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Singapore - Local Prior Use Sufficient to Estop Design Protection

At present, Singapore still has no local system for protection of designs; design registrations effected in the United Kingdom are "deemed" to extend to Singapore. Under the deeming provisions, a registration extending to Singapore can be held to be ineffective in Singapore on the same grounds as a registration could be held invalid in the United Kingdom. One of these grounds is that the design was not "new" at the time of filing of an application for its registration. However, the United Kingdom statute confines its definition of novelty to what was known in the United Kingdom. Unlike some other countries that similarly deem United Kingdom design registrations to extend to them, the Singapore legislation on this point contains no provision relating to local prior use or knowledge.

In the case of Allwin Hardware & Plastic Mfg Pte Ltd v. Solite Impex Pte Ltd, the Singapore Court of Appeal was confronted with a case where it was shown that there had been prior use of a design in Singapore before the application for the United Kingdom design registration but no evidence was given of any use in the United Kingdom before that date. The Court held that to disregard local prior use when considering the effectiveness of a United Kingdom design registration in Singapore would detract from the underlying object of design protection. The courts should therefore adapt the causes for cancellation in the United Kingdom to local circumstances. Prior use in Singapore was therefore a ground for holding a design registration ineffective in Singapore irrespective of its effect on the validity of the underlying United Kingdom design registration.


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