A geographical indication (“GI”) can be understood to be a sign which when applied to products corresponds with a particular geographical origin attributing certain essential and peculiar qualities or reputation to such products. In essence, a GI performs the function of being an indicator of certain characteristics or reputation or certifying adherence to traditional/ distinctive methods of production of such goods. On account of such geographical origin and corresponding history, products bearing a GI enjoy special reputation.
A few commonly known GIs include Champagne (sparkling wine from the Champagne region of France), Jamaica Blue Mountain (a type of coffee grown in the Blue Mountains of Jamaica) and Darjeeling tea (grown in the Darjeeling district in West Bengal, India).
Singapore is presently augmenting the scope of protection afforded to GIs, in particular to comply with its obligations under the recently signed European Union-Singapore Free Trade Agreement (“EUSFTA”).
Upon ratification of the EUSFTA by Singapore, The Geographical Indications Act 2014 (GI Act 2014) passed by the Parliament of Singapore on 14 April 2014, will come into force.
Applications for the registration of GIs in relation to certain categories of wines, spirits and selected categories of agricultural products and foodstuffs, which originate from and have obtained protection as a GI in countries and territories that are party to the World Trade Organisation or the Paris Convention, will be permitted to be filed by GI products’ producers, associations affiliated with such producers and the relevant authorities that govern GI producers.
An important feature of the Act includes the establishment of the new Registry of Geographical Indications (“GI Registry”) which will regulate GI applications and registrations in Singapore.
The Act and the proposed GI Rules will administer the Registry’s operational aspects with respect to GIs. They are analogous to the Trade Marks Rules in Singapore and bear structural similarity to it. In fact, a public consultation on the proposed rules has also been conducted by the Intellectual Property Office of Singapore.
Once an application for the registration of a GI has been filed, it will first be examined to ensure compliance with formalities and criteria for registration. Pursuant to the substantive examination, the application will be published for potential third party oppositions.
Key provisions of the proposed GI Rules include:
(a) Preliminary general provisions;
(b) Registration of a GI;
(c) Qualification of rights;
(d) Setting up and maintenance of a Register for GIs;
(e) Renewal of registration of GIs;
(f) Cancellation of GIs;
(g) Evidence and procedure and costs; and
(h) Extension of time and continued processing.
Once registered, a GI would enjoy a 10 year protection which is renewable every 10 years upon the payment of the requisite renewal fees. The proposed Act and Rules also provide for the cancellation of GIs in lines with the trademark law and grounds of cancellation must be specified by the party requesting the cancellation.
Registered GI owners can also place reliance on additional protection afforded by enhanced border enforcement measures, pursuant to the proposed Act and Rules. Registered GI owners would then enjoy a higher degree of protection against third party infringers engaging in unauthorised exploitation of their GI rights. This will further enhance Singapore’s position as a country at the forefront of protecting IP rights.
This article was first published in the December 2018 edition of Law, Lore & Practice.
By Denise Mirandah and Aditi Pranav Desai