Geographical Indications (Amendment) Bill

Order for Second Reading read.

4.08 pm

The Senior Minister of State for Law (Mr Edwin Tong Chun Fai) (for the Minister for Law): Mr Speaker, 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 evidently 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.

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 – in Chinese – oranges. 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 have 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.

First, an application for registration can contain more than one variant constituting the same GI.

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.

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.

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.

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 us say the producers of Wu Min Cheng oranges applied for the registration of that GI for oranges, including all the variants which I have 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 the personal name, 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 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. 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 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.

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 have 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 the new section 48(a), 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 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.

Sir, in conclusion, these amendments will contribute to the continued smooth operations of the GI Registry, and provide also at the same time, greater clarity for traders and producers. Mr Speaker, I beg to move.

Question proposed.

4.21 pm

Mr Christopher de Souza (Holland-Bukit Timah): Sir, the regime protecting geographical indications in Singapore has been developing robustly in the past year. In April 2019, the Geographical Indications Act 2014 came into effect, and, along with it, the registry of geographical indications started operations.

This was in line with our international obligations under the European Union-Singapore Free Trade Agreement. Under the Schedule of the Geographical Indications Act 2014, the categories of goods that a geographical indication may be registered under relate to foodstuff or agricultural products. For countries where there are a lot of exports of such items that qualify for geographical indication, geographical indications help build up the reputation and quality associated with the produce in a different country. Although Singapore is not an agricultural exporting country, geographical indications are still relevant to us. Why? Singaporeans enjoy and consume foods from all over the world. Therefore, geographical indications add assurance relating to the unique flavour and authenticity of the product.

This Bill makes the geographical indications framework clearer through two key avenues – the qualification and limitation of rights, and variants of geographical indicators. At this juncture, I declare for the Hansard record that I am a lawyer and some of my work relates to intellectual property rights.

On qualification of rights before registration, clause 5 amends the law so that qualification of rights can only be made after publication but before registration. After registration, clause 7 inserts a new section to provide for a very similar process post-registration, albeit the term "limitation of scope" instead of "qualification" is used. Would the Minister elaborate on why the process, which in substance appears the same, has been bifurcated into pre and post registration?

The process is important as it sets out more clearly what is protected and what is not protected. This clarity facilitates better usage and protection of geographical indications by providing a better indicator for those who may be concerned over a potential infringement. Further, clause 5(d) and the new section 48(4) in clause 7 delineate when a qualification or limitation is appropriate and when a notice of opposition is appropriate. This provides needed guidance and ensures that the more appropriate process is used in any given circumstance.

The other main group of amendments relate to variants in a geographical indication. Variants play an important role in the intellectual property right of geographical indications. When a product's reputation and market expands across the globe, it and its geographical indication would probably have to be translated or transliterated in order to be represented in a different language. By protecting other forms such as translations and transliterations, we protect the essence of the geographical indication such that merchants are unable to circumvent the protection of geographical indications by simply changing the form in which it is presented.

This affords a more complete protection and assists in establishing a global market. It not only helps preserve authenticity and quality of products related to the geographical indication but also makes them more accessible to people who speak a different language.

In relation to this, the illustration in the Explanatory Statement for clause 2 refers to "Lion City Apples" as a variant for "Apples of Singapore." I must say a much less exciting example than "Pulau Ubin Oranges". I do like the ring of "Pulau Ubin Oranges". Would the Minister explain under what circumstances would a nickname for a place be recognised as a variant under the Geographical Indication? For official nicknames used widely and even at national celebrations such as a National Day Parade, it is clear that it is quite well known and accepted. However, there are times when the nickname may not be as widely known or accepted. Under those circumstances, would such "unofficial" nicknames be accepted?

Clause 3 allows an application for a variant to be separate from the main application or together with it. This flexibility is welcomed and allows for the accommodation of market forces – for instance, where the demand for goods change such that the geographical indication should be translated into a different language in order to have the full benefit of the intellectual property right in question.

Clause 4 of the Bill clarifies that variants need to fulfil the criteria of geographical indication in order to be registered. This ensures that variants are not a back door option for registering what was otherwise not registrable.

In conclusion, Mr Speaker, geographical indications help guarantee the origin of a produce or food product, implying a certain standard or quality to it. In short, this Bill makes the regime clearer. Therefore, I support the Bill.

4.28 pm

Mr Leon Perera (Non-Constituency Member): Mr Speaker, Sir, the geographical indications or GI (Amendment) Bill seeks to clarify a number of technical points relating to the GI Act of 2014 which came into force in 2019. In particular, it prescribes how the act should be interpreted in respect of variance of a GI as well as clarifying the legal procedure by which an appellant can seek to qualify or limit the scope of the rights conferred by the registration of the GI. Through bringing about these certifications, the Bill is a significant step in the right direction.

I have a few questions and suggestions for the Minister and respect of this Bill. Before I raise these, I would like to declare my interest as the CEO of a research consultancy that undertakes work in the agri-food and processed food and beverage space among other product categories.

GIs are terms which are used to inform consumers that a product, mostly food and drink comes from a particular place. The GI Act of 2014 established a new system of registration in Singapore to improve, the certainty of protection given to GIS with effect from 1 April 2019. This had been part of Singapore's compliance with the Singapore European Union Free Trade Agreement where some 100 applications have been protected under the GI Act. Perhaps the most famous example of a GI is champagne. Other examples are Tennessee whiskey, Pinggu peaches, Darjeeling tea and Parmesan cheese. Essentially, GI's must identify goods where the qualities, characteristics or reputation of the product should be essentially due to the place of origin.

GIs help consumers gain assurance that the product they are buying and body the geographically grounded characteristics and bar reflected in the product name.

My first question would be, as a Singaporean consumer purchasing a product where a GI has been registered in Singapore, how can they obtain some degree of assurance that the product they are purchasing is a genuine GI product, as it were, rather than a product from a different region that has usurped the name protected under the registered GI? No doubt, once the GIs are registered, producers and traders of the GI products will be able to request customs, authorities to "detain, suspect infringing goods which are imported into or exported from Singapore", as IPOS declared in the media report.

But the ability of producers and traders of GI products to in force their rights may be uneven on the ground. Can IPOS consider working with GI rights holders, industry associations and other stakeholders to create an easy-to-use directory entirely funded by GI rights holders which will list legitimate products bearing the GI by brand, product type and retailer? Industry stakeholders will be strongly incentivised to fund such a directory.

Next, GIs represent an opportunity for local farming and food processing entrepreneurs to brand Singaporean products for enhanced competitiveness in export markets while also potentially contributing to the tourist experience for inbound tourists into Singapore who may seek good quality local food. In fact, it is not uncommon for tourist authorities to promote local foodstuffs and where they can be obtained. The Food and Agricultural Organisation, Asia Office said, as quoted in a media report by Food Navigator Asia, and I quote, "As the industry moves towards globalisation and bringing local products to the world, local or ethnic products are increasingly becoming a target for GIs as these are often the most popularly searched by tourists. It is becoming increasingly important to differentiate your products from the pack. The time for uniformity in F&B is gone and GIs are going to be a big contributor to this."

In this context, I have two other questions. Firstly, how many applications have been made for local geographic indications (GIs) to date? According to the same media report I cited earlier, and is confirmed by the Senior Minister of State, 140 GI applications have been made to IPOS since the GI Registry has been opened in April last year but it is unclear how many are for local GIs.

Secondly, will the Government consider working with local farming and food processing entrepreneurs to support their efforts to register GIs? Developing Singaporean GIs could be an avenue to boost the economic and job creation potential of the local food industry.

Mr Speaker: Senior Minister of State, Mr Edwin Tong.

4.32 pm

Mr Edwin Tong Chun Fai: I thank the two Members who have spoken, supporting the amendments and also speaking up in favour of using the geographical indicators.

The GI system that is being set up – and you have seen it operate in the last year or so – is obviously designed to achieve the purposes for which Mr Perera has outlined: to give a platform to recognise local producers, to give a basis on which to differentiate and to distinguish food products in particular and to operate a system on which you can say that something is domain to the location and that, is itself, is a distinguishing feature. And so, the purpose of this regime is really to set up an environment that promotes all of these and allows protection to be given to producers so that they can then leverage on the GI, or rather, the name of a product linked to the geographical location, in the context of Mr Perera's point in Singapore as well.

Let me just address the queries that have been raised.

Mr Christopher de Souza asked why the process is being bifurcated into a pre- and a post registration. This is something that I outlined earlier, but let me just reiterate the concept and also the paradigm by which this is to be operating.

In handling these pending applications, it is in the interest of parties that the Registrar moves as quickly as possible to reach a registration decision, so that all parties are clear about the protection that is accorded. In this context, the Registrar that handles the pre-registration QoR request together with the GI application will enable an efficient and expedient processing of the matters.

On the other hand, after the GI is registered, post-registration matters can be independently handled. We have therefore removed post-registration QoRs for registered GIs.

The new Limitation of Scope process is dealt with by the Courts and not by the Registrar. And as Mr de Souza knows, it is common for the GIs around the world to be based on similar facts and issues. There may be competing interests; there may be disputes on the factual circumstances and matrix which give rise to the GI and they often involve similar, if not, identical parties, as Mr de Souza will know. Therefore, there may be decisions by foreign courts which would provide guidance and indeed, it would also guide the nature of the decision in Singapore and vice versa. And in this context, it will be an opportunity for Singapore jurisprudence to be used in other countries as well. Given the above, the Courts, we feel, will be better placed to adjudicate on these matters.

Mr de Souza also asked about "Lion City Apples" and the use of the nickname, and I think circumstances under which the nickname for a place would be recognised as a variant of a GI, and under what circumstances that nickname could then be accepted.

For a variant to be registered in Singapore, just as it is with any application for registration of a GI in Singapore, the applicant seeking to register a variant must show that the variant has obtained recognition or registration as a GI in its country of origin. This would be done as part of the application for registration process before the Registrar of GIs.

As for Mr Perera's queries, the Singapore consumer obviously would also rely on the similar processes to ensure that there is no improper usurpation of the name. And that each time a GI is registered, there will be a thorough, exhaustive review of the circumstances giving rise to the claim for that particular geographical indication.

The suggestion that there may be a set-up that is used, funded by GI rights holders so that there can be a proper categorisation by brands and so on, is something we can consider. I think that is a useful suggestion insofar as it takes the debate further on how branding can be better organised, how there can be searches and ultimately, leading to better enforcement and policing of those rights.

The second point Mr Perera raised which I think I agreed with earlier is that this entire platform that the GI Act has created is indeed useful for Singapore producers because Singapore producers can then leverage on our own geographical location and indeed, there are several special places within Singapore whose names are very well associated with certain types of foods. And, to that extent, that can be used.

Mr Perera asked what is the breakdown for local applications. I do not have the number at hand but I will check and I will revert to Mr Perera.

Will the Government consider working with these producers? Certainly. I think what we do see is that the reforms that we make, not just in this Bill itself but generally in the context of the IP space, we see this as an opportunity for local producers, local companies to take advantage of the laws that we set up. As I have mentioned on more than one occasion, I believe, we ensure that the laws that we set up have, in other words, to be very much pro-business and centred on the needs of the user. And so, if we are able to have a platform where producers, manufacturers can take advantage of and protect the GIs, then certainly, we will encourage them to do so and to see what further assistance can be offered so that there will be even more Singapore producers beyond the examples that Mr de Souza and myself have outlined which are illustrative only, I might add.

Sir, I will agree with the Members that the general point is that GIs continue to be relevant and maybe even increasingly relevant to Singaporean businesses as they add assurance to the unique flavour and identity and, of course, also authenticity of the product. And the system that we have set up, put in place about a year ago and now enhanced with these amendments, is designed to further all of these.

The changes that are being introduced reflect our continual effort to look at, update and enhance the IP regime and provide a fair and transparent GI regime. This, we believe, will further enhance our reputation as the IP hub of the region. Sir, with that, I beg to move.

Question put, and agreed to.

Bill accordingly read a Second time and committed to a Committee of the whole House.

The House immediately resolved itself into a Committee on the Bill. – [Mr Edwin Tong Chun Fai].

Bill considered in Committee; reported without amendment; read a Third time and passed.

Mr Speaker: Order. I propose to take a break now. I suspend the Sitting and will take the Chair at 5.05 pm.

Sitting accordingly suspended

at 4.41 pm until 5.05 pm.

Sitting resumed at 5.05 pm

[Deputy Speaker (Mr Lim Biow Chuan) in the Chair]