Singapore changes rules for design protection

The Singapore Ministry of Law (MinLaw) has tabled the Registered Designs (Amendment) Bill for first reading in Parliament. The proposed legislative changes will update Singapore’s design protection regime to take into account latest trends in design and technology. It will support the growth of the design industry by making it easier for designers to protect their creative works.

The bill implements the recommendations from the review of Singapore’s registered designs regime conducted by MinLaw and the Intellectual Property Office of Singapore (IPOS). Key features of the Registered Designs (Amendment) Bill include:

(i) Broaden the scope of registrable designs to include:

 Virtual designs of non-physical products that can be projected onto any surface and have useful functions, for example a light-projected keyboard which works like a physical keyboard.

 Colours as a design feature. For example, a new vacuum cleaner shape together with the yellow and black colours of the vacuum cleaner's body can be registered.

In addition, the amendments will clarify that the designs of artisanal or handcrafted items, such as handmade jewellery, can be registered.

(ii) Allow the designer of a commissioned design, rather than the commissioning party, to own the design by default

Currently, where a designer is commissioned to create a design, the commissioning party is the owner of the design. The amendments will instead give the design ownership to the creator by default. This is to highlight the importance of design creation and the valuable contribution of designers. Both parties would still be free to contract otherwise.

(iii) Broaden and lengthen the grace period provision

Currently, a design cannot be validly registered if it has been publicly disclosed before the application date. However, narrow exceptions are provided–a design can be validly registered if the disclosure took plac in very limited circumstances (for example, when the disclosure was in breach of confidence), and the application for design protection was made within six months of the disclosure.

The amendments will broaden the circumstances covered to any disclosure made by the designer, and lengthen the grace period to 12 months. This will enable designers to still obtain design protection if their works were disclosed inadvertently or out of necessity, and is in line with modern business realities where such disclosures could be necessary, and can take place in a wide range of situations.

Singapore provides for design protection under the Registered Designs Act, which was enacted in 2000.  A review of the registered designs regime was conducted from May 2014 to March 2016. The objectives of the review were to support modern business practices while continuing to balance the interests of design creators/owners and users, provide business certainty and ensure that Singapore’s design protection regime is cost-effective. The review included two rounds of public consultation from May to June 2014, and from October to December 2015 respectively. Focus group discussions and one-to-one consultations were also held, including with industry and design associations, businesses, intellectual property practitioners, and academics.

Singapore police raid local computer vendor, find counterfeit Microsoft software

Microsoft has called on consumers and small businesses to be wary of the unintentional purchase and use of counterfeit software. This advisory was issued following a raid of a computer vendor located at Kembangan Plaza yesterday by the Intellectual Property Rights Branch (IPRB) of the Singapore Police Force. 

It is understood that the company operating at the shop had advertised the sale of unauthorised “Microsoft license keys”, claiming they were genuine. Customers could also purchase branded computers and laptops bundled with counterfeit software at highly discounted prices via an online store. These computers were sold with fake Certificates of Authenticity that could mislead customers into believing the software installed were genuine.

During the raid, the authorities also seized 43 units of laptops installed with suspected counterfeit copies of Windows 7 Pro and Office Enterprise 2007 and affixed with fake Certificates of Authenticity. The total commercial value of the seized goods is estimated at S$80,000. The Lenovo, Dell and HP laptops seized are believed to be originally preinstalled with DOS operating systems.

Pirated software often leads to increased security risks and threats from malware and viruses. Honest computer vendors are also put to a disadvantage as they are unable to compete with dealers offering counterfeit software that are often lower in cost. In this case, Microsoft was alerted by a concerned computer vendor when their customer demanded a refund of a genuine copy of software he bought because he claimed the same software was sold by the raided vendor at a cheaper price.

Roland Chan, Senior Director, Compliance Programs – Asia-Pacific, BSA | The Software Alliance (BSA) said, ”Most people do not know what is installed on their systems, and that needs to change. While Singapore has one of the lowest rates of unlicensed software use in the Asia-Pacific region, it is still important for both consumers and businesses to be vigilant in view of the security and malware risk counterfeit software potentially brings. 

"According to our BSA Global Software Survey, the risk of security threats from malware is the chief reason why computer users around the world avoid the use of unlicensed software. Among the risks associated with this, 64% of users cited unauthorised access by hackers as a top concern and 59% cited the loss of data. Consumers and business should actively take steps to prevent the potential risks at hand and to protect themselves from unwanted exposure to potential loss of privacy and data.”

Singapore has one of the most stringent copyright laws in the world. Offenders, if found guilty in the court of law for the manufacture for sale, sale of infringing copies and possession or importation of infringing copies, are liable to a fine not exceeding S$10,000 for each infringing copy, up to a total of S$100,000 per charge, or imprisonment for up to five years. Offenders may also be liable to both a fine and imprisonment if found guilty.

The recent raid was one of several that has been conducted by the authorities in recent months. In September this year, a 20-year-old man pleaded guilty and was fined S$20,000 for selling unauthorised software products or license keys in several local online websites, the maximum fine under the Copyright Act for a first-time offender.

Jonathan Selvasegaram, Corporate Attorney at the Microsoft Digital Crimes Unit (DCU) said, “Software piracy is a major concern for everyone, because of the damage it could cause for unsuspecting users. Such software could expose computers to spyware, malware and viruses that can lead to identity theft, loss of personal data, and unexpected system failures. The risk is very real as this has dangerous repercussions, especially for businesses where operational disruptions caused by malware and viruses could potentially lead to heavy financial losses for them. 

"In fact, a quick anti-malware scan on a new branded laptop purchased earlier from the raided vendor revealed that it contained adware. While good adware can enable you to enjoy apps for free, bad adware can turn your system into a zombie computer that is part of a botnet and is sending out spam, phishing emails, and even attacking other computers. The DCU team hopes to be able to examine the computers seized by the Police in greater detail once the case is over.

Selvasegaram made the remarks in reference to a joint study conducted by International Data Corporation (IDC) and the National University of Singapore (NUS) released in March this year which found that enterprises in Asia Pacific (APAC) are expected to spend nearly US$230 billion to deal with issues caused by malware deliberately loaded onto pirated software. Breaking this down further, the majority of the cost (US$170 billion) will go into dealing with data breaches, while the remainder will be utilised to deal with security issues. 

The study, titled The Link Between Pirated Software and Cybersecurity Breaches, also revealed that 65% of APAC consumers surveyed said their greatest fear from infected software is the loss of data, files or personal information, followed by unauthorised Internet transactions (48%) and potential identity theft (47%).

According to the study, government officials also expressed concern about the potential impact of cybersecurity threats to their nations. The survey outlined that APAC governments are most worried about the unauthorised access to confidential government information (57%), the impact of cyberattacks on critical infrastructure (56%), and the loss of business trade secrets or competitive information (55%). It is estimated that governments worldwide could lose more than US$50 billion to deal with the costs associated with malware on pirated software.

Microsoft reminds buyers and retailers to ensure they obtain their software products only from trusted vendors and local authorised sources. To guard against the unintentional purchase and use of counterfeit software and to find out how to verify the origin of Microsoft products, consumers can visit this Microsoft website.

Asian trademarks in a globalised world

Brands from emerging economies do not have the luxury today of taking decades to establish an international reputation, said panelists during the International Trademark Association's (INTA's) 136th annual meeting, it was reported in a newsletter published by IP Mirror, a domain name registry which also offers cloud hosting services and brand protection.

Source: INTA website.

According to IP Mirror, some of the suggested options for Asian brands focused on global expansion that were discussed at the event in early May in Hong Kong include:

• Adapting localised products for the international market while maintaining trademarks in the new markets.
• Spending more time and money on establishing what the brands represent, as most Asian brand names are likely unheard of, so paying attention to how the mark is presented and what message it invokes is just as important as what name is being registered.
• Buying overseas trademarks to gain access to new channels to market to foreign shoppers, or bringing those brands back home to local consumers seeking established overseas brands. 

"As with any expansion, getting the appropriate localised or regionalised domain names help to secure your online brand in the respective markets," said the company in the newsletter.

INTA separately announced that wage premiums in industries with intensive intellectual property rights (IPR) are significantly higher when compared with other industries: 41% in the European Union* and 42% in the US**.

"Innovation supports millions of jobs worldwide… but only when it is protected by IP rights,” said INTA President Mei-lan Stark (Fox Entertainment Group, US). “Today, the most successful economies, fuelled by the most highly paid workforces, are those in which innovation is encouraged and IP rights are protected.”

INTA coverage on World Intellectual Property Review can be viewed here. New Legal Review did an INTA 2014 roundup here.

*Intellectual property rights intensive industries: contribution to economic performance and employment in the European Union published by the Office for Harmonization in the Internal Market (OHIM) and the European Patent Office in 2013.

**IP and the US economy – industries in focus published by the U.S. Patent and Trademark Office in 2012. published by the Office for Harmonization in the Internal Market (OHIM) and the European Patent Office in 2013.