Malaysia's New Geographical Indications Law
Malaysia's New Geographical Indications Bill 2021: What you should know
05 January 2022
On 22 December 2021, the Geographical Indications Bill 2021 (“the Bill”) was passed at the upper house of the Parliament, and is now pending Royal assent. The Bill, once in force, will repeal the Geographical Indications Act 2001. The Bill is anticipated to come into force within the next 1 to 2 months.
Some of the pertinent changes introduced by the Bill are highlighted as follows:-
Examination of Geographical Indications
The Bill stipulates that Geographical Indication 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 can submit its arguments to attempt to overcome the provisional refusal by way of a written submission or hearing.
Grounds for Refusal of Registration
The Registrar shall refuse the registration of a GI if:-
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 is identical to the opposition procedures for trademark, wherein a Notice of Opposition and statement of grounds of opposition is filed within the prescribed period to the Registrar, along with payment of prescribed fee.
The applicant shall file a counterstatement accompanied by a statement of the grounds of counterstatement within the prescribed period and 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 the GI.
Appeals are to be made to the Court if either party is against the Registrar’s decision.
Cancellation of GI
The power to rectify and invalidate a GI is now rested in 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
Transfer of Registration
Under the new 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 party gives consent in writing for the registration of the GI to be transferred to the party
The new Act includes offences for the following:-
Falsely applying registered GI to goods – a GI is being 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
In a nutshell, the Bill 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, resemblance to the Trademark Act 2019 could be seen in the new GI Act, especially in terms of powers of arrest, search, seizure.
We anticipate further details will be revealed in the weeks to come, and will provide an update as soon as they are made available to us.
In the meantime, should you have any questions or would like to know more about any provisions in the Bill, feel free to contact us at firstname.lastname@example.org.