Division 1 — Exceptions applicable to all geographical indications
Certain uses of geographical indications excepted
Open ↗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
Open ↗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
Open ↗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
Open ↗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
Open ↗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
Open ↗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.
Source: Singapore Statutes Online (Attorney-General's Chambers), © Government of Singapore.
