Bill to amend Geographical Indications Act passed: Clarification on variants and request for qualification of rights (QoR), introduction of new application for limitation of scope of rights
27 February 2020
On 3 February 2020, the Geographical Indications (Amendment) Bill (“Bill”) was passed in Parliament. The Bill seeks to make technical amendments to the Geographical Indications Act 2014 (“GI Act”) to address issues that have arisen in the course of running the GI Registry.
Geographical indications or “GIs” are terms which are used to inform consumers that a product, mostly food and drink, comes from a particular place. With effect from 1 April 2019, the GI Act established a new system of registration in Singapore to improve the certainty of protection given to GIs. 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 facilitates enforcement of these rights.
The amendments under the Bill will ensure the continued smooth operations of the GI Registry, and also provide greater clarity for traders and producers. This Bill seeks to amend the GI Act for the following purposes:
- Clarify how variants of a GI are to be treated during the application process: The Bill will amend the the GI Act to clarify that (i) an application for registration can contain more than one variant constituting the same GI; (ii) after an application for registration is accepted and published for public inspection, third parties who oppose the application can choose to oppose the registration of one or more of the variants in the application, instead of all of the variants; (iii) where there is a refusal of registration of a variant, the other variants in the application for registration may nevertheless be registered if they satisfy the requirements of the GI Act; and (iv) other processes such as an application for cancellation of registration or a request for qualification of rights to be entered in the register need not be in respect of all the variants.
“Variant” is defined in the Bill as a variant of the indication constituting a GI, and includes any translation, transliteration or other variation of the indication. As an illustration, the Bill provides that in the case of a GI known as “Apples of Singapore”, the terms “Lion City Apples” (being a variation) and “Epal Singapura” (being a translation) are variants of the GI.
- Make changes to the process for the entry of a qualification of rights (“QoR”): A request for a QoR is a request usually made by a third party, to clarify the scope of protection that the GI Act confers on a registered GI. This relates to whether a name or a term contained in the GI, or a term which may be a translation of the GI, is available for use by the third party. As the QoR process was intended to enable an applicant to clarify the scope of protection conferred by the registration (and not to negate the GI registration altogether, by wholly removing the rights conferred by the registration), the Bill clarifies that a QoR may not be requested if the QoR request seeks a qualification of all the rights to be conferred in respect of a registered GI. This is to make clear that the QoR regime and the opposition or cancellation regime remains separate and distinct. Applicants seeking to negate the rights conferred under the GI Act in respect of a registered GI or variant will not be able to use a QoR request as a substitute for opposition or cancellation proceedings. The Bill also removes the post-registration QoR process.
- Introduce new application for limitation of scope of rights: As the Bill will remove the post-registration QoR process, it provides that any post-registration application for a limitation as to the scope of rights conferred in respect of a registered GI will be filed in and heard by the High Court under a new judicial procedure called an application for a limitation of scope of rights in respect of a registered GI to be entered onto the register.
The changes under the Bill are targeted to be implemented by the first half of 2020.
The following materials are available on the Ministry of Law website www.mlaw.gov.sg and the Singapore Parliament website www.parliament.gov.sg:
- Second Reading Speech by Senior Minister of State for Law Mr Edwin Tong on Geographical Indications (Amendment) Bill