How to Register a Geographical Indication (Place of Origin) in Singapore
If you are a business owner or a producer of goods which obtain special characteristics from their place of origin, you may wish to register a Geographical Indication (GI) in respect of those goods. Read on to find out:
What is a Geographical Indication?
A geographical indication (GI) is any sign that indicates that a particular product originates from a certain place and has unique characteristics (quality, reputation or other characteristics like its taste, if it’s a food product, or texture) that are essentially attributable to that place. This could be due to factors such as the unique climate, ingredients used and/or particular know-how deeply rooted in the region in question.
Usually, such a sign will be the name of the territory of origin. Examples of GIs include Champagne wine from the Champagne wine region in France, Tequila liquor made from the blue agave plant from the area surrounding the city of Tequila in Mexico and Gruyère cheese from the Gruyères region in Switzerland.
In order to fall under the legal definition of a geographical indication under the Geographical Indications Act 2014 (GI Act), the sign-in question must also meet the following criteria:
- The place of origin is a qualifying country or a region or locality in a qualifying country. Qualifying countries are countries that are members of the World Trade Organization, parties to the Paris Convention, or any other countries designated by the Minister for Law under the GI Act. Practically speaking, this means that almost all countries are qualifying countries save for a select few such as Ethiopia, Eritrea, Somalia and Timor Leste.
- The place of origin must have given the product its special quality or reputation.
One GI can have multiple variants. In other words, translations, transliterations or other variations of the relevant sign can be considered the same GI.
Under the GI Act, all GIs (registered or unregistered) have a basic level of protection. This basic level of protection allows producers and traders (or associations of such producers/traders) of goods indicated by the GI (where such producers, traders and associations of such producers/traders are known as “interested parties”) to take action against someone who uses the GI in relation to goods that do not come from the place indicated by the GI.
However, it may be in your best interests to register a GI, which will provide enhanced protection among other benefits.
What are the Benefits of Registering a Geographical Indication?
Registration provides enhanced protection
For most unregistered GIs, action can be taken against someone misusing the GI only if the use of the GI in question misleads the public as to the geographical origin of the goods.
For clarity, the possible remedies for such an action are an order restraining the use of the GI and/or damages or an account of profits to the person bringing the action. The court may also order that the goods in question be delivered up to the claimant (i.e. the person who brought the action, and who may also be known as the “plaintiff”) and then destroyed or forfeited if the earlier mentioned remedies are not adequate to compensate the claimant.
Registered GIs have enhanced protection in that it does not matter whether the use of the registered GI was misleading to the public or not.
For example, if someone markets their tea as “Darjeeling-style” or “Japanese Darjeeling Tea”, the use of the GI may not be misleading as the words “style” or “Japanese” could make a buyer realise that the tea did not actually come from the Darjeeling district in India.
In such a case, even if the tea tasted nothing like Darjeeling tea and tarnished the reputation of Darjeeling tea, or at the very least gave a misleading impression of the taste and quality of actual Darjeeling tea, a trader may not be able to take action against the person marketing the tea unless the GI had been registered.
On the other hand, if the GI had been registered and enhanced protection was therefore granted to it, a trader would be able to take action against that person even though the use of the registered GI itself might not have been misleading.
Note that unregistered GIs for wines and spirits have the same enhanced protections as registered GIs.
However, in spite of these enhanced protections, action cannot be taken for the use of a GI to identify an ingredient of a wine, spirit or good identified by a registered GI. This is as long as such use is literally true and does not falsely represent to the public that the wine, spirit or product identified by the registered GI itself originates from the place indicated in the GI.
Registration serves as evidence that a Geographical Indication is valid
If a GI is registered, the holder of the registration can be certain that the GI is recognised without needing to prove this before the courts.
Better border enforcement measures
Part VI of the GI Act provides that interested parties for a registered GI will be able to request Singapore customs to detain suspected infringing goods that are expected to be imported into or exported out of Singapore.
These enhanced border enforcement measures have not come into operation yet. However, they are expected to be implemented within 3 years of the date of entry into force of the European Union-Singapore Free Trade Agreement (namely within 3 years of 21 November 2019).
What are the Eligibility Criteria to Register a Geographical Indication?
In order to register a GI, the application must fulfil the following criteria:
- The applicant must be one of the following:
- A person who produces the goods in the geographical area specified in the application
- An association of such persons
- A competent authority that has responsibility for the GI
- The GI must fall within the legal definition of a GI as described above.
- The GI must identify goods that fall within any of the categories of goods set out in the Schedule to the GI Act. These may be amended from time to time. At the time of writing, the categories of goods are:
- Meat and meat products
- Edible oils
- Non-edible oils
- Spices and condiments
- Confectionery and baked goods
- Flowers and parts of flowers
- Natural gum
- The GI is not contrary to public policy or morality. One hypothetical example could be if the GI was for a region which had a name similar to a profanity.
- The GI is protected in its country or territory of origin.
- If the GI is sought in respect of certain goods, the GI cannot be identical to the common name of those goods in Singapore.
- The GI does not contain the name of a plant variety or an animal breed such that it is likely to mislead the consumer as to the true origin of the product.
- The GI is not similar or identical to an earlier GI and does not have the same geographical origin as that earlier GI such that it would likely cause confusion to the Singapore public.
- Note that two GIs which are spelled or sound the same but have different geographical origins can be registered but this registration may be subject to conditions. Such conditions might be imposed to ensure that consumers are not misled and to ensure the equitable treatment of all the interested parties concerned.
- The GI must not be similar to a trade mark registered in Singapore before the date of the application for the registration of the GI in Singapore such that it would likely cause confusion to the Singapore public, unless the owner of that trade mark consents or fails to give the required notice of opposition.
- The GI must not be similar to a trade mark that was a well-known trade mark in Singapore before the date of application for the registration of the GI, unless the owner of that trade mark consents or fails to give the required notice of opposition.
In order to ensure that your GI is not similar to an earlier GI or trade mark, you should check the register of geographical indications and the register of trade marks. Otherwise, you might be faced with objections to your application to register a GI.
How Do You Register a Geographical Indication?
You can follow the steps below to apply to register a GI. For the relevant forms, you may obtain them from the website of the Intellectual Property Office of Singapore (IPOS).
Assuming that there are no problems with the application and that the application does not face any objection or opposition, the registration process may take about 9 months.
Step 1: Application
The application must be in Form GI1 and must include:
- The name, address and nationality of the applicant, and an address for service in Singapore
- The capacity in which the applicant is applying for registration
- The GI for which registration is sought
- The geographical area to which the geographical indication applies
- The goods to which the geographical indication applies
- The quality, reputation or other characteristic of the goods and how that quality, reputation or other characteristic is essentially attributable to the place from which the goods originate
- Where the geographical indication for which registration is sought relates to a qualifying country other than Singapore, evidence that the geographical indication has obtained recognition or registration as a geographical indication in the qualifying country of origin
If any of the above information besides (3) is in its native language that is not in English, a suitable translation in English should be provided.
If the representation of the GI consists of a word or words not in Roman characters, the application form must also contain a transliteration in English as well as the language to which the words belong.
The application fee to apply for a GI is $1,000. If any of the above information is not provided or if the application fee is not paid, the application will be treated as not filed.
If your application does not meet the above requirements, you will be notified by the Registrar to either provide the necessary information or pay the application fee (as relevant) by a stipulated deadline. If you do not do so, your application will be treated as withdrawn.
Otherwise, your application will proceed to the Examination stage.
Step 2: Examination
At the second stage, your application will be examined to make sure the GI is registrable under Singapore law.
If the examiner directs that your application should be amended, you will have to submit Form GI2 with a $230 fee to make the amendment.
If the examiner finds that your application does not appear to meet the legal requirements or requires more information or evidence to meet those requirements, you will receive an examination report stating the objections.
The examiner will then state that you must do one or more of the following within 2 months:
- Make representations in writing
- Apply to amend the application
- Provide additional information or evidence
If you fail to comply with the 2-month deadline, your application will be treated as abandoned. For a request to continue processing your application, you will have to submit Form GI3 with a fee of $180.
Step 3: Publication
If the examiner finds that your GI application is acceptable for registration, your application will be accepted and published in the Geographical Indications Journal (GI Journal) for public inspection.
For 6 weeks after the publication in the GI Journal, anyone may file a notice of opposition with IPOS to oppose the registration of your GI. For example, someone might oppose the registration of the GI if it was similar to their earlier trade mark.
The opponent’s application must be filed together with a statutory declaration containing supporting evidence. The opponent will also have to serve the notice and the statutory declaration on you at the same time.
If this happens, your application will be put on hold pending the outcome of the opposition proceedings.
If no notice of opposition is given within 6 weeks, or if all opposition proceedings are withdrawn or decided in your favour, IPOS will register the GI.
After you receive the notice of opposition, you will have 6 weeks to file a counter-statement in Form GI18 and a statutory declaration setting out the evidence you wish to bring in support of your application. This counter-statement must set out the grounds you will be relying on to support your application and any facts alleged in the notice of opposition which you agree to.
You must serve the copy of the counter-statement and statutory declaration on the opponent at the same time. Failing to meet any of these requirements will cause your application to register your GI to be treated as withdrawn.
The opponent will then have 1 month to file evidence in reply to your counter-statement and statutory declaration.
IPOS may then give directions to both parties at a pre-hearing review.
At any time after you file your statutory declaration or after the period for doing so expires, IPOS will give notice of a date to hear arguments on the opposition. You will have until 2 weeks before the date of the hearing to file your written submissions.
To ensure that you can attend the hearing, you must file Form GI15 and pay the fee of $715.
IPOS will inform the parties of the decision within one month after the last day of the hearing.
Extension of time to file notice of opposition
A party wishing to oppose the GI application may request for an extension to file the notice of opposition within 6 weeks after publication of your application in the GI Journal.
In this case, you will receive a copy of the request at the same time as it is being filed with the IPOS. You have the right to object to such a request within 2 weeks of receiving the copy of the request.
If the opponent failed to send you a copy of the request and successfully obtains an extension, you may also apply to revoke the extension within 2 weeks of learning of the extension from the opponent.
Step 4: Registration
Assuming your GI was not opposed or if the opposition proceedings were decided in your favour, the GI will be registered for 10 years. You will also receive a certificate of registration from IPOS.
How Do You Renew a Geographical Indication Registration?
GI registration may be renewed for further periods of 10 years within 6 months before and after the expiry of the registration.
The application for renewal must be made in Form GI3 and accompanied by a fee of $940. If the application is done after the GI has already expired (namely within the 6 months after the expiry of the GI’s registration), you must pay an additional post-expiration renewal fee of $300.
If you produce goods with special characteristics from their place of origin, it may be in your interest to register a GI in Singapore. This will allow you to take action against errant sellers who mislead the public by claiming or implying that their products come from that place.
While the above serves as a roadmap for your registration, an intellectual property lawyer can help to navigate the complexities of the procedures involved and help defend your GI from any opposition or objections. They can also assist you in other ways like helping you amend your application or renewing your registration if need be.
We hope that the above has been helpful in helping you understand geographical indications and how to register them.
If you have decided to register your GI, feel free to get in touch with one of our intellectual property lawyers should you need any assistance or advice.
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