GEOGRAPHICAL INDICATIONS ACT 2000

This Act shall come into operation on a date to be appointed by the Minister by notification in the Gazette.

Interpretation

any producer of agricultural products;

any person exploiting natural products;

any manufacturer of products of handicraft or industry;

or

any trader dealing in any of the products mentioned in paragraphs (a), (b) or (c);

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“protectable geographical indication” means a geographical indication which does not fall within any of the categories of geographical indications specified in section 4;

“Register” means the Register of Geographical Indications kept under this Act;

“registered proprietor”, in relation to a geographical indication, means the person for the time being entered in the Register as proprietor of the geographical indication;

“Registrar” means the Registrar of Geographical Indications as designated in subsection 8(1).

regardless whether or not the geographical indication is registered under this Act; and

as against another geographical indication which, although literally true as to the country, territory, region or locality in which the goods originate, falsely represents to the public that the goods originate in another country, territory, region or locality.

Exclusion from protection

geographical indications that do not correspond to the meaning of “geographical indication” as defined in section 2;

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geographical indications which are contrary to public order or morality;

geographical indications which are not or have ceased to be protected in their country or territory of origin; or

geographical indications which have fallen into disuse in their country or territory of origin.

Institution of proceedings for injunction and damages

the use in the course of trade of any means in the designation or presentation of any goods that indicates or suggests, in a manner which misleads the public as to the geographical origin of the goods, that the goods in question originate in a geographical area other than the true place of origin;

any use in the course of trade which constitutes an act of unfair competition within the meaning of Article 10bis of the Paris Convention as set out in the Schedule;

any use in the course of trade of a geographical indication which, although literally true as to the country, territory, region or locality in which the goods originate, falsely represents to the public that the goods originate in another country, territory, region or locality; or

any use in the course of trade of a geographical indication identifying wines for wines not originating in the place indicated by the geographical indication in question or a geographical indication identifying spirits for spirits not originating in the place indicated by the geographical indication in question, even where the true origin of the wines or spirits is indicated or the geographical indication is used in translation or accompanied by expressions such as “kind”, “type”, “style” or “imitation”.

The Court may grant an injunction to prevent any unlawful use of the geographical indication and award any damages and any other legal remedy or relief as it deems fit.

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Failure to take action

from the date such use by that person or his predecessor in title has become generally known in Malaysia; or

from the date of registration of the trade mark by that person under the Trade Marks Act 1976 [Act 175], whichever is earlier.

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

Homonymous geographical indications for wines

The Registrar, in cases of bona fide concurrent use of homonymous geographical indications, shall determine the practical conditions under which the homonymous geographical indications in question will be differentiated from each other, taking into account the need to ensure equitable treatment of the producers concerned and that the public are not misled.

The Corporation may appoint, on such terms and conditions as it may determine, from amongst persons in the employment of the Corporation, such number of Deputy Registrars of Geographical

Indications, Assistant Registrars of Geographical Indications and other officers as may be necessary for the proper administration

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of this Act, and may revoke the appointment of any person so appointed or deemed to have been so appointed under subsection (3).

The persons holding office as Deputy Registrars, Assistant

Registrars and other officers under this Act before the appointed date who were given an option by the Government of Malaysia to serve as employees of the Corporation and have so opted shall on the appointed date be deemed to have been appointed as Deputy

Registrars, Assistant Registrars and such other officers under subsection (2).

Subject to the general direction and control of the Registrar and to such conditions or restrictions as may be imposed by the

Registrar, a Deputy Registrar or an Assistant Registrar may exercise any function of the Registrar under this Act, and anything by this

Act appointed or authorized or required to be done or signed by the Registrar may be done or signed by any Deputy Registrar or

Assistant Registrar and the act or signature of a Deputy Registrar or an Assistant Registrar shall be as valid and effectual as if done or signed by the Registrar.

The Registrar shall have a seal of such device as may be approved by the Corporation and the impressions of such seal shall be judicially noticed and admitted in evidence.

Geographical indications offices

Any application or other document required or permitted to be filed at the Central Geographical Indications Office may be filed at any branch office of the Central Geographical Indications

Office and such application or other document shall be deemed to have been filed at the Central Geographical Indications Office.

Register of Geographical Indications

The Register shall be kept in such form and on such material as may be prescribed.

The Register shall be open to the inspection of the public at such times and in accordance with such conditions as may be prescribed.

A certified true copy or extract of any entry in the Register sealed with the seal of the Registrar shall be given to any person requiring the copy or extract on payment of the prescribed fee.

a person who is carrying on an activity as a producer in the geographical area specified in the application with respect to the goods specified in the application, and includes a group or groups of such person;

a competent authority; or

a trade organization or association.

An applicant may file an application for registration of a geographical indication personally or through an agent.

Notwithstanding subsection (1A), where an applicant does not reside or carry on business in Malaysia, he shall appoint an agent to act on his behalf.

Agent

that person is domiciled or resident in Malaysia; or

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the firm or company is constituted under the laws of

Malaysia; and

such person, firm or company carries on business or practice principally in Malaysia.

The qualifications and the mode of registration of an agent shall be as prescribed.

Application for registration

the name, address and nationality of the natural person or legal entity filing the application, and the capacity in which the applicant is applying for registration;

the geographical indication for which registration is sought;

the geographical area to which the geographical indication applies;

the goods for which the geographical indication applies;

the quality, reputation or other characteristic of the goods for which the geographical indication is used; and

any other particulars as may be prescribed.

An application under subsection (1) shall be accompanied by the prescribed fee.

Application for registration to be advertised

does not fall within the meaning of the definition of

“geographical indication” under this Act;

is contrary to public order or morality;

is not or has ceased to be protected in its country of origin; or

has fallen into disuse in its country of origin.

The notice shall be given in writing in the prescribed manner and shall include a statement of the grounds of opposition.

Reply by applicant

If the applicant fails to reply to the opposition within the period specified in subsection (1) or, if the period has been extended by the Registrar, within the additional period, the applicant shall be deemed to have abandoned his application for registration.

Filing of documentary evidence in support

Any documentary evidence to be filed by the opponent or applicant under subsection (1) shall be filed within the prescribed time and in the prescribed manner.

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Where the applicant files the documentary evidence in support of his application for registration, the opponent may be given an opportunity, within the prescribed time, to submit to the Registrar and applicant evidence in reply to be adduced in the prescribed manner.

After considering the documentary evidence filed by the opponent and applicant, and after giving both parties an opportunity to make submissions, the Registrar shall decide whether—

The Registrar shall within two months after making a decision under subsection (4) prepare his grounds of decision in writing.

Any person aggrieved by the decision of the Registrar under subsection (4) may appeal to the Court.

Failure to file documentary evidence

Where the opponent fails to file the documentary evidence as required under subsection 16(1), the Registrar shall be entitled to treat the opposition as abandoned and shall register the application and issue to the applicant a certificate of registration in the prescribed form.

Appeal to Court

the geographical indication to be registered;

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the geographical indication to be registered subject to any modification which shall not in any manner substantially affect the identity of the geographical indication; or

the geographical indication not to be registered.

Where the Court makes an order under paragraph (1)(a) or

no opposition has been filed under section 14; or

the Registrar has made a decision under paragraph 16(4)(b)

or (c) and no appeal has been filed against that decision, the Registrar shall register the geographical indication and issue to the applicant a certificate of registration in the prescribed form.

The period of registration of a geographical indication shall be ten years and the registration is renewable upon an application made under section 19A.

Renewal of registration

An application for the renewal of the registration of a geographical indication shall be made by the registered proprietor in the prescribed manner to the Registrar within the prescribed time before the date of expiry of the registration.

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An application under subsection (2) shall be accompanied by the prescribed fee.

Subject to subsection (5), upon receipt of an application under subsection (2) and the prescribed fee, the Registrar shall renew the registration of the geographical indication for a period which shall not exceed ten years at each renewal.

For the purpose of renewing the registration of a geographical indication, the Registrar may require additional particulars and may refuse to renew the registration if the applicant does not furnish the additional particulars required.

If the Registrar refuses to renew the registration under subsection (5) the Registrar shall notify the applicant in writing of the decision.

Subject to section 19B, the Registrar may remove a geographical indication from the Register if the applicant fails to apply for the renewal of the geographical indication within the prescribed time.

Restoration of geographical indication removed from the Register

the applicant files an application for such restoration within twelve months from the date of expiry of the registration of the geographical indication; and

the Registrar is satisfied that—

there has been no use in bad faith of the geographical indication during the year immediately preceding its removal from the Register; or

A certificate of registration issued under this Act shall be prima facie evidence of the facts stated in the certificate and of the validity of the registration.

Right of use

The right of use shall be in respect of the products specified in the Register in accordance to the quality, reputation or characteristic specified in the Register.

cancel the registration of a geographical indication on the ground that the geographical indication does not qualify for protection as such having regard to section 4; or

rectify the registration of a geographical indication on the ground that the geographical area specified in the registration does not correspond to the geographical indication, or that the indication of the products for which the geographical indication is used or the indication of the quality, reputation or other characteristic of such products is missing or unsatisfactory.

The persons who request for the cancellation or rectification of the registration of the geographical indication under subsection

shall give notice to the applicant who filed the application for registration of the geographical indication or his successor in title.

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The Registrar shall, in a manner to be prescribed, notify all persons having the right to use the geographical indication under section 21.

The persons referred to in subsection (3) and any other interested persons may, within a period which shall be specified by the Registrar, apply to the Registrar to join in any proceedings which may be held by the Registrar to determine whether or not the registration of the geographical indication should be cancelled or rectified.

The Registrar shall within two months after making a decision under subsection (1) prepare his grounds of decision in writing.

Any person aggrieved by the decision of the Registrar under subsection (1) may appeal to the Court.

Correction of errors

Costs awarded by the Registrar may in default of payment be recovered in a court of competent jurisdiction by the party to whom the costs were awarded as if they were debts due to such party.

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Security for costs

The Registrar may treat the opposition or application as abandoned if the security for costs as required under subsection

is not paid.

The security for costs shall be refundable or be considered as part of the payment of the costs of the proceedings, as the case may be.

In respect of a geographical indication in existence before the commencement of this Act, no suit or proceedings shall be brought under this Act for anything done before the commencement of this Act.

Exception for prior use

for at least ten years before 15 April 1994; or

in good faith before 15 April 1994.

Where a trade mark has been applied for or registered in good faith, or where rights to a trade mark have been acquired through use in good faith either—

Nothing in this Act shall apply in respect of a geographical indication of any country with respect to goods or services for which the relevant indication is identical with the term customary in common language as the common name for such goods or services in Malaysia or in respect of a geographical indication of any other country with respect to products of the vine for which the relevant indication is identical with the customary name of a grape variety existing in Malaysia as of 1 January 1995.

Exception for use of personal name

In particular and without prejudice to the generality of subsection (1), regulations made under this section may provide for all or any of the following: