Asia IP

Singapore’s Geographical Indication (GI) Bill was recently introduced to Parliament where, after public consultations in November 2013, it was passed on the date of its second reading by Indranee Rajah, Senior Minister of State for Law.

The bill aims to strengthen the GI regime by establishing a Registry of Geographical Indications; enhance the protection of GIs in Singapore; and provide improved border enforcement measures for GIs.

GIs, terms used to inform consumers that a product comes from a particular place, are currently protected in the country under the Geographical Indications Act, in accordance with the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) standards.

The TRIPS framework contains a two-tier system of protection for GIs. All GIs are protected against the misleading use of the GI in relation to goods which did not originate from the GI, explains Cecelia Girvin, deputy managing director, IP department, at Drew & Napier in Singapore. She adds GIs of wines and spirits enjoy a higher level of protection, even if consumers are not misled as to the product’s origin.

“The introduction of the bill levels the playing field. It extends the enhanced level of protection previously conferred only to wines and spirits GIs to all successfully registered GIs,” says Girvin.

“Registration will give the holder certainty that a term is recognized as a GI and is therefore entitled to all the protections enjoyed by a GI, without needing to confirm this before the Courts,” Rajah said. “This will facilitate enforcement of these rights.”

All registered GIs would enjoy border enforcement measures similar to that of a registered trademark proprietor, says Girvin. She notes the owner of a registered GI has the right to request the assistance of Customs authorities to detain suspected infringing goods which are expected to be imported into or exported from Singapore.

The proposed GI registry is likely to play a role which is very similar to that of the Trade Marks registry, says Gabriel Ong, senior associate at Drew & Napier in Singapore. Registration is envisaged to be a three-stage process: application, examination, and publication/opposition. One of the registry functions would be to examine the application to ascertain that it complies with certain basic requirements. The GI registry would also be expected to hear any disputes arising from an opposition to the registration of the GI, says Ong.

Without a registration system, Ong says a GI term can only be conclusively through a Court ruling in a civil suit. To date, there have not been any such disputes before the Singapore Courts. “The implementation of a GI registry goes a long way to resolving this uncertainty,” says Ong.

Girvin notes that local food and beverage establishments, consumer retailers, and traders may be potentially affected by the new statutory framework.

Ong says one of the key challenges relates to translations of registered GIs, which will be dealt with on a case-bycase basis. According to Ong, under the proposed GI registration scheme, applicants will not be required to specify which translations of their GIs they wish to protect. The issue of whether a party can use what is purportedly a translation of a GI will be determined by the courts.