Changes to Geographical Indications Act effective from 15 August 2020: Clarifications on variants and request for qualification of rights (QoR), introduction of new application for limitation of scope of rights

28 August 2020

With effect from 15 August 2020, changes have been made to the Geographical Indications Act 2014 (“GI Act”) to address issues that have arisen in the course of running the Geographical Indications Registry since its establishment on 1 April 2019, and also to provide greater clarity for traders and producers. By way of background, the Geographical Indications (Amendment) Bill (“Bill”) was passed in Parliament on 3 February 2020 following the Bill’s first reading in Parliament on 6 January 2020.

Geographical indications or “GIs” are terms which are used to inform consumers that a product, mostly food and drink, comes from a particular place. With effect from 1 April 2019, the GI Act established a new system of registration in Singapore to improve the certainty of protection given to GIs. Registration of a GI will provide the holder with certainty that a term is recognised as a GI and is therefore entitled to all the protections enjoyed by a GI, without needing to confirm this before the courts. This will facilitate enforcement of these rights.

Set out below is a summary of the changes to the GI Act that came into operation on 15 August 2020:

Clarify how variants of a GI are to be treated during the application process: The GI Act is amended to clarify that (i) an application for registration can contain more than one variant constituting the same GI, (ii) after an application for registration is accepted and published for public inspection, third parties who oppose the application can choose to oppose the registration of one or more of the variants in the application, instead of all of the variants, (iii) where there is a refusal of registration of a variant, the other variants in the application for registration can nevertheless be registered if they satisfy the requirements of the GI Act; and (iv) similarly, other processes such as an application for cancellation of registration or a request for qualification of rights to be entered in the register need not be in respect of all the variants.

“Variant” is defined in the amended GI Act as a variant of the indication constituting a GI, and includes any translation, transliteration or other variation of the indication. As an illustration, the amended GI Act provides that in the case of a GI known as “Apples of Singapore”, the terms “Lion City Apples” (being a variation) and “Epal Singapura” (being a translation) are variants of the GI.

Make changes to the process for the entry of a qualification of rights (“QoR”) in the register: A request for a QoR is a request usually taken up by a third party, to clarify the scope of protection that the GI Act confers on a registered GI. This is in relation to whether a name or a term contained in the GI, or a term which may be a translation of the GI, is available for use by the third party. As the QoR process was intended to enable an applicant to clarify the scope of protection conferred by the registration (and not to negate the GI registration altogether, by wholly removing the rights conferred by the registration), the GI Act is now amended to clarify that a QoR may not be requested if the QoR request seeks a qualification of all the rights to be conferred in respect of a registered GI. This is to make clear that the QoR regime and the opposition or cancellation regime remain separate and distinct. Applicants seeking to negate the rights conferred under the GI Act in respect of a registered GI or variant will not be able to use a QoR request as a substitute for opposition or cancellation proceedings. Under the amended GI Act, the post-registration QoR process has been removed.
Introduce a new application for limitation of scope of rights: Following the removal of the post-registration QoR process, the amended GI Act provides that any post-registration applications for a limitation as to the scope of rights conferred in respect of a registered GI, will now be filed in and heard by the High Court, under a new judicial procedure called an application for a limitation of scope of rights in respect of a registered GI to be entered onto the register.

Subsidiary legislation

The following subsidiary legislation have also been amended with effect from 15 August 2020: