Malaysia legislation
Section 10
Section 10
(a)
the geographical indication does not correspond to the meaning of “geographical indication” as defined in section 2;
(b)
the geographical indication identifies goods that do not fall within any of the categories of goods as determined by the Registrar;
(c)
the geographical indication consists exclusively of an indication which is identical with the term customary in the common language as the common name of any goods in Malaysia if registration is sought in relation to the goods;
(d)
the geographical indication is contrary to public order or morality;
(e)
the geographical indication is not or has ceased to be protected in its country or territory of origin;
(f)
the goods does not originate in the country, region or locality indicated in the application for the registration of geographical indication; or
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(g)
the geographical indication in relation to the goods is of such a nature which may mislead the public as to the true place of origin of the goods.
(2)
Subject to section 11, the Registrar shall refuse to register a geographical indication if there exists a likelihood of confusion on the part of the public because the geographical indication is identical with or similar to, and has the same geographical origin as, an earlier geographical indication.
(3)
The Registrar shall not register a geographical indication if there exists a likelihood of confusion on the part of the public by reason the geographical indication is identical with or similar to a trademark if the trademark fulfils any of the following conditions:
(a)
the trademark is a registered trademark or protected international registration designating Malaysia, and taking into account, where appropriate, the priorities claimed in respect of the trademark under the Trademarks
Act 2019 where—
(i)
the application for the registration of the trademark was made in good faith; or
(ii)
the trademark was registered in good faith, under the Trademarks Act 2019 or any previous written law relating to trademarks before the date of application for registration of the geographical indication in Malaysia;
or
(b)
the trademark has been used in good faith in Malaysia in the course of trade before the date of application for registration of the geographical indication in Malaysia.
(4)
The Registrar shall refuse to register a geographical indication that is identical with or similar to a trademark if—
(a)
before the date of application for registration of the geographical indication, the trademark is a well-known trademark in Malaysia; and
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(b)
the registration of the geographical indication is liable to mislead consumers as to the true identity of the goods identified by that geographical indication.
(5)
Notwithstanding subsections (3) and (4), the Registrar may, in his discretion, register any geographical indication referred to in subsection (3) or (4), if the proprietor of the trademark referred to in subsection (3) or (4), as the case may be—
(a)
consents to the registration; or
(b)
fails to file a notice to the Registrar of his opposition to the registration in accordance with subsection 16(1).
(6)
For the purposes of this section—
(a)
a reference to a geographical indication includes a variant of the geographical indication; and
(b)
a refusal of registration under this section of any variant of a geographical indication does not prevent the registration of any other variant of the geographical indication if that variant satisfies the requirements of this Act.
Registration of homonymous geographical indication