28 March 2019
With effect from 1 April 2019, the Geographical Indications Act 2014 (“Act”) will come into effect to establish a system of registration for geographical indications (“GIs”) as part of Singapore’s commitments under the European Union-Singapore Free Trade Agreement. The Act will repeal the current Geographical Indications Act with effect from 1 April 2019.
Geographical indications or “GIs” are terms which are used to inform consumers that a product, mostly food and drink, comes from a particular place.
GIs are already protected in Singapore under the current Geographical Indications Act, in accordance with the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights, or TRIPS, standards. The present Geographical Indications Act does not require GIs to be registered before they enjoy the relevant type of protection under TRIPS. However, in practice, the absence of a registration system means that a term can only be conclusively determined that it is a GI through a court ruling in a civil suit.
The Act will establish a new system of registration to improve the certainty of protection given to GIs with effect from 1 April 2019. Registration of a GI will provide the holder with 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. This will facilitate enforcement of these rights.
Main features of the GI registration system
Set out below are the main features of the GI registration system:
- When the Act comes into force on 1 April 2019, a Registrar of GIs will be appointed who shall have the control of the Registry of GIs (“GI Registry”).
- The GI Registry will reside within the Intellectual Property Office of Singapore (“IPOS”).
- The GI Registry will examine applications for GI registration in respect of (i) wines and spirits and (ii) selected categories of agricultural products and foodstuffs, such as cheese, meat and seafood.
- GI registration will be a three-stage process that is similar to the trade mark registration system in Singapore. In summary (i) an applicant must specify the quality, reputation, or characteristics of the goods in question and how that is attributable to the geographical origin, (ii) the application will then be examined to ascertain that they fulfil certain fundamental requirements, and (iii) thereafter, the application will be made public for a period of time to allow third parties an opportunity to object to the registration
- Registration of a GI will last for 10 years initially and can be renewed for further periods of 10 years.
- A new application for GI registration may not invalidate a prior conflicting GI or trade mark which already exists. The GI can still be registered if consent is obtained from the owner of the prior conflicting trade mark.
- There will be exceptions for existing users of GIs so that their business operations will not be disrupted. However, certain provisions in the Act relating to the exceptions applicable to registered GIs will not be operative on 1 April 2019 and will instead take effect on a later date(s) yet to be gazetted.
Related subsidiary legislation
The Geographical Indications Rules 2019 and the Geographical Indications (Prescribed Goods under Section 10) Rules 2019 have also been gazetted and will be operative from 1 April 2019.
Provisions relating to enhanced protection for registered GIs not in force
Under the TRIPS two-tier system of protection, wines and spirits enjoy an enhanced level of protection which means that protection is conferred even if consumers are not misled as to the products’ true geographical origin. Section 4 of the Act will extend this enhanced level of protection beyond wines and spirits to all successfully registered GIs, including agricultural products and foodstuff. However, the relevant provisions in section 4 of the Act which provide for a new right of action in respect of certain non misleading uses of a registered GI identifying an agricultural product or foodstuff belonging to a category of prescribed goods will not be operative on 1 April 2019 and will instead take effect on a later date(s) to be gazetted.
Provisions relating to improved border enforcement measures not in force
Part VI of the Act which will provide for owners of all registered GIs to have access to improved border enforcement measures will not be operative on 1 April 2019 and will instead take effect on a later date(s) yet to be gazetted.
Other provisions not in force
Other provisions in the Act which will not be in force on 1 April 2019 relate to:
- the registration of a GI as prima facie evidence that the grounds for refusal of registration in section 41 of the Act are absent; and
- the power of the Singapore High Court to issue a certificate of validity of registration in proceedings where the registration of a GI is challenged.
By way of background, the Geographical Indications Bill 2014 (“Bill”) was passed in Parliament on 14 April 2014 following a public consultation conducted by IPOS to seek feedback on proposed enhancements to the current Geographical Indications Act. Between 10 September 2018 and 5 October 2018, IPOS held a public consultation and sought comments on a draft version of the Geographical Indications Rules.
The Act and related subsidiary legislation can be accessed from the Singapore Statutes Online website sso.agc.gov.sg.