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Singapore – Implementing Registration Of Geographical Indications.

20 May, 2014

 

 

The Geographical Indications Act was passed by Parliament on 14 April 2014. The new act will replace the existing Geographical Indications Act when it comes into force. It is not currently in force.


Geographical indications (“GI”) are terms that are used to inform consumers that a product comes from a particular place. The new Geographical Indications Act will replace the existing system with one based on registration.


Implementation is linked to the ratification of the EU-Singapore Free Trade Agreement (“EUSFTA”). In her second reading speech, Indranee Rajah, the Senior Minister of State for Law, stated that the following timeline will apply:

 

  • The GI Registry will be established only if the EU Parliament ratifies the EUSFTA.
  • The enhanced protection for all categories of registered GIs will only kick in when the benefits of the EUSFTA is provisionally applied both ways.
  • Improved border enforcement measures will only be effected within three years after the EUSFTA enters into force.

 

Overview And Legal Background

 

As noted above, GIs are terms that are used to inform consumers that a product comes from a particular place. The most common examples come from the category of food and drink. Items such as Xuanwei ham, Blue Mountain coffee, and Kobe beef come obviously to mind, but less obvious examples also abound: Champagne, Port, or Basmati are also indicators of product origin.

 

Currently, GIs are already protected in Singapore under the Geographical Indications Act, in accordance with the World Trade Organisation Agreement on Trade-Related Aspects of Intellectual Property Rights, or TRIPS, standards. This provides a two-tiered scheme of protection:

 

  • First, all GI products enjoy a basic level of protection where GI labels cannot be used on products which do not come from the place indicated by the GI, if this misleads the public as to the true geographical origin of those products.
  • For wines and spirits, there is an enhanced level of protection where GI labels cannot be used even if consumers are not misled as to the true geographical origin of the goods in question. One example of this is the use of the term “Bordeaux-like”. This may not mislead consumers but is nevertheless not allowed.

 

The present system does not require GIs to be registered in order to enjoy protection. This has meant, however, that a producer of a particular product will not know whether it enjoys protection as a GI product unless he brings an application in court. This makes the system uncertain and expensive to enforce.


The System For Registration Of GIs

 

As noted, the new Geographical Indications Act will replace the existing system with one based on registration. Registration will give the holder certainty that a term is recognised as a GI and is therefore entitled to all the protections enjoyed by a GI, without needing to confirm this before the courts.

 

Registration of a GI will only be allowed for the following specified categories of goods set out in the schedule:

 

  • Wines, spirits, and beers;
  • Cheese;
  • Meat and meat products;
  • Seafood;
  • Edible and non-edible oils;
  • Fruits and vegetables;
  • Spices and condiments;
  • Confectionary and baked goods;
  • Flowers and parts of flowers; and
  • Natural gum.

Artisanal non-food products have not been scheduled and, accordingly, products such as Kashmiri carpets or Murano glass would not enjoy the benefit of protection.

 

The following persons may file an application for registration of a GI:

 

  • A person who is carrying on an activity as a producer in the geographical area specified in the application;
  • An association of such persons; and
  • A competent authority having responsibility for the geographical indication for which registration is sought.

 

The GI registration system will be similar to the trade mark registration system and will be a three-stage process:

 

  • Application: Among other things, applicants will be required to specify the quality, reputation, or characteristics of the goods in question and how that is attributable to the geographical origin.
  • Examination: There will be detailed examination of each application to ascertain that they fulfil certain fundamental requirements. These are largely similar to what is mandated under the present Act and TRIPS.
  • Publication And Opposition: Thereafter, the application will be made public for a period of time. This is to allow third parties an opportunity to object to the registration, for example, on grounds of “generic-ness” (meaning that the GI has become a common name for describing that product in Singapore).

Registration of a GI will last for 10 years initially. Like the trade mark registration system, this can be renewed for further periods of 10 years.


Existing Rights

 

To protect existing rights, GI registration will also follow the “first in time, first in right” principle. This means that a new application for GI registration may not invalidate a prior conflicting GI or trade mark which already exists. Trade mark owners today using terms similar to GIs being registered will thus not be inconvenienced. However, the GI can still be registered if consent is obtained from the owner of the prior conflicting trade mark. Consequential amendments to the Trade Marks Act will be made to align the current trade marks regime with this position.

 

There will also be exceptions for existing users of GIs so that their business operations will not be disrupted. For instance, if a person has continuously used a GI term in Singapore for a sufficiently long period of time, or has previously used the term in good faith, he or she may continue to use the term, even if the GI is subsequently registered.


Enforcement

 

As is currently the case, the following persons may bring an application to court to enforce the GI against an infringer:

 

  • any person who sells the goods in Singapore or who supplies the goods in Singapore for the purpose of their being sold by another person in Singapore (a “trader”);
  • a producer of the goods; and
  • an association of such producers or traders or of such producers and traders.

The court may grant an injunction or damages or an account of profits.

 

Infringement arises if there is use of a GI in relation to goods which did not originate in the place indicated by the GI, in a manner that misleads the public as to the geographical origin of the goods. In addition, under the new GI Act, there is infringement if the use of the GI constitutes an act of unfair competition. This refers to:

 

  • All acts of such a nature as to create confusion by any means whatever with the establishment, the goods, or the industrial or commercial activities, of a competitor;
  • False allegations in the course of trade of such a nature as to discredit the establishment, the goods, or the industrial or commercial activities, of a competitor; and
  • All indications or allegations the use of which in the course of trade is liable to mislead the public as to the nature, the manufacturing process, the characteristics, the suitability for their purpose, or the quantity, of the goods.

The enhanced protection that wines and spirits currently enjoy will be extended to all successfully registered GIs. This means that protection is conferred even if consumers are not misled as to the products’ true geographical origin.

 

Owners of all registered GIs will have access to improved border enforcement measures. For instance, they will be able to request that our Customs authorities detain suspected infringing goods which are to be imported into or exported from Singapore. These measures are generally based on those in the Trade Marks Act, with modifications to suit the situations involving GIs.

Our Analysis / Comments


The new Geographical Indications Act will provide rights owners enhanced protection for products having a particular reputation associated with a particular geographical territory. As such protection will however be application based, rights owners should act promptly to file applications for GIs, bearing in mind also that the “first in time, first in right” principle may give rise to concerns where there are competing claims to use a GI.

 

wongpartnershiplogo

 

For further information, please contact:

 

Chung Nian Lam, Partner, WongPartnership
chungnian.lam@wongpartnership.com

 

Jeffrey Lim, Partner, WongPartnership
jeffrey.lim@wongpartnership.com


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