The Geographical Indications Act (“Act”) was passed by Parliament on 14 April 2014 and was gazetted on 23 May 2014. The Act is not currently in force, but it will replace the existing Geographical Indications Act when it comes into effect.
The present Geographical Indications Act, which grants protection in accordance with the standards of the Agreement on Trade Related Aspects of Intellectual Property Rights (“TRIPS”), does not provide a system of registration for geographical indications (“GIs”).
TRIPS provides a two-tiered scheme of protection, as follows:
- A basic level of protection for all GI products. 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.
- An enhanced level of protection for wines and spirits. GI labels cannot be used even if consumers are not misled as to the true geographical origin of the goods in question.
However, the lack of a registration system has meant that a term can only be conclusively determined to be a GI through a court ruling.
The Act will establish a system of registration for GIs. Registration will give the holder certainty that a term is recognised as a GI, without the need for confirmation from the courts. This will therefore enhance the protection accorded to GIs.
REGISTRATION OF GIS
A Registry of GIs will be created and will reside within the Intellectual Property Office of Singapore (“IPOS”).
Persons who may apply for GI protection
The following persons are entitled to file an application for registration of a GI:
- a person or association of persons who is carrying on an activity as a producer in the geographical area specified in the application with respect to the goods specified in the application; or
- a competent authority having responsibility for the GI for which registration is sought.
Categories of goods for which a GI application may be submitted
Applications for registration of a GI may be submitted for the following specified categories of goods: wines; spirits; beers; cheese; meat and meat products; seafood; edible oils; non-edible oils; fruits and vegetables; spices and condiments; confectionery and baked goods; flowers and parts of flowers and natural gum.
Information required for GI registration
An application for GI registration will need to include the following information:
- the name, address and nationality of the applicant;
- the capacity in which the applicant is applying for registration;
- the GI for which registration is sought;
- the geographical area to which the GI applies;
- the goods to which the GI applies;
- the quality, reputation or other characteristic of the goods and how that quality, reputation or other characteristic is attributable to the place from which the goods originate; and
- evidence that the GI has obtained recognition or registration as a GI in the qualifying country of origin, where the GI relates to a country other than Singapore.
GI registration process
GI registration will be a 3-stage process that is similar to the trade mark registration system in Singapore, comprising of the following:
- Application: an application for GI registration, which specifies certain information (discussed above), will need to be submitted to the Registrar;
- Examination: there will be a detailed examination of each application to determine that certain fundamental requirements are fulfilled;
- Publication and opposition: after examination, the application will be published for a period of time to allow third parties an opportunity to object to the registration.
Duration of GI registration
A GI registration will last for 10 years from the date of registration and can be renewed for further periods of 10 years.
PROTECTION OF EXISTING RIGHTS
In order to protect existing rights, an action cannot be successfully brought under the Act against the following parties:
- prior users (being a Singapore citizen, resident, corporation, or person with a real and effective establishment in Singapore) of GIs who have continuously used the GIs in Singapore:
- for at least 10 years preceding 15 April 1994; or
- in good faith preceding 15 April 1994;
- prior users of trade marks which were identical or similar to GIs, where the trade marks were applied for, registered, or continuously used, in good faith, in Singapore:
- before 15 January 1999; or
- before the GI in question was protected in its country or territory of origin;
- prior users (being a Singapore citizen, resident, corporation, or person with a real and effective establishment in Singapore) of registered GIs who have continuously used the GIs in Singapore:
- for at least 10 years preceding 1 January 2004; or
- in good faith preceding 1 January 2004;
- prior users of registered trade marks which were identical or similar to registered GIs, where the registered trade marks were applied for, registered, or continuously used, in good faith, before the date of application of the registered GIs in Singapore; and
- prior users of trade marks which were identical or similar to registered GIs, where the trade marks were, before the date of application of the registered GIs in Singapore, a well-known trade mark in Singapore, and where an action under the Act would mislead consumers as to the true identity of the goods identified by that GI.
BRINGING A CLAIM UNDER THE ACT FOR A MISUSE OF A GI
A claim can be brought under the Act if:
- there is a use of a GI in relation to any goods which did not originate from the place indicated by the GI and such use misleads the public as to the geographical origin of the goods;
- the use of the GI constitutes an act of unfair competition within the meaning of Article 10bis of the Paris Convention;
- there is a use of a GI that identifies a wine, which did not originate from the place indicated by the GI; or
- there is a use of a GI that identifies a spirit, which did not originate from the place indicated by the GI.
Under Article 10bis of the Paris Convention, an act of unfair competition refers to any act of competition that is contrary to honest practices in industrial or commercial matters and includes the following:
- 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
- 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.
ENFORCEMENT AND REMEDIES
The following persons may bring a claim in court under the Act:
- a producer of the goods;
- a trader of the goods; or
- an association of such producers or such traders or such producers and traders.
Remedies that the court may grant include an injunction to restrain the further carrying out of the offending act and/or damages or an account of profits.
COMMENTS / RECOMMENDATIONS
Once the Act comes into effect, holders of GI rights, such as producers and traders of goods from a particular country or geographical region, will be afforded enhanced protection and certainty through the system of GI registration. Owners of GIs should therefore take steps to submit an application for GI registration.
Please click on the following links to access the documents.