The Geographical Indications Regime in Singapore—A Late but Great Start for a Sui Generis Regime

Singapore is a net importer of goods, many of which are protected as geographical indications (GIs). This includes agricultural produce and wines and spirits, among other products. With only a limited repertoire of legal options available in the country, GI protection has primarily focused on the issue of whether foreign GI owners are able to protect their GIs from infringement. With a separate regime now in place, the city-state is poised to become a regional leader in GI protection.

Earlier Regime and TRIPS—Limitations of Certification and Collective Marks

Under the Singapore Trade Marks Act enacted in 1938 (TMA 1938), a certification trademark was defined as a mark distinguishing goods or services that have been certified with respect to origin, quality, and other characteristics from other goods or services not similarly certified. In the subsequent and current phase of trademark legislation, under the Singapore Trade Marks Act (Cap 332, 2005 Rev Ed) (TMA 1998) passed in 1998, the applicant of certification marks must be independent of the supply of the goods and services for which registration is sought. The proprietor is responsible for setting and regulating the standards which the goods or services bearing the mark must meet.

In addition to certification marks, collective marks can also be registered in Singapore. These are marks or signs used by an association’s members to distinguish their goods or services provided in the course of trade from those of non-members.

Both certification and collective marks were inadequate in meeting the standards of GI protection required by the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). TRIPS provides a two-tiered protection for GIs in general and GIs that specifically pertain to wines or spirits, requiring that:

1. Member states should provide legal means to prevent the use of a GI in relation to any goods that mislead the public as to the true geographical origin of those goods.
2. In the case of wines or spirits not originating in the place indicated by the GI, member states are required to prevent the use of such GIs even if the use is not misleading or the GI is accompanied by qualifying expressions such as “kind,” “type,” “style,” or “imitation.”

GI 1999

This two-tiered protection was incorporated into the Geographical Indications Act (Cap 117B, 1998 Rev Ed Sing) (GI 1999), which enabled Singapore to meet its obligations under TRIPS.

Under GI 1999, a GI was defined as an indication used in trade to identify goods as originating from a place (such as a country that is a member of the World Trade Organization or a party to the Paris Convention for the Protection of Industrial Property) where a given characteristic of the goods is essentially attributable to that place.

GI 1999 also allowed for traders, producers, or an association of traders or producers of goods identified by a GI, to bring an action in court against a person for misleadingly using a GI for goods not originating in a place indicated by the GI. Thus, the court had to determine whether the mark was a GI and if the characteristic of the concerned goods was attributable to the location indicated by the GI.

GI 2014

GI Registration and Enhanced Protection

Singapore’s obligations to protect GIs expanded under the 2019 European Union-Singapore Free Trade Agreement (EUSFTA), necessitating the way for the Geographical Indications Act (No. 19 of 2014) (Sing.) (GI 2014).

Firstly, GI 2014, which came into effect on April 1, 2019, envisioned a registry and register for GIs and provided for the registration, publication, opposition, cancellation, and renewal of GIs specified as registrable, such as beers, cheese, spirits, wines, and agricultural products.

Secondly, the higher level of protection previously afforded to only wines and spirits under GI 1999 and TRIPS was extended to all registrable GIs, including cheese and agricultural products. Even if a GI has not been or cannot be registered, GI 2014 will continue to offer the following two types of unregistered GIs the same level of protection that was afforded to them under GI 1999:

1. Registrable GIs (GIs for registrable goods such as wines or cheese) which have not been registered; or
2. Other GIs which are not registrable.

Thus, GI 2014 offers comprehensive and structured protection to GIs.

Border Measures for Registered GIs

GI 2014 also provides GI proprietors with access to border authorities. Proprietors can give a notice to the Director-General of Customs, thereby alerting authorities of goods that are both suspected of infringing their registered GI and expected to be imported or exported.

Unless the registered proprietors revoke their notice in writing, the notice will be effective for 60 days, commencing on the day on which it was given. The Director-General is now empowered to order the detention of goods that are found to infringe GIs.

Application for Registration

GIs registered under GI 2014 now enjoy protection for a period of 10 years and the protection may be renewed.

Any of the following three persons (interested parties) are entitled to apply for GI registration and benefit from the protection:

1. Producers of registrable goods who carry out production in the geographical area specified in the application;
2. An association of such producers; or
3. A competent authority with responsibilities over the subject GI.

To register a GI, interested parties must supply the following information:

1. Name, address, and nationality of the applicant;
2. Capacity in which the applicant is applying for registration;
3. The GI itself (that is, the mark or sign being used as the GI) for which registration is sought;
4. The geographical area to which the GI applies;
5. Goods to which the GI applies;
6. Quality, reputation, or other characteristic of the goods and how this characteristic is essentially attributable to the place of origination of the goods; and
7. Where the GI applied for relates to a country other than Singapore, evidence that the GI has been recognized or registered as a GI in the country of origin; and
8. Any other prescribed particulars.

In 2020, GI 2014 was amended to allow interested parties to register a GI’s variants. This accommodates variant spellings of geographical names due to issues of transliteration into English.

Promising Future for Singapore as a Global Hub for GI Enforcement

Since GI registration became possible in 2019, a total of 142 applications have been filed, with all but two successfully registered. In 2020, only two GI applications were filed. Of the registered GIs at present, 92 are for beers, spirits, and wines; 20 for cheeses; 13 for meat and meat products; five for fruits; and three each for the three categories of confectionery and baked goods, spices and condiments, and edible oils. There are also three in the categories of natural gum, non-edible oils, and seafood.

As of May 2021, the Intellectual Property Office of Singapore (IPOS) has rendered three decisions under GI 2014, one each in 2019, 2020, and 2021. They are:

1. Australian Grape and Wine Incorporated v. Consorzio di Tutela della Denominazione di Origine Controllata Prosecco, [2021] SGIPOS 4;
2. Application to File Notice of Opposition in a Geographical Indication Application by Bavaria N.V. and Objection Thereto by Bayerischer Brauerbund E.V., [2020] SGIPOS 12; and
3. Application for Extension of Time to file Notice of Opposition and Evidence by U.S. Dairy Export Council and Objection Thereto by Consorzio del Formaggio Parmigiano Reggiano, [2019] SGIPOS 12

The 2020 and 2021 decisions pertain to wines and spirits, whereas the 2019 decision concerns cheese. The 2019 and 2020 decisions were rendered at interlocutory hearings with respect to applications to file a notice of opposition (NOO) to a GI application or for an extension to file the same. The 2021 decision was for a matter that proceeded to a full-fledged opposition, albeit unsuccessful.

In the 2019 decision, the registrar rejected the application for an extension of time by the U.S. Dairy Export Council to file its NOO against the GI “PARMIGIANO REGGIANO,” applied for by the Consorzio Del Formaggio Parmigiano Reggiano.

The registrar cited Rule 30(5) of the Geographical Indication Rules 2019, which provides that a request for extension may be refused if a good and sufficient reason is not shown for the extension. It further stated that “Parmigiano Reggiano” is one of the items in a list of 196 GIs of interest to the EU set out in an annex appended to the EUSFTA, which was made public in 2013 following a public consultation in which the opponent participated. Thus, the opponent had ample time to pursue opposition.

The opponent further confirmed that its objection was not actually to “Parmigiano Reggiano” but rather the common name for the said GI, “Parmesan.” The registrar held that the appropriate avenue was an application for qualification of the rights conferred by the GI, rather than opposition.

In the 2020 decision, the registrar held that a NOO may be filed if (1) procedural requirements have been met; (2) the subject matter of the opposition has been duly identified; and (3) the substantial matters pertaining to the opposition’s merits are such that they do need not be dealt with at an interlocutory hearing.

The most recent 2021 decision, dated May 4, 2021, pertains to an opposition by an Australian representative body of grape growers and winemakers (the opponent) against an Italian consortium’s application to register the GI, PROSECCO, which was applied to Italian Prosecco wines originating in northeastern Italy and was also the name of a grape variety cultivated in both Italy and Australia. The opponent represented the producers of an Australian “Prosecco.”

The registrar dismissed the opposition’s ground that, being a name of a plant variety cultivated in both countries, the GI was misleading as to the origin of the wines sold under it.

At the court level, significant development is yet to take place, with there being a single decision to date, Scotch Whisky Association v. Isetan Mitsukoshi Ltd. [2020] 3 SLR 725; [2019] SGHC 200). In Scotch Whisky, the court had to consider whether the trademark ISETAN TARTAN (application no. 40201604845Y-02) was being used as a GI pursuant to GI 2014. Under Section 7(5) of the Trade Marks Act (TMA), it is provided that a trademark shall not be registered where its use is prohibited in Singapore by any written law or rule of law.

In this case, the “written law”—which was relied upon by the appellant, Scotch Whisky Association, the opponent in the opposition—was Section 3(2)(a), (b), and (d) of GI 2014. In summary, it prohibits:

1. The use of a GI for goods not originating in the place indicated by the GI;
2. Use constituting an act of unfair competition pursuant to the Paris Convention; and
3. Use in relation to a spirit not originating from the place indicated by the GI, regardless of whether the true origin is used together with the GI, the GI is used in translation, or the GI is accompanied by qualifiers such as “kind” or “style.”

The appellant sought to show that the mark indirectly being used was SCOTCH WHISKY, as the word “Tartan” is linked with Scotland. However, the High Court found that no such use was shown and that only “Isetan Tartan” was used by the respondent.

Though the High Court rejected this ground, it allowed the appeal on a different ground, that is, Section 7(4)(b) of the TMA, which provides that a mark shall not be registered if it is of such a nature as to deceive the public as to the geographical origin of the goods.

With only the one above-discussed case at present with respect to GIs, and a limited body of GI jurisprudence, it is too early to look for trends in the development of precedents at the registry and court with respect to contentious GI matters.

As regards GI prosecution, it can perhaps be expected that, in the future, GI registrations will increase in volume at the GI registry; more GI opposition actions may be brought at both the registry and court levels; and Singapore will become a more attractive market because producers of GI goods will be able to effectively enforce their rights there.

The significance and potential of these developments in Singapore can be understood against the larger context of the interest of the Association of Southeast Asian Nations (ASEAN) initiatives in GIs. For example, by comparison, the Philippines still relies on the regime of certification and collective marks to protect GIs. Meanwhile, several other ASEAN countries, such as Indonesia, Thailand, and Vietnam brought sui generis GI registration regimes into effect at least a decade before the genesis of the GI registry in Singapore.

As a matter of fact, the ASEAN GI Database has recorded about 114 registrations in Thailand since 2005. Renowned GIs such as COGNAC and CHAMPAGNE obtained their Thai GI registrations in the early 2000s.

Some ASEAN members are advancing in the race for a sui generis GI regime because they have GIs of their own. The region is rich is biodiversity and many of these GIs are for agricultural produce, such as various strains of Thai rice or Indonesian coffee products.

Such GIs are vulnerable to “biopiracy,” the unauthorized extraction of biological resources, for commercialization. For example, in 1997, shortly before the enactment of Thailand’s GI legislation, the producers of Thailand’s unique Jasmine (Hom Mali) rice were confronted with “Jasmati” rice, a portmanteau of “Jasmine,” the English name for a Thai rice strain and “Basmati,” a famous Indian rice strain, but with no genetic connection to either strain. In another instance, Indonesia’s tempeh, originally made from fermented soya beans in its Java region, was granted patent protection in Japan. The importance of effective GI protection for ASEAN countries cannot be understated. Currently, there are no GIs from ASEAN countries registered in Singapore.

Singapore’s membership in ASEAN, as well as its status as a significant trading hub for goods in the ASEAN region, the EU, and beyond—make the city-state well-suited to become a leader in GI protection. The sui generis GI regime in Singapore may have started a little late, but it is still a great start.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest.

© 2021 International Trademark Association