The Ministry of Law’s proposed amendments to the Registered Designs Act (Cap. 266) (“RDA”) seek to bring Singapore’s Registered Designs regime in line with advancements in technology, and to better support producers of creative content in protecting their designs.
This article discusses four potential areas of ambiguity which may warrant further attention from practitioners and designers alike.
1. Registrability of dynamic designs
The term “dynamic designs” does not appear in the Registered Designs (Amendment) Bill (“RDB”), but has surfaced over the course of the public consultations and responses from the Ministry of Law. While “dynamic designs” simply seem to indicate moving designs, the Ministry of Law has clarified that animated designs on static media, such as animated graphical user interfaces (“GUI”), are not “dynamic designs”. Animated GUIs are registrable (and have been registrable) under the RDA as long as they are (a) capable of being represented clearly and without subjectivity on a static medium, and (b) capable of being represented through a series of freeze-frames of the dynamic design.
On the contrary, “dynamic designs” refer to “designs applied onto a dynamic or fluid medium, and as such take on the dynamic or fluid nature of that medium”. Dynamic designs are not registrable due to the lack of consistency in the reproduction of the design. An example of a non-registrable dynamic design provided by the Ministry of Law is the spray pattern of a water fountain.
While the Ministry of Law reports that there is public support for excluding protection of dynamic designs, bans like these make unwelcome inroads into the potential scope of registrability and may be difficult to overcome once put into writing. While specific guidelines and examples are desirable, a case-by-case analysis would avoid the rigid enforcement of these prohibitions. Ultimately an assessment of registrability should ensure that there is certainty in what the applicant seeks to protect.
Consider an outlier like the Osaka Station waterfall clock for example. The movement of water in this water installation is arguably controlled and consistent, and thereby capable of representation through a series of freeze-frames. Further, the design is applied to a useful article, namely an unconventional clock. This may constitute an exception to the Ministry of Law’s statement and warrant some flexibility in the Intellectual Property Office of Singapore’s examination practices. Outliers will likely grow more and more common in the future, especially with the accelerated growth of technology.
2. Registrability of designs applied to non-physical products
The proposed amendments introduce the concept of a “non-physical product” and clarify that registration of designs applied to such products may be possible. The RDB’s definition of this “non-physical product” refers to “anything that does not have a physical form, that is produced by the projection of a design on a surface or into a medium (including air) and has an instrinsic utilitarian function”. This means that it is now possible to register virtual or projected designs.
A second element of this definition is that the product must have “useful functions”, which means the projection does not just “portray an appearance of a thing or convey information”. This is a significant reminder that the registered designs regime protects designs applied to items of utility, so as to reduce the overlap with the copyright regime.
While this proposed amendment is a welcome effort to accommodate the “increasing trend in the use of virtual designs”, application may be less straightforward in practice.
The Explanatory Statement to the RDB gives the example of a “a virtual keyboard that can be used to type characters, in the same manner as a physical computer keyboard”. The Second Reading of the RDB further explains that this “virtual keyboard” would be “projected by light onto a surface”.
However, this example raises questions about the connection between novelty and the expanded scope of registrability. It is important to note that the requirement of novelty of the design has not been abandoned. In this example, there is no indication that the virtual keyboard is different from its physical keyboard in appearance, apart from the fact that it exists in a non-physical form and operates differently.
However, is this sufficient for such a design to be found novel, especially if the difference in appearance between the virtual and physical counterparts is simply a by-product of transposing a familiar physical product into interactive digital form? Arguably, novelty should not be established in the absence of any additional modification to shape, structure, or other design feature. On the other hand, if novelty only lies in how the light-projected keyboard operates, then that relates more to function than form and should be assessed for registrability under the patents regime instead.
3. Possibility of registering designs not applied by industrial process
Under the existing Act, a “design” needed to be applied to an article by an industrial process. Moving forward, “article” will be amended to refer to “anything that is manufactured (whether by an industrial process, by hand or otherwise)…” This is a welcome amendment that benefits small-scale craftsmen and artists, instead of simply protecting parties who are already operating in a more sophisticated factory setting. Further, it widens the pool of potential applicants under the RDA, as there is a growing group of entrepreneurs selling handmade products in limited quantities on online marketplaces.
As the scope of what constitutes an “article” is extended to include products which have designs applied by non-industrial process, it is interesting to reconsider which of these designs may actually be registrable in practice. For example, consumers are now better able to connect with small-scale baking enthusiasts online, from whom they may request edible products with customised designs. What then of these designs? According to IPOS’ prior examination practices, food is actually treated as an item of utility, thereby rendering designs applied to food items registrable. For example, the “Lotus Cake” design (Application no. 30201500318S) has been registered in Singapore since 2015.
4. Revisiting the distinction between “industrial application” and “industrial process”
It is worth noting here that “industrial process” as discussed above is a separate matter from “industrial application” in the RDA. This is not a new development under the RDB, but merits some consideration as “industrial application” has also been discussed during public consultations for the RDB.
Whereas “industrial process” appeared as a former criterion for registrability, “industrial application” is relevant in respect of the interface between registered designs protection and copyright protection. The term “industrial application” has been defined to mean (a) more than 50 reproductions in 3D for the purposes of sale or hire, (b) reproduction in 3D in one or more articles manufactured in lengths for sale or hire or (c) reproduction as a plate which has been used to produce (a) or (b).
The critical takeaway is that before a design has been deemed “industrially applied”, copyright protection is still available. Once the 50-item threshold has been crossed however, the design will be excluded from copyright protection. The Ministry of Law has affirmed that while arbitrary, the 50-article threshold provides much-needed certainty and will be retained.
As a practical note, copyright protection is more difficult to enforce as copyright cannot be registered. Therefore, there is an advantage to applying for registration of a design under the RDA at the earliest opportunity before anyone else develops a similar design, especially if a designer intends to produce multiple articles with that design for commercial purposes.
The RDB has benefited from two rounds of public consultations, but how certain amendments will be applied in practice remains unclear, especially since any expansion in the scope of registrability must be balanced by the requirement of novelty. However, the impending enactment of these proposed amendments is a fitting time for makers of creative content (and their agents) to re-evaluate whether their work is eligible for protection under the RDA, and not just copyright. This includes, especially, small and independent entrepreneurs producing traditional crafts or simple homemade goods who may not have considered legal protection in the first place.