Malaysia legislation
Section 12
Section 12
(2)
For the purposes of an examination under subsection (1), the Registrar shall carry out a search of any earlier geographical indication or earlier trademark to such extent as the Registrar considers necessary.
(3)
If the application for the registration of the geographical indication made by the applicant does not fulfil any of the requirements for registration of a geographical indication, the Registrar shall inform the applicant of the grounds of provisional refusal by a written notice and give the applicant an opportunity, within such period as the Registrar may specify in the written notice, to—
(a)
make a representation by way of a written submission or hearing;
(b)
amend the application for registration of the geographical indication to meet any condition, amendment, modification or limitation as the Registrar thinks fit to impose; or
(c)
furnish additional or any other information or evidence.
(4)
Any hearing under paragraph (3)(a) and amendment under paragraph (3)(b) shall be made by the applicant in the form as determined by the Registrar together with payment of the prescribed fee.
(5)
Where—
(a)
the applicant does not respond to the Registrar within such period as specified in the written notice, the application for the registration of the geographical indication shall be deemed to be withdrawn; or
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(b)
the response given by the applicant does not satisfy the Registrar, the Registrar shall refuse the application for the registration of the geographical indication, and upon an application made by the applicant in the form as determined by the Registrar together with payment of the prescribed fee, state in writing the grounds of the refusal.
(6)
Upon examination, where the Registrar finds that the application for the registration of the geographical indication fulfils the requirements for registration of a geographical indication, the Registrar shall accept the application for the registration of the geographical indication.
(7)
Where an appeal is made to the Court against the decision of the Registrar relating to the refusal under paragraph (5)(b)—
(a)
the appeal shall be made in the prescribed manner;
(b)
the Court shall, where necessary, hear the applicant and the Registrar; and
(c)
the appeal shall be heard on the material as stated by the Registrar to have been used by him in arriving at the decision and no additional ground of refusal to the acceptance of the application for registration of geographical indication shall be allowed to be introduced by the Registrar other than those so stated except by leave of the Court.
(8)
For the purposes of paragraph (7)(c), where any additional ground of provisional refusal is introduced by the Registrar, the applicant shall, without payment of any cost, be entitled to withdraw—
(a)
his appeal in the prescribed manner; and
(b)
his application for the registration of the geographical indication in the form as determined by the Registrar.
(9)
In determining an appeal under subsection (7), the Court shall make an order subject to any condition, amendment, modification or limitation, if any, for the acceptance of the application for the registration of the geographical indication.
Act 836
(10)
Any application for the registration of a geographical indication filed under section 8 and accepted under this section shall, notwithstanding any condition, amendment, modification or limitation permitted by the Registrar or the Court to be made in such application, be deemed to have been made on the date of the application for registration of the geographical indication.
(11)
Without prejudice to subsection (10), where after the acceptance of an application for the registration of a geographical indication but before the registration of the geographical indication, the Registrar is satisfied that—
(a)
the application for the registration of the geographical indication has been accepted in error; or
(b)
in the special circumstances of the case—
(i)
the geographical indication shall not be registered; or
(ii)
the geographical indication shall be registered subject to any additional or different condition or limitation, the Registrar may revoke the acceptance and proceed as if the application for the registration of the geographical indication had not been accepted, or in respect of a geographical indication which shall be registered subject to any additional or different condition or limitation, reissue a new acceptance subject to the additional or different condition or limitation.
(12)
For the purposes of this section, “earlier trademark”
means—
(a)
a registered trademark or protected international registration designating Malaysia, the application for registration of which was made earlier than the application for the registration of the geographical indication in question, taking into account, where appropriate, the priorities claimed in respect of the trademark under the Trademarks Act 2019 or any previous written law relating to trademarks; or
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(b)
a trademark which, at the date of application for the registration of the geographical indication in question, was a well-known trademark, and includes a trademark in respect of which an application for registration has been made and which, if registered, would be an earlier trademark by virtue of paragraph (a) subject to it being so registered.
Acceptance of application for registration of geographical indication