Singapore’s Geographical Indications (GI) Rules 2019 was enforced on 1st April 2019 to implement the Geographical Indications Act of 2014 and launch a new Registry of GIs within the Intellectual Property Office of Singapore (IPOS). Since then, the system has been improved to increase its efficiency and to ensure better clarity for GI proprietors. The Geographical Indications (Amendment) Act 2020 and Geographical Indications (Amendment No. 2) Rules 2020 have thus entered into force on 15th August 2020.
(a) Clarification on the treatment of variants of GIs
You may have read about the registration of Geographical Indications in Singapore, including the registrability criteria and the advantages of GI registration with this new Registry, previously on our blog. In the present article, we detail the key amendments of the Geographical Indications Act:
The word “variants”, when applied to GIs, is used to refer to any translations, transliterations, and other possible variations of the applied-for GIs. Two or more variants may constitute the same GI. The text now clarifies that such variants may be registered either within the same application or under separate filing requests depending on the applicant’s wishes.
To illustrate, we can cite the example of the registered GI for Madeira wine made on the Portuguese Madeira Islands, which has been registered with the variants Madeira / Vinho da Madeira / Madère / Vin de Madère / Madeira Wine / Madeira Wein / Madera / Vino di Madera / Madeira Wijn, which are all part of a single application and are now registered under a single number 50201900151X.
It is also interesting to note that these variants are treated separately, and independent of one another, during the substantive examination phase and for opposition purposes. As such, a refused or opposed variant will not constitute an obstacle for the registration of a separate variant even if they are part of the same application. Similarly, a cancellation action may be filed against specific variants only.
(b) Clarification related to the Qualification of Rights
Qualification of Rights requests may be filed with the Registry by third parties to establish the limit between what is protected by the applied-for GI and what is available for use. Such requests may be filed with respect to any words that may be a translation or transliteration of the GI or any name or term contained in the GI itself.
The 2020 amendments bring two important details in this connection:
– While such requests aiming to clarify the scope of protection of the GI, could be filed at any time before implementation of the latest rules, they must now be made before registration of the corresponding GI.
– A Qualification of Rights request will not be accepted if the purpose is to nullify the GI. An opposition should be filed instead.
(c) Removal of post-registration Qualification of Rights and establishment of a Limitation of Scope mechanism
With the amendment of the Geographical Indications Act, 2014, the post-registration Qualification of Rights has now been removed. However, because there may be disputes regarding the scope of the protection conferred upon a registered GI post-registration, a new judicial process will be put in place to resolve such matters.
The Qualification of Rights mechanism will continue to operate for GIs that have not yet been registered. Request for limitation of the scope of protection conferred by a GI may also be filed post registration with the High Court directly. Similarly, if the purpose is to render the GI void, a cancellation action is to be filed instead.
As of today, the Singapore Registry of GIs has granted registration to more than 140 Geographical Indications, among which are:
– CHAMPAGNE, known for some of the most exquisite wine bubbles (Geographical Indication no. 50201900128W granted on 13th July 2019);
– ROQUEFORT, famous for one of the world’s best known blue cheeses, reputed for its characteristic fragrance and flavor (Geographical Indication no. 50201900098R registered as of 6th July 2019);
– JABUGO, known for meat products including its signature ham, Jamón ibérico (Geographical Indication no. 50201900136Y registered as of 20th July 2019).
At IPHub Asia, we are dedicated to helping you protect your Geographical Indications in Southeast Asia. Please get in touch with us if you have any questions.
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