16 March, 2017
Since Singaporean design market offers interesting opportunities for European SMEs, 40 selected companies recently took part of the EU Gateway Business Avenues mission to Singapore, where they met with local companies in the context of the International Furniture Trade Fair that took place at the Singapore Expo just last week. As IP protection is the key to successful new business endeavors abroad, then in today’s blog post, we have chosen to discuss IP protection issues in the contemporary design industry in Singapore. You will learn what you need to do in order to ensure that your product design is protected in Singapore.
Market Opportunities for European SMEs in Singapore
Underpinned by the efforts of the Singapore’s government to promote a shift to a high-tech creative economy in the industrial design and lifestyle sectors, Singapore is rapidly becoming a contemporary design hub, operating as a gateway to the whole Asian region. Being present in Singapore’s market, would also give European SMEs an easy access to the rest of Asia.
The domestic market of Singapore is also very promising for European SMEs in design sector. Changes in lifestyle across business and consumer segments have increased the demand for high quality products and new design solutions, which offers many business opportunities to European designers. Furthermore, increasing awareness and appetite for eco-friendly solutions amongst Singaporean increasingly affluent middle class offers lucrative business opportunities for European SMEs specialized in eco-design and new design solutions.
Promising business opportunities for European SMEs are also expected in the long run, as the demand for higher quality retail consumption is expected to grow steadily in Singapore. Forecasts show that over one-third of Singapore households will earn more than €135,000 by 2018[1].
European SMEs are recommended to register their designs as well as other intellectual property rights, because despite Singapore having a very comprehensive IP legal framework, IP infringements can be still common in the design industry. IP rights are a key factor for business success and neglecting to register these rights could be very costly for the SMEs. Thus, a tailored IP strategy is needed when entering Singapore’s market, says Valentina Salmoiraghi, IP Business Advisor at the South-East Asia IPR SME Helpdesk.
Register your Industrial Design in Singapore
Although certain protection is granted in Singapore also to unregistered designs, European SMEs are recommended to obtain registered design in Singapore in order to protect their product design in the country. A registered design may be obtained to protect the features of shape, configuration, pattern or ornamentation applied to an article by an industrial process.
It is advisable for SMEs to register industrial designs in Singapore to achieve the following:
- Protection against deliberate copying and independent development of a similar design;
- Proof of ownership when SMEs need to initiate enforcement proceedings in case of an infringement;
- Right to make, offer, trade, market or use the product equipped with the design in Singapore;
- Right to license their designs.
To qualify for registration, designs must be ‘new’ (i.e. not yet published or disclosed to the public) at the time of the application. Therefore, SMEs should ensure that their design is not disclosed to others unless an application has been filed. Designs must also be ‘industrially applicable’ (i.e. capable of mass production).
SMEs should keep in mind that Singapore operates a ‘first-to-file’ system, whereby the first one to file an application in respect of the design will have priority over others. This means that if someone files an application on the design first, any similar or identical registered design which European SMEs wish to obtain will be in danger of being revoked for lack of ‘novelty’. It is therefore advisable to make applications as early as possible.
To maximize the timing, it is also possible to claim the filing date of an earlier application filed in a country member of the Paris Convention or World Trade Organisation (WTO) for protection of the same design, provided that the Singapore application is filed within 6 months from the earlier application.
A registered design is valid in Singapore for 15 years from the date of filing, subject to the payment of renewal fees every 5 years. Industrial Designs can be registered with the Intellectual Property Office of Singapore, and lodging a design application costs around Singapore Dollars 250, (approximately EUR 146) depending on whether the application is e-filed online, or physically filed. The application must contain, inter alia, a Statement of Novelty describing the features of the design which the applicant considers to be new, the appropriate class and sub-class of the article under the Locarno Classification, and representations of the design in the form of drawings or black and white photographs showing various views of the design. These documents must be submitted together with details of any priority claim and the application fee.
It is advisable to conduct industrial design searches prior to registering any designs in Singapore to avoid possible infringement of an earlier conflicting design. This search can be done via the free online database ‘ASEAN Designview’.
Don’t Forget to Also Protect your Brand
Besides registering their industrial designs, SMEs wishing to bring their design products to the Singapore’s market are also advised to register their brand name in Singapore to avoid someone else using their name to take advantage of their notoriety and reputation. Like with industrial designs, trade mark registration also functions under the ‘first-to-file’ rule in Singapore and early applications for trade marks, ideally before release of products (and services) into the market, is recommended.
Although unregistered trade marks may still be protected under the common law tort of ‘passing off’ in Singapore, registration is highly recommended. The law of passing off essentially prevents other traders from unfairly benefiting from the goodwill that that has been built up by a trader.
Three factors need to be proved before a claim of passing off can succeed:
- That the original user of the mark has established goodwill for the trade mark within Singapore;
- That the defendant’s conduct has lead the public to believe that his goods or services are goods or services of the plaintiff (this is usually referred to as the Misrepresentation element); and
- As a result of the misrepresentation, the original user has suffered damage.
Since the legal remedies available in such a case are more limited than if the mark had been registered, it is advisable for the European SMEs to register their trade mark in Singapore.
Furthermore, a 3D trade mark registration could be used as an alternative means to protect product packaging/design when other options have been exhausted says Valentina Salmoiraghi.
Copyright Can Protect your Design while Obtaining a Registered Design
European SMEs who are in the process of obtaining a registered design in Singapore but wish to simultaneously start marketing their products on Singapore’s market may take advantage of copyright protection to fight against possible infringements of their design.
In Singapore, works that qualify for copyright protection under the Copyright Act do not need to be registered in the country as copyright protection is conferred automatically to the author as soon as the creative work is expressed or fixed in a material form from which it is then capable of being reproduced. Copyright is protected for 70 years from the year in which the author died. In case of a copyright, it is wise to clearly determine the ownership, as without evidence to the contrary, the person or entity whose name appears on the work will be deemed the copyright owner of the work.
However, European designers should bear in mind that where the design has been registered and copyright subsists in the corresponding design, there will only be protection under the Singaporean Registered Design Act. This is to prevent dual protection under both registered design and copyright regime. It is very important for designers to note that where the design is registrable, all steps should be taken to register it and maintain the valid registration. Otherwise, copyright protection and registered design protection are not available when the design is industrially applied and exploited commercially, continues Valentina Salmoiraghi.
In Case of Infringement, Enforce your Rights
IP enforcement is very important and if companies manage to build a reputation of strongly enforcing their rights then unscrupulous companies are more likely to move on to harass less litigious companies. Thus, strategic enforcement of IP rights is the key to a successful and comprehensive business strategy. When European SMEs identify infringement of their design, they are recommended to actively enforce their rights in Singapore. Civil litigation or criminal prosecution are available remedies in Singapore.
In the case of civil litigation proceedings, remedies which the Court may award include damages (or an account of profits), statutory damages, an injunction, and disposal of infringing goods. These proceedings are generally instituted for patent, copyright or trade mark infringements, and breach of contracts involving trade secrets and confidential information.
Criminal prosecution applies mainly to the Copyright Act and the Trade Marks Act which provide criminal penalties for infringers. IPR owners may initiate private criminal prosecution against an infringer for copyright or trade mark infringements.
In many cases however private mediation via legal professionals can be very effective and should be considered as a viable option, particularly for SMEs which are often faced with budgetary constraints.
Helika Jurgenson, China IPR SME-Helpdesk
