 15 years. This protection has been removed as there has been feedback from the related industries that there is no need to protect such designs. These are usually designs for spare parts of articles. This position is similar to the United Kingdom where there is no protection for such designs. Consequential amendments will also be made to section 74 of the Copyright Act to reflect the new reduced term of protection under the new Bill.

Finally, transitional provisions have been put in place to ensure that design owners who had obtained, or were awaiting registrations in the United Kingdom prior to this Act coming into force will, under the new legislation, continue to enjoy their existing rights. For example, even though the term of protection is being shortened, this will not affect the owners of designs registered in the UK who will continue to enjoy 25 years protection.

Sir, I beg to move.

Question put, and agreed to.

Bill accordingly read a Second time and committed to a Committee of the whole House.

The House immediately resolved itself into a Committee on the Bill. - [Assoc. Prof. Ho Peng Kee].

Bill considered in Committee; reported without amendment; read a Third time and passed.