Speech by Mr. Louis Ng Kok Kwang, MP for Nee Soon GRC at the Second Reading of the Registered Designs Bill [Bill No. 23/2017]
Introduction
Madam, I stand in support of this Bill which brings registered design laws in Singapore closer to the level of protection accorded to designers in the EU.
For example, extending the grace period from 6 to 12 months matches that of the EU. Recognising colour as a protectable design feature, and clarifying that ownership rests in designers rather than the commissioning parties are other examples of matching EU standards.
While I am broadly supportive of these updates which reflect technological advances, as well as the swell in businesses dealing in artisanal and handcrafted products, I would like to raise a few points for clarification.
Requirement of “intrinsic utilitarian function” for non-physical products
The suggested definition for “non-physical product” includes a requirement that it has “an intrinsic utilitarian function that is not merely to portray the appearance of the thing or to convey information”.
Alvin Tay, a law student wrote to me and helpfully highlighted to me that this seems to put designers of non-physical products at a relative disadvantage to their peers designing physical products. Hence, I would like to clarify the reason for the additional requirement of utility for non-physical products.
Additionally, in the definition of “design”, the words “article” and “non-physical product” are used interchangeably. As such, it is difficult to see why a higher hurdle is imposed for “non-physical products”.
If what we are protecting is really the shapes, configurations, colours, patterns or ornaments that give non-physical products their appearances, what is the rationale for the requirement of a utilitarian function?
The utility of a product would be pertinent in patent law where protection should only be afforded if there is industrial application.
Design laws are distinct from patent laws, and the focus should be on giving protection for each designer’s aesthetic work, regardless of whether or not there is a utilitarian function.
Overlap with patent protection
The Intellectual Property Students’ Association, comprising law students in both NUS and SMU, also raised the concern that non-physical products under the Registered Designs Act could lead to some overlap with patent law, since the line between the design and the function of a non-physical product is less clear. This opens up the possibility of abuse, where a designer may register the design of his product after its patent protection period has expired, to extend the exclusivity of the product.
Could the Minister clarify how the registered design regime will manage the potential overlap with the patent protection for a non-physical product?
Using the example of the virtual keyboard in the Bill’s explanatory notes, could a person who invents such a keyboard obtain patent protection and design protection at the same time? If so, what would be the scope of the protection under each regime?
Exclusive rights to device for projecting a registered non-physical product
Next, the amended Section 30(1) provides the designer with certain exclusive rights over any device for projecting a registered non-physical product.
It is possible that a device may not be for the exclusive use of projecting a non-physical product whose design is registered, but may be able to project a range of non-physical products irrespective of design.
Can the Minister clarify how the rights to the device will be allocated in such a situation?
Conclusion
Madam, notwithstanding the above clarifications, I stand in support of the Bill.