Updated: Oct 18, 2022
The Geographical Indications Act and Regulations 2022 have come into force on 18 March 2022, and repealed the Geographical Indications Act 2000 and Regulations 2001.
In this note, we would like to share some of the pertinent changes introduced by the Act which are highlighted as follows:-
Examination of Geographical Indications
The Act stipulates that Geographical Indication (GI) applications will undergo examination by the Registrar. The Registrar shall carry out a search of any earlier geographical indications or earlier trademark.
Should the Registrar issue a provisional refusal, the Applicant may submit arguments to attempt to overcome the provisional refusal by way of a written submission or hearing.
Grounds for Refusal of Registration
During the examination process, the Registrar shall refuse the registration of a GI if:-
GI does not fulfill the definition as provided under Section 2 of the Act
GI identifies goods that do not fall within the prescribed category of goods
GI is identical to any customary term in the common language to the goods as claimed
GI is contrary to public order
GI is not protected or ceased to be protected in the country of origin
The goods do not originate in the location as indicated in the application for GI
GI may mislead the public as to the true place of origin of the goods
GI is likely to cause confusion with an earlier GI which is identical or similar
GI is likely to cause confusion with a registered trademark which is identical or similar (this can be overcome with consent by the registered proprietor of the trademark)
GI is likely to cause confusion with a similar or identical well-known trademark
Opposition Procedures for Geographical Indications
The opposition procedures for GI are identical to the opposition procedures for trademark, wherein a Notice of Opposition and statement of grounds of opposition is required to be filed within two months from the date of publication of the GI to the Registrar, along with payment of the prescribed fee.
The applicant then files a counterstatement accompanied by a statement of the grounds of counterstatement within two months from the date of receipt of the notice of opposition and payment of prescribed fee.
The Registrar will, upon considering the evidence and written submissions from both the Applicant and Opposing party, make its decision on whether to refuse, register or register with condition, amendment, modification or limitation of the GI.
Appeals are to be made to the Malaysian Court from the Registrar’s decision.
Cancellation of GI
The power to rectify and invalidate a GI now vests with the Court instead of the Intellectual Property Corporation of Malaysia (MyIPO).
A GI can now be cancelled if:-
It was registered in breach of the grounds for refusal
It obtained registration by fraud or misrepresentation
It is not being used or ceased to be protected in the country of origin
It is not being maintained by the registered proprietor – no commercial activity or interest in relation to the GI
It has become a common name of the goods in Malaysia due to non-use of it as a GI
Transfer of Registration
Under the Act, registered GIs are transferrable to another party, provided:-
The party is entitled to file an application for the registration of geographical indication; and
The proprietor gives consent in writing for the registered GI to be transferred to him
The Act includes offences for the following:-
Falsely applying registered GI to goods – if a GI is applied without the consent of the registered proprietor and the goods are not the genuine goods of the registered proprietor, person authorized by the registered proprietor or person who has the right to use the GI or the goods are not in accordance with the quality, reputation or characteristics as specified in the Register.
Importing or selling goods with falsely applied GI as above
Submission of false information to the Geographical Indications Office or false entry in Register
Falsely representing GI as registered – falsely represents that a GI is a registered GI or makes a false representation as to the goods for which a GI is registered.
Disobedience to Summons or Refusal to give Evidence
Amendments to the Trademarks Act 2019 in relation to the Geographical Indications Act 2022
As the Geographical Indications Act 2000 has been repealed, the Trademark Acts 2019 inevitably has to be amended. The amendments are in relation to collective and certification marks consisting of geographical indications.
In a nutshell, the Act reflects a comprehensive geographical indication registration system, covering a wider scope of protection to GI proprietors. This ensures that their rights are adequately protected.
In many ways, the provisions resemble those in the Trademark Act 2019 , especially in terms of the powers of arrest, search, seizure.
Should there be any updates, we will provide them as soon as they are made available to us. In the meantime, if you have any questions, please do not hesitate to contact us.