As Singapore's design industry continues to develop, trends in technology and design have prompted the Ministry of Law to announce pertinent changes to the Registered Design Act ("RDA"). The Registered Designs (Amendment) Bill was read on 3 April 2017 and key changes include: (1) a widened scope of registrable designs; (2) shifting ownership from the commissioning party to the designer; and (3) simplifying the procedural scheme for filing registered designs. Widened scope of registrable designs Designers will be enabled to register colours as a design feature, thereby allowing colours to be protected as design features in their products. Also, the scope of registrable designs have been broadened to include virtual designs of non-physical products that can be projected onto a surface and have useful functions, including items such as a virtual keyboard. Shifting the ownership of rights The current default position is that the commissioning party is deemed to be the owner of rights, and not the creator or designer. The proposed change is that ownership will vest in the commissioning party, subject to any agreement to the contrary between the parties concerned. This change marks an important shift in the design industry landscape and is intended to minimise instances of designers and creators inadvertently ceding their registered design rights. Simplifying the procedural scheme for filing registered designs Currently, a designer cannot publicly disclose his / her design before filing for protection. If the design is disclosed, the designer must then file for protection of the design within 6 months of the disclosure. Further, the application will be accepted only under limited circumstances, such as where the disclosure was by a third party in breach of good faith. Now, the window for registration upon disclosure of the design is doubled to 12 months, and includes all situations where disclosure was by the designer. Further, the new scheme allows registration of multiple designs under the same broad category and through a single application. 2 IP Newsletter April / May 2017 Stylisation may not confer distinctiveness - Marvelous AQL Inc.  SGIPOS 3 Facts Marvelous AQL Inc. (the “Applicant”) applied to register (the “Mark”) in Classes 9, 16, 28 and 41 for a variety of goods and services. The Registrar objected on grounds of Section 7(1)(b) and 7(1)(c) of the Trade Marks Act, i.e. that the Mark was descriptive, and non-distinctive. The Applicant accepted that the word had a laudatory descriptive meaning, but argued that the registration ought to be accepted for the following reasons: having a laudatory element in the Mark would not render it descriptive if the Mark does not serve to “directly and specifically designate or describe the goods and services”; there was sufficient stylisation in the Mark such that it was not devoid of any distinctive character; and the Registrar had, in the past, allowed registration of marks which the Applicant considered to be descriptive. Decision The Registrar rejected the arguments against descriptiveness, since the EU cases that the Applicant relied on were dated, and the EU developments clarified that: a sign must be refused registration under the provision if at least one of its possible meanings designates a characteristic of the goods or services concerned; and it is unnecessary that the signs and indications composing the mark actually be in use at the time of the application for registration in a way that is descriptive of the goods or services. Rather, it is sufficient that the mark could be used for such purposes. On the facts, the laudatory term “MARVELOUS!” would indicate to consumers the kind or quality (i.e. superb, excellent, great) or intended purpose (i.e. to cause one to marvel in wonder, admiration or surprise). Further, the Registry held that the Mark, used normally, would indicate the type or quality or intended purpose of the goods or services to consumer, and that it was therefore descriptive. The Registrar also found the stylisation of the Mark to be minor and insufficient to provide the Mark any distinctive character. Finally, the Registrar held that a mark’s registrability had to be considered on the facts of each case and considered the past registrations as being of no assistance. 3 IP Newsletter April / May 2017 Comments Trade mark applicants should consider not just stylisation, but the necessary degree of stylisation required to imbue the mark with distinctiveness. These considerations are all the more necessary where the applicant mark is a descriptive word.