Geographical Indications Act 2014

Geographical Indications
Act 2014

2020 REVISED EDITION

This revised edition incorporates all amendments up to and including 1 December 2021 and comes into operation on 31 December 2021

An Act to provide for the protection of geographical indications in relation to goods, and for matters connected therewith.

[1 April 2019: Except sections 4(6) to (9), 15, 16 and 55 to 76 ;

21 November 2019: Sections 4(6) to (9), 15, 16, 75 and 76 ]

PART 1

PRELIMINARY

Short title and commencement

1.—(1)  This Act is the Geographical Indications Act 2014.

(2)  Part 6 comes into operation on such date as the Minister may, by notification in the Gazette, appoint.

Interpretation

2.—(1)  In this Act, unless the context otherwise requires —

“Court” means the General Division of the High Court;

“earlier geographical indication”, in relation to an application for registration of a geographical indication made under section 39 (called in this definition the application in question), means a geographical indication —

(a) which has been registered under section 48; or

(b) an application for registration of which has been made under section 39,

before the date of the application in question;

“geographical indication” means any indication used in trade to identify goods as originating from a place, provided that —

(a) the place is a qualifying country or a region or locality in a qualifying country; and

(b) a given quality, reputation or other characteristic of the goods is essentially attributable to that place;

“goods” means any natural or agricultural product or any product of handicraft or industry;

“homonymous geographical indication” means a geographical indication that, in part or in whole, has the same spelling as, or sounds the same as, a geographical indication for any goods having a different geographical origin;

“interested party”, in relation to goods identified by a geographical indication, means a producer of the goods, a trader of the goods, or an association of such producers or traders or of such producers and traders;

“international trade mark (Singapore)” has the meaning given by the Trade Marks Act 1998;

“Office” means the Intellectual Property Office of Singapore established under the Intellectual Property Office of Singapore Act 2001;

“Paris Convention” means the Convention for the Protection of Industrial Property signed at Paris on 20 March 1883, and any revision or amendment thereto which has come into force and has been accepted by the Government;

“place”, in relation to a geographical indication, means a country or territory and includes a region or locality in a country or territory;

“producer” means —

(a) in relation to agricultural products, a person who produces those products for sale or other commercial purposes;

(b) in relation to natural products, a person who exploits those products for sale or other commercial purposes; or

(c) in relation to products of handicraft or industry, a person who manufactures those products for sale or other commercial purposes;

“proprietor” means —

(a) in relation to a registered trade mark, the person in whose name the trade mark is registered;

(b) in relation to an unregistered trade mark that is a well known trade mark, the person to whom the trade mark belongs; or

(c) in relation to a trade mark referred to in section 41(5)(b), the person who used the trade mark in accordance with that provision;

“qualifying country” means any country or territory which is —

(a) a member of the World Trade Organization;

(b) a party to the Paris Convention; or

(c) designated by the Minister as a qualifying country under section 83;

“register” means —

(a) when used as a noun, the register of geographical indications maintained by the Registrar under section 21; and

(b) when used as a verb, to enter in the register;

“registered geographical indication” means a geographical indication that is registered under section 48;

“registered trade mark” means a trade mark registered under the Trade Marks Act 1998;

“registrant”, in relation to a registered geographical indication, means the person in whose name the geographical indication is registered;

“Registrar” means the Registrar of Geographical Indications appointed under section 17 and includes any Deputy Registrar or Assistant Registrar of Geographical Indications appointed under that section;

“Registry” means the Registry of Geographical Indications established under section 19;

“repealed Act” means the Geographical Indications Act (Cap. 117B, 1999 Revised Edition) repealed by this Act;

“trade mark” has the meaning given by the Trade Marks Act 1998;

“trader”, in relation to goods, means any person —

(a) who sells the goods in Singapore; or

(b) who supplies the goods in Singapore for the purpose of their being sold by another person in Singapore;

“use” means use as part of, or in connection with —

(a) any transaction, including a purchase, a sale or an exchange;

(b) any importing or exporting;

(c) any advertisement; or

(d) any invoice, wine list, catalogue, business letter, business paper, price list or other commercial document;

“variant”, in relation to a geographical indication, means a variant of the indication constituting the geographical indication, and includes any translation, transliteration or other variation of the indication;

“well known trade mark” has the meaning given by the Trade Marks Act 1998.

[40/2019; 5/2020]

(2)  There may be 2 or more variants constituting the same geographical indication.

[5/2020]

(3)  A geographical indication, and each variant constituting the geographical indication (if any), may contain 2 or more words.

[5/2020]

Application of Act

3.—(1)  Unless expressly provided otherwise in subsection (2) or elsewhere in this Act, this Act applies to all geographical indications, whether or not registered under section 48.

(2)  Sections 4(6) to (9), 75, 76 and 79, Division 2 of Part 3, Division 2 of Part 5, and Part 6 only apply to registered geographical indications.

PART 2

PROTECTION FOR GEOGRAPHICAL INDICATIONS

Interested party may bring action for certain uses of geographical indication

4.—(1)  Subject to the provisions of this Act, an interested party of goods identified by a geographical indication may bring an action against a person for carrying out an act to which this section applies in relation to the geographical indication.

(2)  This section applies to the following acts:

(a) the use of a geographical indication in relation to any goods which did not originate in the place indicated by the geographical indication, in a manner which misleads the public as to the geographical origin of the goods;

(b) any use of a geographical indication which constitutes an act of unfair competition within the meaning of Article 10 bis of the Paris Convention;

(c) any use of a geographical indication, being a geographical indication which identifies a wine, in relation to a wine which did not originate from the place indicated by the geographical indication, whether or not —

(i) the true geographical origin of the second‑mentioned wine is used together with the geographical indication;

(ii) the geographical indication is used in translation; or

(iii) the geographical indication is accompanied by any of the words “kind”, “type”, “style” or “imitation” or any similar word or expression; and

(d) any use of a geographical indication, being a geographical indication which identifies a spirit, in relation to a spirit which did not originate from the place indicated by the geographical indication, whether or not —

(i) the true geographical origin of the second‑mentioned spirit is used together with the geographical indication;

(ii) the geographical indication is used in translation; or

(iii) the geographical indication is accompanied by any of the words “kind”, “type”, “style” or “imitation” or any similar word or expression.

(3)  Any use of a geographical indication within the meaning of subsection (2) is deemed to be an act to which this section applies, even if the geographical indication is literally true as to the geographical origin of the goods in question, provided that such use falsely represents to the public that the goods originate in another place.

(4)  In subsection (2), “use of a geographical indication” includes the use of a trade mark which contains or consists of the geographical indication in question.

(5)  Subsection (2)(c) and (d) does not apply to the use of a geographical indication to identify an ingredient of a wine and an ingredient of a spirit, respectively, if the geographical indication is literally true as to the geographical origin of the ingredient in question, provided that such use does not falsely represent to the public that the wine or spirit (as the case may be) originates in the place indicated by the geographical indication.

(6)  This section applies to any use of a registered geographical indication which identifies any agricultural product or foodstuff (other than a wine or a spirit) belonging to a category of goods listed in the Schedule, in relation to any goods which are of the same category as that agricultural product or foodstuff, but which did not originate in the place indicated by the registered geographical indication, whether or not —

(a) the true geographical origin of those goods is used together with the registered geographical indication;

(b) the registered geographical indication is used in translation; or

(c) the registered geographical indication is accompanied by any of the words “kind”, “type”, “style” or “imitation” or any similar word or expression.

(7)  Any use of a registered geographical indication within the meaning of subsection (6) is deemed to be an act to which this section applies, even if the geographical indication is literally true as to the geographical origin of the goods in question, provided that such use falsely represents to the public that the goods originate in another place.

(8)  In subsection (6) —

“foodstuff” means any natural or agricultural product that is meant for human consumption;

“use of a registered geographical indication” includes the use of a trade mark which contains or consists of the geographical indication in question.

(9)  Subsection (6) does not apply to the use of a registered geographical indication to identify an ingredient of any goods, if the geographical indication is literally true as to the geographical origin of the ingredient in question, provided that such use does not falsely represent to the public that the goods originate in the place indicated by the geographical indication.

Remedies

5.  Subject to the provisions of this Act, if it is established to the satisfaction of the Court that the defendant to an action brought under section 4 has carried out or is carrying out an act to which that section applies, the Court may grant to the claimant one or both of the following:

(a) an injunction (subject to such terms, if any, as the Court thinks fit) to restrain the further carrying out of the act;

(b) damages or an account of profits.

[Act 25 of 2021 wef 01/04/2022]

Order for delivery up of goods, material and articles

6.—(1)  In any action brought under section 4 in relation to a geographical indication, the Court may, in addition to any relief granted under section 5, order any of the following in the possession of the defendant to the action or before the Court to be delivered up to the claimant:

(a) goods in respect of which the defendant has been found to be carrying out or to have carried out, in relation to the geographical indication, an act to which section 4 applies;

(b) material —

(i) which bears an indication identical with or similar to the geographical indication;

(ii) which is used by the defendant for labelling or packaging goods, or as a business paper, or for advertising goods; and

(iii) in respect of which the defendant has been found to be carrying out or to have carried out, in relation to the geographical indication, an act to which section 4 applies;

(c) articles —

(i) used by the defendant to make upon material referred to in paragraph (b), copies of an indication identical with or similar to the geographical indication; or

(ii) which the defendant has in the defendant’s possession, custody or control, knowing or having reason to believe that they have been, or are to be, used to make upon material referred to in paragraph (b), copies of an indication identical with or similar to the geographical indication.

[Act 25 of 2021 wef 01/04/2022]

(2)  An order is not to be made under this section unless the Court also makes, or it appears to the Court that there are grounds for making, an order under section 7.

(3)  A person to whom any goods, material or articles are delivered up pursuant to an order under this section must, if an order under section 7 is not made, retain them pending the making of an order under that section, or until the decision not to make such order.

Order as to disposal of goods, material or articles

7.—(1)  Where any goods, material or articles have been delivered up pursuant to an order under section 6, an application may be made to the Court —

(a) for an order that they be destroyed or forfeited to such person as the Court may think fit; or

(b) for a decision that no such order should be made.

(2)  In considering what order (if any) should be made, the Court is to have regard to —

(a) whether other remedies available in an action under section 4 would be adequate to compensate the claimant and protect his, her or its interest; and

[Act 25 of 2021 wef 01/04/2022]

(b) the need to ensure that no goods, material or articles are disposed of in a manner that would adversely affect the claimant.

[Act 25 of 2021 wef 01/04/2022]

(3)  The Court is to issue directions as to the service of notice on persons having an interest in the goods, material or articles.

(4)  Any person having an interest in the goods, material or articles is entitled —

(a) to appear in proceedings for an order under this section, whether or not that person is served with notice under subsection (3); and

(b) to appeal against any order made, whether or not that person appears in the proceedings for that order.

(5)  An order made under this section does not take effect until the end of the period within which notice of an appeal may be given or, if before the end of that period notice of appeal is duly given, until the final determination or abandonment of the proceedings on the appeal.

(6)  Where there is more than one person interested in the goods, material or articles, the Court may direct that the goods, material or articles be sold, or otherwise dealt with, and the proceeds divided, and make any other order as it thinks just.

(7)  If the Court decides that no order should be made under this section, the person in whose possession, custody or control the goods, material or articles were before being delivered up, is entitled to their return.

Remedy for groundless threats of proceedings under section 4

8.—(1)  Where a person threatens another with proceedings for an action for carrying out an act to which section 4 applies, other than —

(a) the application of a geographical indication in relation to goods or to material used or intended to be used for labelling or packaging goods; or

(b) the importation of goods to which, or to the packaging of which, the geographical indication has been used,

any aggrieved person may bring proceedings for relief under this section.

(2)  The relief which may be applied for is any of the following:

(a) a declaration that the threats are unjustifiable;

(b) an injunction against the continuance of the threats;

(c) damages in respect of any loss an aggrieved person has sustained by the threats.

(3)  A claimant to an action under this section is entitled to the relief referred to in subsection (2) unless the defendant shows that the act in respect of which proceedings were threatened constitutes (or if done would constitute) an act to which section 4 applies.

[Act 25 of 2021 wef 01/04/2022]

(4)  If the defendant to an action under this section shows that the act in respect of which proceedings were threatened constitutes (or if done would constitute) an act to which section 4 applies, the claimant is nevertheless entitled to relief if the claimant shows that an exception under this Act applies to the act concerned.

[Act 25 of 2021 wef 01/04/2022]

(5)  The mere notification that a geographical indication is registered, or that an application for registration has been made, does not constitute a threat of proceedings for the purposes of this section.

(6)  Nothing in this section renders an advocate and solicitor liable to an action under this section in respect of an act done by the advocate and solicitor in his or her professional capacity on behalf of a client.

Declaration by Court

9.  Without affecting the jurisdiction of the Court to make a declaration apart from this section, the Court may, in proceedings between a person carrying out or proposing to carry out an act and any interested party of goods identified by a geographical indication, make a declaration that section 4 does not apply to that act or proposed act, even though no assertion to the contrary has been made by that interested party or any other interested party of goods identified by the geographical indication.

Homonymous geographical indications for prescribed goods

10.—(1)  Any interested party of any prescribed goods identified by homonymous geographical indications may take action under section 4 against the carrying out of an act to which that section applies.

(2)  Any interested party of any prescribed goods identified by homonymous geographical indications may, where no practical conditions in respect of the homonymous geographical indications have been imposed by the Registrar under section 42(2), apply to the Court for a declaration of the practical conditions under which the homonymous geographical indications are to be differentiated from one another.

(3)  The Court in making a declaration under subsection (2), is to take into account —

(a) the need to ensure equitable treatment of all the interested parties concerned; and

(b) the need to ensure that consumers are not misled.

PART 3

EXCEPTIONS

Division 1 — Exceptions applicable to all geographical indications

Certain uses of geographical indications excepted

11.  Section 4 does not apply to —

(a) the use of a geographical indication, being a geographical indication which is contrary to public policy or morality;

(b) the use of a geographical indication, being a geographical indication which is not or has ceased to be protected in its country or territory of origin;

(c) the use of a geographical indication in relation to any goods or services which is identical with the common name of the goods or services in Singapore;

(d) the use of a geographical indication, being a geographical indication which is identical with the customary name of a grape variety existing in Singapore as of 1 January 1995, with respect to products of the vine of that or any other grape variety; or

(e) the use of a geographical indication which is not registered under this Act, and which has fallen into disuse in its country or territory of origin.

Exceptions regarding prior users

12.—(1)  Section 4 does not apply to the use by a qualified person of a geographical indication (being a geographical indication identifying a wine or a spirit) in relation to any goods or services if the qualified person has, or the qualified person and the qualified person’s predecessor in title have, continuously used in Singapore that geographical indication in relation to those goods or services or related goods or services either —

(a) for at least 10 years preceding 15 April 1994; or

(b) in good faith preceding that date.

(2)  Section 4 does not apply to the use by a person of a trade mark which is identical or similar to a geographical indication if —

(a) the application for the registration of the trade mark was made in good faith, or the trade mark was registered in good faith, under the Trade Marks Act 1998 or any previous written law relating to trade marks; or

(b) the person has, or the person and the person’s predecessor in title have, continuously used that trade mark in good faith in Singapore in the course of trade,

either —

(c) before 15 January 1999; or

(d) before the geographical indication in question is protected in its country or territory of origin.

(3)  In subsection (1), “qualified person” means —

(a) a citizen of Singapore or an individual resident in Singapore;

(b) a body corporate incorporated under any written law in Singapore; or

(c) any other person who has a real and effective industrial or commercial establishment in Singapore.

Exception for use of personal name

13.  Section 4 does not apply to the use in the course of trade by a person of that person’s name or the name of that person’s predecessor in business, except where the name is used in such a manner as to mislead the public.

Exception for failure to take action

14.—(1)  No action under section 4 against a person for the use of a trade mark which contains or consists of a geographical indication may be brought after the expiry of 5 years beginning immediately after the earlier of the following dates:

(a) the date on which such use by that person or that person’s predecessor in title has become generally known in Singapore;

(b) the date on which the trade mark was actually registered under the Trade Marks Act 1998 or any previous written law relating to trade marks, if the trade mark has been published by that date.

(2)  Subsection (1) does not apply where the trade mark was used, or registered, in bad faith.

Division 2 — Exceptions applicable to registered geographical indications

Certain uses of registered geographical indications excepted

15.  Section 4 does not apply to —

(a) the use in the course of trade of any name contained in a registered geographical indication in relation to any goods or services, where the name is identical with the term customarily used in common language to describe such goods or services in Singapore; or

(b) the use in the course of trade of a registered geographical indication, or any term contained in a registered geographical indication, that is the name of a plant variety or an animal breed.

Exceptions for prior users of registered geographical indications and trade marks

16.—(1)  Section 4 does not apply to the use by a qualified person of a registered geographical indication (being a geographical indication identifying any goods other than a wine or a spirit) in relation to any goods or services if the qualified person has, or the qualified person and the qualified person’s predecessor in title have, continuously used in Singapore that geographical indication in relation to those goods or services or related goods or services either —

(a) for at least 10 years preceding 1 January 2004; or

(b) in good faith preceding that date.

(2)  Section 4 does not apply to the use by a person of a trade mark which is identical or similar to a registered geographical indication if —

(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 the application for registration of the geographical indication in Singapore; or

(b) the person has, or the person and the person’s predecessor in title have, continuously used that trade mark in good faith in Singapore in the course of trade, before the date of the application for registration of the geographical indication in Singapore.

(3)  Section 4 does not apply to the use by a person of a trade mark which is identical or similar to a registered geographical indication if —

(a) the trade mark is, before the date of the application for registration of the geographical indication in Singapore, a well known trade mark in Singapore; and

(b) the application of section 4 to the use of that trade mark is liable to mislead consumers as to the true identity of the goods identified by that geographical indication.

(4)  In subsection (1), “qualified person” means —

(a) a citizen of Singapore or an individual resident in Singapore;

(b) a body corporate incorporated under any written law in Singapore; or

(c) any other person who has a real and effective industrial or commercial establishment in Singapore.