GEOGRAPHICAL INDICATIONS

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Update: Amendments to the GI Act take effect from 15 August 2020

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Singapore’s Geographical Indications Act 2014 (“GI Act”) has now been in force for more than a year, with the latest set of provisions having come into force in November 2019. To date, more than 140 geographical indications (“GI”) have been registered in Singapore.

 

On 15 August 2020, amendments to the GI Act and the Geographical Indications Rules (“GI Rules”) will come into force. The key amendments are:

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(i)  New provisions on treatment of GI variants – at present, there is an informal practice of including variants of a GI, such as translations, in a single application. The amendments now clearly state that it is possible to register variants of a GI, either within the same or in a different application. “Variants” are defined to include translations, transliterations, and other variations of the GI. The amendments also clarify that variants are treated independently from one another; for example, a variant being refused or opposed will not prevent registration of another variant that has not been refused or opposed, and oppositions and cancellations can be made against specific variants only.

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(ii)  Clarification on when a qualification of rights request may be made – currently, a third party can seek at any time to clarify the scope of protection conferred on a published GI by filing a request for qualification of rights to be entered in the GI register. The amendments now clarify that a request for qualification of rights must be made before the GI is registered. There are certain grounds on which a request for qualification of rights cannot be made; in particular, a request for qualification of rights that will effectively nullify the GI cannot be made (the appropriate action is an opposition instead).

 

(iii)  New mechanism for limitation of scope of rights – in place of a post-registration qualification of rights request, the amendments now make it possible to apply to the High Court for an order that a limitation of the scope of rights be entered in the register against a registered GI. Similarly, an application for limitation of rights that will effectively nullify the GI cannot be made (the appropriate action is a cancellation instead).

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These amendments are aimed at improving clarity for proprietors of GIs, and increasing the efficiency of the GI Registry. The assurance that each variant of a GI will be treated independently provides welcome confidence to GI proprietors, and reflects a nuanced understanding of GIs, culture, and language on the part of the authorities. In addition, treating pre-registration and post-registration disputes separately, with pre-registration procedures centred in the Registry, promises to provide greater and earlier certainty on a registration, while providing third parties the latitude to dispute the registration where necessary.

 

If you would like to discuss protecting and enforcing GIs in Singapore, please get in touch with us.