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Singapore – A New And Enhanced Regime For The Protection Of Geographical Indications.

9 May, 2014

 

Legal News & Analysis – Asia Pacific – Singapore – Intellectual Property

 

Introduction


The Geographical Indications Bill (Bill No. 13/2014) (“GI Bill”) was introduced in Parliament on 5 March 2014. Following a month of public consultations in November 2013, the GI Bill was passed on the date of its second reading on 14 April 2014.


The GI Bill seeks to repeal and re-enact, with amendments, the Geographical Indications Act (Cap. 117B) (“Repealed Act”). In particular, the key changes introduced under the GI Bill are as follows:

 

Position under the Repealed Act Key amendments introduced by the GI Bill
GIs do not need to be registered in order to enjoy protection under the Act A Registry of Geographical Indications (“GI Registry”) will be established to allow for GIs to be registered
All GI goods enjoy a basic level of protection that prevents the use of GI in a misleading manner which suggests that a good originates from a geographical area other than the true place of origin. 

Wines and spirits enjoy an enhanced level of protection, which means that a GI may not be used on products which do not come from the place indicated by the GI.

Registered agricultural products/foodstuffs will have their level of protection enhanced to the level of protection currently afforded to wines and spirits. 

The enhanced level of protection means that protection is conferred even if consumers are not misled as to the products’ true geographical origin.

No provision under the GI Act for owner of a GI product to request the Singapore Customs to seize goods which are suspected of violating a protected GI. The owner of a GI product can request the Singapore Customs to seize goods (whether imported into or exported out of Singapore) which are suspected of violating a protected GI.

 

The implementation of the changes which the GI Bill introduces depends on the progress of the recently concluded European Union-Singapore Free Trade Agreement (“EUSFTA”). Notably, the GI Act will be implemented in three stages in tandem with the ratification, provisional application and coming into force of the EUSFTA:


Stage 1 – By 2nd quarter or mid 2014 (after the ratification of EUSFTA): GI Registry to be established. Interested parties can apply for registration of GIs. Registrar will examine and publish GI applications. Opposition hearings and disclaimer requests can take place. GIs registered at this point will have “provisional registration”.1


Stage 2 – Earliest by 1st quarter 2015 (after the provisional application of EUSFTA): Enhanced protection for GIs (except border enforcement measures) will begin. Amendments to the Trade Marks Act (Cap. 332)2 will come into force.


Stage 3 – Within 3 years of the entry into force of EUSFTA: Border enforcement measures become available.


Features Of The Geographical Indications Act 2014 (“2014 GI Act”)


The GI Registry And The Registration Of GIs


The proposed GI Registry will be part of the Intellectual Property Office of Singapore (“IPOS”), and will examine applications for GI registration in respect of: (a) Wines and spirits; and (b) Selected categories of agricultural products and foodstuffs (eg. cheese, meat and seafood).


An application for registration of a GI involves a three-stage process: (i) application; (ii) examination; (iii) publication and opposition. The GI will be registered for a period of 10 years from the date of registration, and may be renewed for further periods of 10 years in respect of each renewal.

 

The 2014 GI Act also empowers the Registrar to cancel the registration of any GI upon an application by the registrant or by the Court or Registrar under certain grounds listed under Section 52(2) of the Act, including where the registration was obtained fraudulently or by misrepresentation.


Actions Which May Be Brought Under The 2014 GI Act


The 2014 GI Act allows for parties to bring an action for certain infringing uses of GI, as listed under Section 4 of the Act. One of these uses would be when the use of a GI in relation to any goods did not actually originate in the place indicated by the GI and thus misleads the public as to the true geographical origin of the goods. Further, any use of a GI which constitutes an act of unfair competition within the meaning of Article 10 bis of the Paris Convention is also a basis for which an action can be brought under the Act.
Remedies Under The 2014 GI Act


Civil remedies: The 2014 GI Act has retained the general remedies which a successful plaintiff may be awarded by the Court. Under Section 5 of the 2014 GI Act, infringers can be subject to injunctions, or be liable to pay damages or an account of profits, or both. The 2014 GI Act has also expanded the scope of the Court’s powers to grant orders for the delivery up and disposal or forfeiture of the infringing goods, in addition to any relief granted under Section 5.


Border enforcement measures: The 2014 GI Act allows for interested parties of goods identified by registered GIs to seek assistance from the Singapore Customs to detain goods which are suspected to be infringing, and to preserve the goods for purposes of inspection and examination at a later stage. This self-help measure was previously not available under the Repealed Act.


Remedy for groundless threat of proceedings: The 2014 GI Act also introduces a new remedy for persons who have been wrongfully threatened with proceedings under the said Act. Section 8 of the 2014 GI Act allows for such aggrieved persons to bring an action against the party issuing the threat for groundless threats of proceedings, and seek declaratory and injunctive relief, including damages in respect of any loss which the aggrieved person has sustained by the threats.

 

Conclusion


When the 2014 GI Act comes into full force and effect, it will enhance the protection afforded to proprietors of GIs beyond that afforded by the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs). The introduction of a GI registration system would help to improve the certainty of protection and enforcement of GI rights, as registration would allow the owner to obtain protection of GIs without the need to seek a declaration from the civil court that the name in question qualifies as a GI.


As Singapore prepares to carry out its obligations under the EUSFTA, it is foreseeable that various issues may surface in the course of her implementation of the EUSFTA. These include the following:


(a) The establishment of the institutional capabilities and resources in respect of the GI registration system under IPOS and the border enforcement capabilities of the Singapore Customs;


(b) The examination of 196 EU-recognised GIs listed under the EUSFTA to determine whether these are to be protected in Singapore, once the GI Registry is established. This will take time, given that (i) a GI registry has never existed in Singapore prior to the EUSFTA; (ii) further requests for information from the respective applicants of the GIs may be needed; and (iii) oppositions may be raised at the publication stage on the basis that such GIs are generic in nature, or conflict with earlier trade marks or nonregistered GIs;


(c) The extent to which businesses having operations in Singapore will be affected by the finalized list of GIs to be protected in Singapore, following the examination of the EUrecognised GIs. It is expected that Singapore businesses importing foodstuffs, wines and spirits will have to review and adjust their import and export operations to comply with the new requirements. This would entail ceasing to import the respective products under their original names from third parties which are in conflict with the EU recognized GIs, or working with producers to re-label such products for sale in the Singapore market.


Singapore’s implementation of the EUSFTA will be closely watched in the coming months, as its FTA with the EU is the first of the ten-nation Association of South East Asian Nations (ASEAN), and will serve as a reference point for EU’s ongoing negotiations with Malaysia and Vietnam, countries which already have a GI registration system in place.

 

End Notes:

 

1 Provisionally registered GIs will not enjoy any benefit over and above the current protection accorded to unregistered GIs. Such registered GIs will not have legal effect until stage 2 of implementation occurs.
2 See Section 90 of the GI Bill. The main amendment to the Trade Marks Act would be to include a further ground of refusal of the registration of a trade mark where it consists of a registered GI, or a GI which is pending registration, and where goods for which the trade mark is sought to be registered are identical or similar to that of the said GI and do not originate in the place indicated by the GI.

 

Rajah & Tann

 

For further information, please contact:

 

Kok Keng Lau, Partner, Rajah & Tann

kok.keng.lau@rajahtann.com

 

Nicholas Lauw, Partner, Rajah & Tann
nicholas.lauw@rajahtann.com

 

Cherrin Wong, Rajah & Tann
cherrin.wong@rajahtann.com

 

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