Protection of Geographical Indications in Singapore

27th October, 2022 - 6:31 am Categories: Intellectual Property Protection 0 Comments

Introduction

Following the European Parliament’s consent for the European Union-Singapore Free Trade Agreement (EUSFTA), the Registry of Geographical Indications was launched by the Intellectual Property Office of Singapore to allow registration of geographical indications effective from 01 April 2019.

[Image source:iSTOCK]

Prior to this, trader or association of such producers or traders of any GI enjoyed automatic protection as long as the GIs were protected in its country of origin that is party to the Paris Convention or a member of the World Trade Organisation and there was no need to file for registration to obtain protection of GIs in Singapore. They could also opt to register the GI as a certification or collective mark under the Singapore Trade Marks Act.

Under the Singapore Trade Marks Act enacted in 1938, a certification trademark was defined as a mark distinguishing goods or services that have been certified with respect to origin, quality, and other characteristics from other goods or services not similarly certified. In the subsequent and current phase of trademark legislation, under the Singapore Trade Marks Act passed in 1998, the applicant of certification marks must be independent of the supply of the goods and services for which registration is sought. The proprietor is responsible for setting and regulating the standards which the goods or services bearing the mark must meet.
Once a GI is registered in Singapore, it enjoys enhanced protection where GI labels cannot be used on products which do not come from the place indicated by the GI, even if consumers are not misled as to the true geographical origin of the goods in question. Once a GI is registered, it will be protected for 10 years from the date of registration. The registration may be renewed upon its expiry every 10 years.

Under the new regime, the Geographical Indications Act 2014 and its subsidiary legislation, the Geographical Indications Rules 2019, will form the legislation governing GIs in Singapore. Producers of GI products, associations of such producers and the relevant competent authorities will be entitled to file applications for registration of a GI used in trade to identify goods as originating from a place that is a qualifying country or a region/locality therein, and a given quality, reputation or other characteristic of the goods is essentially attributable to that place in relation to certain categories of agricultural products and foodstuffs. For GIs from qualifying countries outside Singapore, the GIs filed in Singapore must be protected in the country of origin for the goods for which the GI applies.
For now, only manual submission of forms are available and online filings are not acceptable as yet. The minimum filing information and documents are as follows:

a) The name, address and nationality of the applicant.

b) The capacity in which the applicant is applying for registration (e.g. producer / association / a competent authority).

c) The representation of the GI for which registration is sought.

d) The precise geographical area (the demarcation of the territory of the country, or region, or locality in that territory) to which the GI applies.

e) The goods to which the GI applies. An application for registration of a GI may only be sought in respect of goods falling within one or more of the categories of goods set out in the Schedule of the GI Act. The categories of goods are as follows:

1. Wines
2. Spirits
3. Beers
4. Cheese
5. Meat and meat products
6. Seafood
7. Edible oils
8. Non-edible oils
9. Fruits
10. Vegetables
11. Spices and condiments
12. Confectionery and baked goods
13. Flowers and parts of flowers
14. Natural gum

f) The quality, reputation or other characteristic of the goods and how that quality, reputation or other characteristic is essentially attributable to the place from which the goods originate.

g) Evidence in the form of a legal document (such as a legislative or regulatory provision, judicial decision and/or national or regional registration) that the GI has obtained recognition or registration as a GI in the qualifying country of origin.

h) A transliteration in English or an English translation where any of the above information or supporting document is not in English.

An application will be examined and published with opportunity for opposition. If there is no opposition or if all opposition proceedings are resolved in favour of the applicant, the GI will be registered and an electronic Certificate of Registration will be issued. A straightforward application will take approximately 9 months to be registered. The GI will be registered for an initial period of 10 years from the filing date and is renewable every 10 years thereafter.

Conclusion

Since GI registration became possible in 2019, a total of 142 applications have been filed, with all but two successfully registered. In 2020, only two GI applications were filed. Of the registered GIs at present, 92 are for beers, spirits, and wines; 20 for cheeses; 13 for meat and meat products; five for fruits; and three each for the three categories of confectionery and baked goods, spices and condiments, and edible oils. There are also three in the categories of natural gum, non-edible oils, and seafood. The registrar cited Rule 30(5) of the Geographical Indication Rules 2019, which provides that a request for extension may be refused if a good and sufficient reason is not shown for the extension. It further stated that “Parmigiano Reggiano” is one of the items in a list of 196 GIs of interest to the EU set out in an annex appended to the EUSFTA, which was made public in 2013 following a public consultation in which the opponent participated. Thus, the opponent had ample time to pursue opposition. Singapore’s membership in ASEAN, as well as its status as a significant trading hub for goods in the ASEAN region, the EU, and beyond—make the city-state well-suited to become a leader in GI protection. The sui generis GI regime in Singapore may have started a little late, but it is still a great start.

Author: Tanya Saraswat, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at  Khurana & Khurana, Advocates and IP Attorney.