PART 5 | REGISTRATION OF GEOGRAPHICAL INDICATIONS |
| Division 1 — Registration |
| Persons who may apply for registration |
38. Each of the following persons is entitled to file an application for registration of a geographical indication:| (a) | a person who is carrying on an activity as a producer in the geographical area specified in the application with respect to the goods specified in the application; | | (b) | an association of persons referred to in paragraph (a); | | (c) | a competent authority having responsibility for the geographical indication for which registration is sought. |
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| Application for registration of geographical indications |
39.—(1) An application for registration of a geographical indication must be made to the Registrar in the prescribed manner and must specify —| (a) | the name, address and nationality of the applicant; | | (b) | the capacity in which the applicant is applying for registration; | | (c) | the geographical indication for which registration is sought; | | (d) | the geographical area to which the geographical indication applies; | | (e) | the goods to which the geographical indication applies; | | (f) | the quality, reputation or other characteristic of the goods and how that quality, reputation or other characteristic (as the case may be) is essentially attributable to the place from which the goods originate; | | (g) | 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, where applicable; and | | (h) | such other particulars as may be prescribed. |
| (2) If a person desires to register any variant constituting a geographical indication and the geographical indication is the subject of an application for registration, the person may include that variant either in that application, or in a different application for registration. [5/2020] |
| (3) The application is subject to the payment of the application fee and such other fees as may be appropriate. |
(4) The Registrar must not accept an application unless —| (a) | all the requirements under subsection (1) are satisfied; | | (b) | all the fees payable under subsection (3) are paid; and | | (c) | the applicant is entitled, under section 38, to file an application for registration of a geographical indication. |
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| Registration only in respect of prescribed categories of goods |
40.—(1) An application for registration of a geographical indication may only be sought in respect of goods falling within one or more of the categories of goods set out in the Schedule.| (2) The Registrar is to determine whether or not any specific goods fall within a category of goods set out in the Schedule. |
| (3) The Minister may, by notification published in the Gazette, amend the Schedule. |
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| Grounds for refusal of registration |
41.—(1) The following must not be registered:| (a) | an indication which does not fall within the meaning of “geographical indication” as defined in section 2; | | (b) | a geographical indication which identifies goods that do not fall within any of the categories of goods set out in the Schedule; | | (c) | a geographical indication which is contrary to public policy or morality; | | (d) | a geographical indication which is not or has ceased to be protected in its country or territory of origin; | | (e) | a geographical indication which is identical to the common name of any goods in Singapore, where registration of the geographical indication is sought in relation to those goods; | | (f) | a geographical indication which contains the name of a plant variety or an animal breed and is likely to mislead the consumer as to the true origin of the product. |
| (2) For the purposes of subsection (1)(e), any marketing material in Singapore which uses a geographical indication is relevant evidence that the geographical indication is not the common name of any goods in Singapore, if the marketing material suggests (for example, by using words or pictures) in a misleading manner that the goods to which the marketing material relate originate in the geographical origin of the geographical indication, when those goods originate elsewhere. |
| (3) Subject to section 42, a geographical indication must not be registered if there exists a likelihood of confusion on the part of the public because the geographical indication is identical with or similar to, and has the same geographical origin as, an earlier geographical indication. |
(4) Subject to subsection (7), a geographical indication must not be registered if there exists a likelihood of confusion on the part of the public because —| (a) | the geographical indication is identical with or similar to a trade mark; and | | (b) | the trade mark fulfils either or both of the conditions specified in subsection (5). |
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(5) The conditions referred to in subsection (4)(b) are as follows:| (a) | the trade mark is a registered trade mark or an international trade mark (Singapore), and taking into account (where appropriate) the priorities claimed in respect of the trade mark under the Trade Marks Act 1998 —| (i) | the application for the registration of the trade mark was made in good faith; or | | (ii) | the trade mark was registered in good faith, |
| under the Trade Marks Act 1998 or any previous written law relating to trade marks, before the date of application for registration of the geographical indication in Singapore; |
| | (b) | the trade mark has been used in good faith in Singapore in the course of trade before the date of application for registration of the geographical indication in Singapore. |
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(6) Subject to subsection (7), a geographical indication that is identical with or similar to a trade mark must not be registered if —| (a) | the trade mark is, before the date of application for registration of the geographical indication in Singapore, a well known trade mark in Singapore; and | | (b) | registration of the geographical indication is liable to mislead consumers as to the true identity of the goods identified by that geographical indication. |
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(7) The Registrar may, in the Registrar’s discretion, register any geographical indication referred to in subsection (4) or (6), if the proprietor of the trade mark referred to in subsection (4) or (6), as the case may be —| (a) | consents to the registration; or | | (b) | fails to give notice to the Registrar of the proprietor’s opposition to the registration in accordance with section 45(2). |
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(8) To avoid doubt —| (a) | a reference to a geographical indication in this section includes a variant constituting a geographical indication; and | | (b) | a refusal of registration under this section of any variant constituting a geographical indication does not prevent the registration of any other variant constituting the geographical indication, if that other variant satisfies the requirements of this Act. [5/2020] |
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| (9) In this section, “marketing material” includes material used for labelling or packaging goods, or for advertising goods. |
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| Registration of homonymous geographical indications |
42.—(1) The Registrar may register a geographical indication that is a homonymous geographical indication in relation to an earlier geographical indication.| (2) For the purposes of subsection (1), the Registrar may register the homonymous geographical indication with practical conditions differentiating the homonymous geographical indication from the earlier geographical indication. |
(3) In determining the practical conditions to be imposed under subsection (2), the Registrar must take into account —| (a) | the need to ensure equitable treatment of all the interested parties concerned; | | (b) | the need to ensure that consumers are not misled; and | | (c) | the views and submissions of the applicant for registration of the homonymous geographical indication and of the applicant for registration or registrant (as the case may be) of the earlier geographical indication. |
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| (4) The Minister may make rules to provide for proceedings for the purposes of subsection (3)(c) and for matters relating thereto. |
| (5) Where the Registrar decides to impose practical conditions under subsection (2), the Registrar must impose practical conditions on all the homonymous geographical indications in question. |
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43.—(1) The Registrar must examine whether an application for registration of a geographical indication satisfies the requirements of this Act (including any requirements imposed by rules made under this Act).| (2) For the purpose of subsection (1), the Registrar may carry out a search, to such extent as the Registrar considers necessary, of earlier trade marks and earlier geographical indications. |
| (3) If it appears to the Registrar that the requirements for registration are not met or that additional information or evidence is required to meet those requirements, the Registrar must inform the applicant and give the applicant an opportunity, within such period as may be prescribed, to make representations, to amend the application or to furnish the additional or any other information or evidence. |
| (4) If the applicant responds within the period referred to in subsection (3) but fails to satisfy the Registrar that those requirements are met, or to amend the application or furnish the additional information or evidence so as to meet them, the Registrar may refuse to accept the application. |
| (5) If the applicant fails to respond within the period referred to in subsection (3), the application is to be treated as abandoned. |
| (6) If it appears to the Registrar that the requirements for registration are met, the Registrar must accept the application. |
(7) In this section, “earlier trade mark” means —| (a) | a registered trade mark or an international trade mark (Singapore), the application for registration of which was made earlier than the application for registration of the geographical indication in question, taking into account (where appropriate) the priorities claimed in respect of the trade mark under the Trade Marks Act 1998; or | | (b) | a trade mark which, at the date of application for registration of the geographical indication in question, was a well known trade mark, |
| and includes a trade mark in respect of which an application for registration has been made and which, if registered, would be an earlier trade mark by virtue of paragraph (a) subject to its being so registered. |
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| Appointment of technical advisor |
44.—(1) The Registrar may appoint one or more technical advisors to provide an opinion to the Registrar with regard to any matter before the Registrar, and to the performance of any of the Registrar’s functions under this Act.| (2) The Registrar is not bound to accept any opinion provided by a technical advisor appointed under subsection (1). |
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| Publication and opposition proceedings |
45.—(1) When an application for registration of a geographical indication has been accepted, the Registrar must cause the application to be published in the prescribed manner.| (2) Any person may, within the prescribed time after the date of the publication of the application, give notice to the Registrar of the person’s opposition to the registration. |
| (3) The notice must be given in writing in the prescribed manner, and must include a statement of the grounds of opposition and such other matter as may be prescribed. |
| (4) The Minister may make rules to provide for opposition proceedings and for matters relating thereto. |
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| Requests for qualification to be entered in register |
46.—(1) Subject to subsection (4), any person may, at any time after the date of the publication of an application for registration of a geographical indication under section 45 but before the registration of the geographical indication under section 48, request that a qualification, of any of the rights conferred under this Act in respect of a registered geographical indication, be entered in the register —| (a) | in relation to any name contained in the geographical indication; or | | (b) | in relation to any term which may be a possible translation of the geographical indication. [5/2020] |
(2) The request under subsection (1) may only be made on either or both of the following grounds:| (a) | that one or more of the exceptions referred to under Part 3 applies; | | (b) | that the term referred to in subsection (1)(b) is not a translation of the geographical indication. |
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| (3) The request must be made to the Registrar in writing in the prescribed manner, and must include a statement of the grounds for the request and such other matter as may be prescribed. |
(4) A request under subsection (1) may not be made if the request —| (a) | is for a qualification of all the rights conferred under this Act in respect of a registered geographical indication to be entered in the register —| (i) | in relation to any name contained in the geographical indication that is the subject of the application for registration; or | | (ii) | in relation to any term which may be a possible translation of the geographical indication that is the subject of the application for registration; and |
| | (b) | is made on the ground that one or more of the exceptions mentioned in section 11(a), (b) or (c) or 15 applies to that name or term. [5/2020] |
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| (5) The Minister may make rules to provide for proceedings for the purposes of this section and for matters relating thereto. |
(6) Subject to subsection (7), the Registrar must, if satisfied that either or both of the grounds referred to in subsection (2) is made out, cause to be entered in the register a qualification of the rights conferred under this Act in relation to such of the following as may be applicable:| (a) | any name contained in the registered geographical indication; | | (b) | any term which is not a translation of the registered geographical indication; | | (c) | any term which is a translation of the registered geographical indication. |
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| (7) Where any proceedings for the purposes of this section are concluded before the registration of the geographical indication under section 48, a qualification may only be entered in the register upon the registration of the geographical indication in question. |
| (8) Where a registered geographical indication is subject to a qualification under subsection (6), the rights of an interested party in respect of the geographical indication are restricted accordingly. |
| (9) The Minister may make rules as to the publication and entry in the register of a qualification under subsection (6). |
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| Withdrawal or amendment of application |
47.—(1) The applicant may at any time withdraw the applicant’s application for registration of a geographical indication.(2) An application for registration of a geographical indication may be amended, at the request of the applicant, only by amending —| (a) | the name or other particular of the applicant; [Act 7 of 2022 wef 26/05/2022] | | (b) | errors of wording or of copying; or | | (c) | obvious mistakes, |
| and then only where the amendment does not substantially affect the identity of the geographical indication. |
[Act 7 of 2022 wef 26/05/2022] |
| (3) Subsection (2) is subject to the rules mentioned in section 84(2)(ea). [Act 7 of 2022 wef 26/05/2022] |
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48.—(1) Where an application for registration of a geographical indication, or of 2 or more variants constituting the same geographical indication, has been accepted and —| (a) | no notice of opposition is given within the period referred to in section 45(2); or | | (b) | all opposition proceedings in respect of the geographical indication, or in respect of any of those variants, are withdrawn or decided in favour of the applicant, |
| the Registrar must register the geographical indication, or each variant that is unopposed or in respect of which opposition proceedings are withdrawn or decided in favour of the applicant, as the case may be. |
[5/2020] | (2) The date of registration is the date on which the Registrar registers the geographical indication under subsection (1). |
| (3) On the registration of a geographical indication, the Registrar must issue to the applicant a certificate of registration. |
| (4) Where a request for the qualification of the rights conferred in respect of a registered geographical indication was made before the date of registration of the geographical indication, and the request is still pending at the date of such registration, no interested party may, pending the determination of the request, bring an action under section 4 against the person who made the request for carrying out an act, in relation to the geographical indication, that is the subject of the request. |
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| Application for limitation of scope to be entered in register |
48A.—(1) Subject to subsection (4), any person may, at any time after the registration of a geographical indication under section 48, apply to the Court for an order that a limitation of the scope of any of the rights conferred under this Act in respect of a registered geographical indication be entered in the register —| (a) | in relation to any name contained in the registered geographical indication; or | | (b) | in relation to any term which may be a possible translation of the registered geographical indication. [5/2020] |
(2) The application under subsection (1) may only be made on either or both of the following grounds:| (a) | that one or more of the exceptions mentioned in Part 3 applies; | | (b) | that the term mentioned in subsection (1)(b) is not a translation of the registered geographical indication. [5/2020] |
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| (3) The application must be made to the Court in the prescribed manner, and must include a statement of the grounds for the application and any other matter that may be prescribed. [5/2020] |
(4) An application under subsection (1) may not be made if the application —| (a) | is for an order that a limitation of the scope of all the rights conferred under this Act in respect of a registered geographical indication be entered in the register —| (i) | in relation to any name contained in the registered geographical indication; or | | (ii) | in relation to any term which may be a possible translation of the registered geographical indication and which is registered as a variant constituting the registered geographical indication; and |
| | (b) | is made on the ground that one or more of the exceptions mentioned in section 11(a), (b) or (c) or 15 applies to that name or term. [5/2020] |
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(5) The Court, if satisfied that either or both of the grounds mentioned in subsection (2) is made out, must order the Registrar to cause to be entered in the register a limitation of the scope of the rights conferred under this Act in relation to any of the following that is applicable:| (a) | any name contained in the registered geographical indication; | | (b) | any term which is not a translation of the registered geographical indication; | | (c) | any term which is a translation of the registered geographical indication. [5/2020] |
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| (6) Where a registered geographical indication is subject to a limitation of the scope of rights under subsection (5), the rights of an interested party in respect of the geographical indication are restricted accordingly. [5/2020] |
| (7) The Minister may make rules as to the entry in the register of a limitation of the scope of rights under subsection (5). [5/2020] |
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49.—(1) Despite section 48(1), if, before a geographical indication is registered, the Registrar is satisfied —| (a) | that the application for registration of the geographical indication was accepted because of an error or omission in the course of the examination; or | | (b) | that, in the special circumstances of the case, the geographical indication should not be registered, |
| the Registrar may revoke the acceptance of the application. |
(2) If the Registrar revokes the acceptance —| (a) | the application is taken to have never been accepted; and | | (b) | section 43 again applies in relation to the application. |
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Division 2 — Administration of registered
geographical indications |
50.—(1) A geographical indication is to be registered for a period of 10 years from the date of registration.| (2) The registration of a geographical indication may be renewed in accordance with section 51 for further periods of 10 years in respect of each renewal. |
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51.—(1) Any person may apply for a renewal of the registration of a geographical indication in the prescribed manner and by paying the prescribed fee.| (2) The Minister may make rules for the Registrar to inform the registrant of a registered geographical indication, before the expiry of the registration, of the date of expiry and the manner in which the registration may be renewed. |
| (3) An application for renewal must be filed not earlier than the prescribed period before the date of expiry of the registration and not later than another prescribed period after that date. [Act 7 of 2022 wef 26/05/2022] |
| (3A) Where the application for renewal is made within the second-mentioned prescribed period in subsection (3) after the date of expiry of the registration, the fees payable are the prescribed renewal fee and the prescribed post-expiration renewal fee. [Act 7 of 2022 wef 26/05/2022] |
| (4) A renewal of the registration of a geographical indication takes effect from the expiry of the previous registration. |
| (5) If the registration is not renewed in accordance with this section and the rules referred to in subsection (2), the Registrar must remove the geographical indication from the register. |
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| Cancellation of registration of geographical indication |
52.—(1) The registration of a geographical indication may be cancelled —| (a) | by the Registrar upon an application by the registrant; or | | (b) | by the Court or the Registrar upon an application by any other person on any of the grounds referred to in subsection (2). |
(2) The grounds for the cancellation of the registration of a geographical indication referred to in subsection (1)(b) are as follows:| (a) | that the geographical indication was registered in breach of section 41; | | (b) | that the registration was obtained fraudulently or by misrepresentation; | | (c) | that the geographical indication has ceased to be protected in its country or territory of origin; | | (d) | that there has been a failure to maintain, in Singapore, any commercial activity or interest in relation to the geographical indication, including commercialisation, promotion or market monitoring; | | (e) | that, in consequence of a lack of any activity by any interested party of goods identified by a registered geographical indication, the geographical indication has become the common name of those goods in Singapore. |
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(3) An application for the cancellation of the registration of a geographical indication under subsection (1)(b) may be made either to the Registrar or to the Court, except that —| (a) | if proceedings concerning the geographical indication in question are pending in the Court, the application must be made to the Court; and | | (b) | if in any other case the application is made to the Registrar, the Registrar may at any stage of the proceedings refer the application to the Court. |
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(4) The Minister may make rules —| (a) | to provide for the manner by which a registration of a geographical indication may be cancelled by the Registrar under subsection (1)(a); and | | (b) | for protecting the interests of other persons having an interest in the registered geographical indication. [5/2020] |
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| (5) Where the registration of a geographical indication is cancelled under subsection (1)(a), the rights conferred by the registration on any interested party of goods identified by the geographical indication cease to exist with effect from the date of the cancellation of the registration. |
| (6) Where the registration of a geographical indication is cancelled on a ground referred to in subsection (2)(a) or (b), the geographical indication is deemed never to have been registered. |
(7) Where the registration of a geographical indication is cancelled on a ground referred to in subsection (2)(c), (d) or (e), the rights conferred by the registration on any interested party of goods identified by the geographical indication cease to exist with effect from —| (a) | the date of the application for cancellation; or | | (b) | if the Registrar or the Court is satisfied that the ground existed at an earlier date, that earlier date. |
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| (8) A cancellation of the registration of a geographical indication under this section does not affect any rights in respect of the geographical indication that are not conferred by the registration. |
(9) To avoid doubt —| (a) | a reference to a geographical indication in this section includes a variant constituting a geographical indication; and | | (b) | a cancellation of the registration under this section of any variant constituting a geographical indication does not affect the registration of any other variant constituting the geographical indication. [5/2020] |
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| Transfer of registration of registered geographical indication |
53.—(1) A registrant may apply to the Registrar for the registration of a registered geographical indication to be transferred to another person.(2) The registration must not be transferred to another person unless that person —| (a) | is entitled to file an application for registration of the geographical indication under section 38; and | | (b) | consents to having the registration transferred to him or her. |
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| Division 3 — Miscellaneous |
| Amendment of other documents |
54.—(1) The Registrar may, at the written request of a person who has made an application (other than an application for registration of a geographical indication), or filed a notice or other document for the purposes of this Act, or at the written request of the person’s agent, amend the application, notice or document —| (a) | to correct a clerical error or an obvious mistake; or | | (b) | if the Registrar is of the opinion that it is fair and reasonable in all the circumstances of the case to do so. [Act 7 of 2022 wef 26/05/2022] |
| (2) Subsection (1) is subject to the rules mentioned in section 84(2)(ea). [Act 7 of 2022 wef 26/05/2022] |
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