Supreme Court of Judicature (Geographical Indications) (Amendment) Rules 2020

Status:

Published in Subsidiary Legislation Supplement
on 12 Aug 2020

No. S 686

Supreme Court of Judicature Act

(CHAPTER 322)

Supreme Court of Judicature
(Geographical Indications)
(Amendment) Rules 2020

In exercise of the powers conferred by section 80 of the Supreme Court of Judicature Act and all other powers enabling us under any written law, we, the Rules Committee, make the following Rules:

Citation and commencement

1. These Rules are the Supreme Court of Judicature (Geographical Indications) (Amendment) Rules 2020 and come into operation on 15 August 2020.

Amendment of rule 2

2. Rule 2 of the Supreme Court of Judicature (Geographical Indications) Rules 2019 (G.N. No. S 706/2019) (called in these Rules the principal Rules) is amended by deleting the definitions of “geographical indication”, “homonymous geographical indication”, “international trade mark (Singapore)”, “proprietor” in relation to a trade mark, “register”, “registered geographical indication”, “registered trade mark”, “Registrar” and “well known trade mark” and substituting the following definitions:

“ “geographical indication”, “homonymous geographical indication”, “interested party”, “international trade mark (Singapore)”, “proprietor” in relation to a trade mark, “register”, “registered geographical indication”, “registered trade mark”, “registrant”, “Registrar” and “well known trade mark” have the respective meanings given by section 2 of the Act;”.

Amendment of rule 4

3. Rule 4(1) of the principal Rules is amended by deleting the words “and 10” and substituting the words “, 10 and 10A”.

New Part 4A

4. The principal Rules are amended by inserting, immediately after rule 10, the following Part:

“PART 4A

limitation of scope to be entered in
Register under section 48A of Act

Application for limitation of scope to be entered in register under section 48A(1) of Act

10A.—(1) An application to the Court under section 48A(1) of the Act for an order that a limitation of the scope of any of the rights conferred under the Act in respect of a registered geographical indication be entered in the register must be made by originating summons.

(2) The applicant who makes the application mentioned in paragraph (1) (called in this Part the applicant) must include in the application the following particulars:

(a)

a statement setting out the proposed limitation of the scope of the rights conferred under the Act in respect of a registered geographical indication that is to be entered in the register —

(i)	in relation to any name contained in the registered geographical indication that is the subject of the application; or
(ii)	in relation to any term which may be a possible translation of the registered geographical indication that is the subject of the application;

(b)

where the application is made on the ground that an exception under section 11(b) of the Act applies to that name or term — the date of the cessation (if applicable) of the protection of the registered geographical indication in its country or territory of origin;

(c)

where the application is made on the ground that an exception under section 12(1) of the Act applies to that name or term —

(i)	the goods or services or related goods or services in relation to which the registered geographical indication (being a geographical indication identifying a wine or a spirit) was continuously used in Singapore by the applicant or by the applicant and the applicant’s predecessor in title (as the case may be) and details of such use;
(ii)	the name of every such predecessor in title (if any) that has continuously used in Singapore the registered geographical indication; and
(iii)	the date on which the registered geographical indication was first used in Singapore in relation to the goods or services or related goods or services;

(d)

where the application is made on the ground that an exception under section 12(2)(a) of the Act applies to that name or term —

(i)	the name of the proprietor of the trade mark;
(ii)	the date on which the trade mark was first used by the applicant;
(iii)	the details of the registration of the trade mark or the application for the registration of the trade mark, as the case may be;
(iv)	a representation of the trade mark; and
(v)	the date on which the registered geographical indication was first protected in its country or territory of origin;

(e)

where the application is made on the ground that an exception under section 12(2)(b) of the Act applies to that name or term —

(i)	the name of the proprietor of the trade mark;
(ii)	the date on which the trade mark was first used in Singapore in the manner mentioned in that provision by the applicant or by the applicant and the applicant’s predecessor in title, as the case may be;
(iii)	the name of every predecessor in title (if any) of the applicant who has used the trade mark in Singapore in the manner mentioned in that provision;
(iv)	a representation of the trade mark, and details of its use in Singapore in the manner mentioned in that provision by the applicant or by the applicant and every such predecessor in title, as the case may be; and
(v)	the date on which the registered geographical indication was first protected in its country or territory of origin;

(f)

where the application is made on the ground that an exception under section 16(1) of the Act applies to that name or term —

(i)	the goods or services or related goods or services in relation to which the registered geographical indication (being a geographical indication identifying any goods other than a wine or a spirit) was continuously used in Singapore by the applicant or the applicant and the applicant’s predecessor in title (as the case may be) and details of such use;
(ii)	the name of every such predecessor in title (if any) that has continuously used in Singapore the goods or services or related goods or services; and
(iii)	the date on which the registered geographical indication was first used in Singapore in relation to the goods or services or related goods or services;

(g)

where the application is made on the ground that an exception under section 16(2)(a) of the Act applies to that name or term —

(i)	whether the trade mark is a registered trade mark or an international trade mark (Singapore);
(ii)	the name of the proprietor of the trade mark;
(iii)	the date on which the trade mark was first used by the applicant;
(iv)	the details of the registration of the trade mark or the application for the registration of the trade mark (as the case may be) and the priority date, if any;
(v)	a representation of the trade mark; and
(vi)	the date of application for the registration of the registered geographical indication;

(h)

where the application is made on the ground that an exception under section 16(2)(b) of the Act applies to that name or term —

(i)	the name of the proprietor of the trade mark;
(ii)	the date on which the trade mark was first used in Singapore in the manner mentioned in that provision by the applicant or by the applicant and the applicant’s predecessor in title, as the case may be;
(iii)	the name of every predecessor in title (if any) that has used in Singapore the trade mark in the manner mentioned in that provision;
(iv)	a representation of the trade mark, and details of its use in Singapore in the manner mentioned in that provision by the applicant or by the applicant and every such predecessor in title, as the case may be; and
(v)	the date of application for the registration of the registered geographical indication;

(i)

where the application is made on the ground that an exception under section 16(3) of the Act applies to that name or term —

(i)	the name of the proprietor of the well known trade mark;
(ii)	the date of application for the registration of the registered geographical indication;
(iii)	details of any matter from which it may be inferred that the trade mark is well known; and
(iv)	details of how the application of section 4 of the Act to the use of the trade mark is liable to mislead consumers as to the true identity of the goods identified by the registered geographical indication.

(3) Where the applicant is not the registrant of the registered geographical indication, the registrant must be named as a defendant in the proceedings.

(4) The originating summons must be served on the Registrar within 7 days after the originating summons is filed.

(5) Within 7 days after the service of the originating summons on the Registrar, the Registrar must publish the following particulars of the application in the Geographical Indications Journal published under rule 96 of the GI Rules:

(a)	the registered geographical indication concerned, and the registration number of that registered geographical indication;
(b)	the date on which the application mentioned in paragraph (1) was made;
(c)	the statement setting out the proposed limitation of the scope of the rights conferred under the Act in respect of the registered geographical indication concerned that is to be entered in the register;
(d)	the name of the applicant;
(e)	the address of the applicant for the purpose of service of any document under these Rules.

(6) The Registrar is entitled to take part in the proceedings arising from an application mentioned in paragraph (1) to the extent permitted by the Court, but need not serve a reply affidavit unless ordered to do so by the Court.

(7) A person who claims that the person’s interests will be affected by an order sought under an application mentioned in paragraph (1) may, within 2 months after the date of publication of the particulars of the application mentioned in paragraph (5), make an application to the Court to be joined as a party to the application.”.

[G.N. No. S 772/2019]

Made on 30 July 2020.

SUNDARESH MENON

Chief Justice.

LUCIEN WONG

Attorney-General.

TAY YONG KWANG

Judge of Appeal.

STEVEN CHONG

Judge of Appeal.

BELINDA ANG SAW EAN

Judge.

QUENTIN LOH

Judge.

VINODH COOMARASWAMY

Judge.

VINCENT HOONG SENG LEI

Presiding Judge of the State Courts.

JAMES LEONG

District Judge.

FRANCIS XAVIER, SC

Advocate and Solicitor.

KUAH BOON THENG, SC

Advocate and Solicitor.

[SUPCT.RNJ.009.0200; AG/LEGIS/SL/322/2020/5 Vol. 1]

(To be presented to Parliament under section 80(6) of the Supreme Court of Judicature Act).

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