Second Reading Speech by Senior Minister of State for Law, Mr Edwin Tong, on Geographical Indications (Amendments) Bill
03 Feb 2020 Posted in Parliamentary speeches and responses
- On behalf of the Minister for Law, I beg to move, “That the Bill be now read a second time”.
- Geographical Indications, or GIs, are terms which identify products as originating from a particular geographical location. They signal to consumers that a product has a special quality, reputation or other characteristics by virtue of its geographical location and origin. Many such products are food or drink.
- The Geographical Indications Act, or the GI Act, was enacted in 2014 and established the GI Registry, which had been agreed to under the EU-Singapore Free Trade Agreement, or the EUSFTA.
- The GI Registry is run by the Intellectual Property Office of Singapore, or IPOS. It commenced operations on 1 April 2019, after the EU Parliament ratified the EUSFTA. As of 31 January 2020, 140 GIs have been registered. In this time, IPOS has become more familiar with the operations of a GI Registry.
- GI labels cannot be used on products which do not come from the place indicated by the GI, if this misleads the public as to the true geographical origin of those products. This is applicable for all GIs, whether they are registered or not.
- In addition, for wines and spirits, such GI labels cannot be used on products which do not come from the place indicated by the GI, even if consumers are not misled as to the true geographical origin of the goods in question.
- A registered GI enjoys enhanced protection. Registered GIs which are not for wines and spirits would enjoy the same level of protection for GIs which are for wines and spirits mentioned earlier. Producers and traders in respect of registered GIs also have access to border enforcement measures, such as being able to request that our Customs authorities detain suspected infringing goods which are to be imported or exported from Singapore.
- The Bill makes technical amendments to the GI Act to address issues that have arisen in the course of running the GI Registry. The amendments will ensure the continued smooth operations of the GI Registry, and also provide greater clarity for traders and producers.
- I will now take Members through the main features of the Bill.
Variants of GIs
- The first set of amendments in the Bill clarifies how variants of a GI are to be treated during the application process. A variant of a GI can be a translation, or a transliteration, or any other variation of the indication constituting the GI.
- Let me give a hypothetical example to illustrate. Say, for example, that oranges grown on Pulau Ubin are known to bear a unique and highly-prized sweet and sour quality attributable to the natural environment of Pulau Ubin, and such oranges are known by the Chinese characters 乌敏橙 (Wū Mín Chéng).
- Such oranges might be referred to in slightly different ways. So let me give you the different ways in which it could be referred to. For example, they may be referred or identified in Hanyu Pinyin as “Wu Min Cheng”, which is a transliteration. Or they may be also known as “Ubin Orange”, which is a translation of the words in chinese. They could also be called “Pulau Ubin Orange”, which is neither a translation nor a transliteration. All of these can be variants of a GI, and they can be registered.
- The GI Registry has received a number of applications where, in a single application, multiple variants of the nature that I’ve described, constituting the same GI were included. This, no doubt, saved application fees for the applicant. These applications were accepted as-is and most of them have in fact been registered.
- It is proposed in this Act that we amend and clearly state how such applications and registrations with multiple variants should be treated. So for example, in a situation where multiple variants of a GI have been registered, a party may want to apply to cancel the registration because he finds one of the variants objectionable. If he is successful, it is not clear whether the entire GI registration should be cancelled, or whether there should only be a partial cancellation – that is, only of the particular variant that he finds objectionable.
- Clauses 3, 4, 6 and 8 of the Bill therefore amend the GI Act to clarify the following:
a. First, an application for registration can contain more than one variant constituting the same GI.
b. Second, after an application for registration is accepted and published for public inspection, third parties who oppose the application can choose to oppose the registration of one or more of the variants in the application, instead of all of the variants.
c. Third, where there is a refusal of registration of a variant, the other variants in the application for registration can nevertheless be registered if they satisfy the requirements of the Act.
d. Finally, similarly, other processes such as an application for cancellation of registration or a request for Qualification of Rights to be entered in the Register need not be in respect of all the variants.
Changes to the Qualification of Rights process
- The second set of amendments makes changes to the process for the entry of a Qualification of Rights in the Register.
- A request for a Qualification of Rights, or more commonly known as a QoR, to be entered in the Register, is a request usually taken up by a third party, in order to clarify the scope of protection that the GI Act confers on a registered GI, in relation to whether a name or a term contained in the GI, or a term which may be a translation of the GI, is available for use by the third party.
- To take up the example that I outlined earlier, let’s say the producers of Wu Min Cheng oranges applied for the registration of that GI for oranges, including all the variants which I had mentioned previously.
- Now, a Mr Wu Min Cheng, an individual, who is a seller of oranges, he could request a QoR to be entered in the GI Register to state that he can rely on the exception in section 13 of the Act for the use of his personal name.
- If he is successful, he can continue to use, his personal name, in relation to the oranges that he sells, even if these oranges are not of the Wu Min Cheng variety, or originating from Pulau Ubin.
- However, the producers of Wu Min Cheng oranges can prevent Mr Wu from using the other registered variants, such as “Ubin Oranges”, for example, for selling his oranges. Such a QoR also does not affect the ability of the producers of Wu Min Cheng oranges from bringing an action against other producers for labelling their products as Wu Min Cheng oranges. In other words, producers other than Mr Wu.
- This is different from opposing the application for registration, or applying to cancel the registration, of a GI, whether in respect of one or all of the variants, because the reason for opposition or cancellation is that the GI or variant should not be protected as a registered GI at all.
- The end result of a successful opposition or cancellation of the registration of a particular variant is that the variant is not allowed to be registered, or is removed from the GI Register. If the opposition or cancellation was against the entire set of variants, the end result is that the entire set of variants is not registered or is removed from the GI Register.
- After the GI Registry commenced its operations, we found that certain types of QoR requests could achieve the same result as a successful opposition or cancellation.
- So to illustrate the point, for instance, a QoR request could possibly be so broad as to result in a situation where the interested parties of a GI are effectively left with no rights in respect of a registered GI that they can enforce. This would render the GI registration nugatory.
- The QoR process was intended to enable an applicant to clarify the scope of protection conferred by the registration, and not to negate the GI registration altogether, by wholly removing the rights conferred by the registration.
- Clause 5 of the Bill therefore clarifies that a QoR may not be requested, if the QoR request seeks a qualification of all the rights to be conferred in respect of a registered GI.
- For example, a qualification of all the rights conferred in respect of a registered GI may not be requested on the basis that the GI or variant is identical with the common name of the goods concerned in Singapore, as such a QoR would result in there being no rights conferred on a registered GI that can be enforced in respect of the registered GI or variant.
- This therefore makes it very clear that the QoR regime and the opposition or cancellation regime remains separate and distinct. They are meant as two different sets of parameters and protocols meant to apply to obtain two different sets of remedies. Applicants seeking to negate the rights conferred under the Act in respect of a registered GI or variant will not be able to use a QoR request as a substitute for opposition or cancellation proceedings.
The new Limitation of Scope of rights process
- Let me now touch on the third broad set of amendments which proposes further changes to the post-registration QoR process.
- Currently, QoR requests can be filed any time after the GI application is published. The requests are dealt with by the Registrar of GIs.
- However, in the course of operating the GI Registry, IPOS has found the need to treat pre-registration and post-registration QoR requests differently. Pre-registration QoR requests relate to GI applications which are still pending before the Registrar.
- It would be more efficient for the Registrar to handle all pre-registration processes together, whether oppositions or QoR requests. In this way, the application for registration can be handled as expediently as possible. This also ensures that the applicant as well as third parties can have clarity about the protected rights as soon as possible.
- On the other hand, once a GI has been registered, and this is the post-registration, there is no specified time frame for post-registration processes to be initiated. Each post-registration process can be independently managed. Further, GI disputes are often global in nature, with disputes around the world based on similar facts and issues.
- Given the desirability of taking into account the arguments and outcomes of disputes in other countries as well, when determining a post-registration QoR request, we therefore feel that the Registrar might not be the best forum for the determination of such disputes especially when there is no longer an efficiency gain in doing so, in the same way as I’ve explained the pre-registration process.
- The Bill therefore removes the post-registration QoR process. Nonetheless, we recognise that there may be disputes as to the scope of the protection conferred upon a registered GI post-registration.
- The Bill therefore provides that any post-registration applications for a limitation as to the scope of rights conferred in respect of a registered GI, will now be filed in and heard by the High Court, under a new judicial procedure called an application for a Limitation of Scope of rights in respect of a registered GI to be entered onto the Register.
- The scope of such applications, and the grounds on which such applications can be granted, are set out in a new section 48A inserted by clause 7 of the Bill. Having these issues dealt with by the courts would also give the opportunity for Singapore decisions to be cited by the courts in other jurisdictions.
- The changes I mentioned previously providing that a QoR request cannot be used to negate the registration of a GI or a variant, will also apply in the context of this new procedure for application for a Limitation of Scope of rights.
- The changes sought under the Bill, as they are technical in nature and generally straightforward, are targeted to be implemented by the first half of this year.
- So in conclusion, these amendments will contribute to the continued smooth operations of the GI Registry, and they will provide, also at the same time, greater clarity for traders and producers.
- Mr Speaker, I beg to move.
Last updated on 03 Feb 2020