Geographical Indications Bill 2021: A New Era for Geographical Indications in Malaysia
25 February 2022
The Geographical Indications Bill 2021 (“the Bill”) was passed by the Dewan Rakyat (House of Representatives) on 15 December 2021 and the Dewan Negara (Senate) on 22 December 2021. The Bill will become law and be known as the Geographical Indications Act 2022 (“the New Act”) after it has received Royal Assent from the Yang di-Pertuan Agong. The New Act will come into operation on a date to be determined by notification in the Gazette by the Minister of Domestic Trade and Consumer Affairs (“Minister”).
Once the New Act comes into operation, it will repeal the existing Geographical Indications Act 2000 (“GIA 2000”) and henceforth provide for the protection and registration of geographical indications (“GI”) in relation to goods as well as for the implementation of the relevant treaties and relevant matters.
This article provides a summary of the key new and enhanced provisions of the New Act.
The New Act retains the existing definition of “geographical indication” as an indication which may contain one or more words which identifies any goods as originating in a country or territory, or a region or locality in that country or territory, where a given quality, reputation or other characteristic of the goods is essentially attributable to their geographical origin.
Who May Apply for Registration of a Geographical Indication?
The following persons or entities will be eligible to apply to register a GI under the New Act:
- a person who carries on an activity as a producer, manufacturer or trader in the geographical area specified in the application in respect to the goods and includes an association of such person; or
- a competent authority, namely (i) any government or statutory body that carries out the functions of, on behalf of, or sanctioned by, the Malaysian Government or a State Government; (ii) a government other than the Malaysian Government; or (iii) an authority which is competent to certify the goods; and in each of the afore-mentioned cases has the responsibility for the GI in question.
Two aspects of the definition of a ‘competent authority’ under the New Act are worth noting. First, it is wider than the corresponding definition under the GIA 2000 in that the phrase includes foreign governments. Second, it is narrower than the definition under the GIA 2000 in that under the new definition, it is essential that a competent authority must have responsibility for the GI in question.
The Application for Registration
The New Act specifies that the registration of a GI can only be sought in respect of any goods falling within one or more of the categories of goods as set out in the guidelines or practice directions issued by the Registrar of Geographical Indications (‘the Registrar’). The GIA 2000 does not contain a similar requirement. The application shall be subject to substantive examinations and oppositions, and a successful registration is valid for ten years from the date of registration and is renewable for further periods of ten years each. Any variant of a GI shall be subject to a different registration application.
Examination Procedure of Application for Registration
One of the notable features of the New Act is the introduction of new and extensive provisions on the examination procedure, shedding some much-needed light on the process for the benefit of GI owners. The Registrar will first begin the examination of an application for registration by conducting a search of any geographical indication or earlier trademark to such extent as he considers necessary.
Provisional refusal of application
If the application for registration does not fulfil any of the requirements for registration of a GI, the Registrar will inform the applicant of the grounds of provisional refusal by a written notice. The applicant may within the period specified in the written notice: (i) make a representation by way of a written submission or hearing; (ii) amend the application for registration; or (iii) furnish additional or any other information or evidence. The application is deemed to be withdrawn if the applicant does not respond to the Registrar within the specified period or, if the applicant’s response does not satisfy the Registrar, the Registrar shall refuse the application for registration. The applicant may request for the Registrar’s written grounds of refusal and appeal the Registrar’s refusal to the High Court.
Acceptance of an application for registration
If an application for registration of a GI is accepted, the Registrar shall issue a notice of acceptance to the applicant requiring the applicant to pay the prescribed fee within the period specified in the notice, failing which the application shall be deemed withdrawn. Upon receipt of the payment, the acceptance of the application, along with all of its conditions, amendments, modifications or limitations, will be published in the Intellectual Property Official Journal.
However, after the acceptance of an application but before the registration of the GI, the Registrar is empowered to revoke the acceptance or reissue a new acceptance if the Registrar is satisfied that the application has been accepted in error. In such event, the GI shall not be registered, or be registered subject to any additional or different conditions or limitations.
Opposition to Application for Registration
The opposition regime under the New Act remains substantially similar to the GIA 2000. However, an opposition may now be brought on any of the more extensive grounds of refusal of registration discussed below. In contrast to the GIA 2000 which was silent on the issue of whether additional grounds of opposition could be adduced upon appeal of the Registrar’s decision, an opponent can now introduce any additional ground of opposition with leave of the Court.
Effects of Registered Geographical Indications
As from the date of registration, a registered proprietor of a GI has: (i) the right to make, import, export, offer for sale, sell or use the GI in relation to the goods for which the GI is registered and the right to authorise other persons to do so; and (ii) the right to take action, or obtain relief and remedies provided under section 34 (falsely applying registered GI to goods), section 35 (importing into Malaysia for purpose of trade or manufacture, selling, offering or exposing for sale or having possession, custody or control for trade or manufacture, goods with falsely applied GIs) and section 77 (instituting proceedings against certain uses of GI) of the New Act. However, no proceedings may be instituted before the date on which the GI is registered.
Grounds for Refusal of Registration of Geographical Indication
The GIA 2000 was unclear as to the grounds on which registration of a GI may be refused as the instances warranting such refusal were haphazardly strewn across the statute. The grounds are now contained in a single provision under the New Act, which provides that the Registrar to refuse to register a GI if:
- the GI does not correspond to the meaning of “geographical indication” as defined in the New Act;
- the GI identifies goods that do not fall within any of the categories of goods as determined by the Registrar;
- the GI 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 sought relates to goods;
- the GI is contrary to public order or morality;
- the GI is not or has ceased to be protected in its country or territory of origin;
- the goods do not originate from the country, region or locality indicated in the application for registration;
- the GI 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; or
- there exists a likelihood of confusion on the part of the public by reason of the GI being identical with or similar to, and has the same geographical origin as, an earlier GI.
The Registrar is required to refuse to register a GI on the following grounds, but is given the discretion to register such GI if the proprietor of the trademark consents to the registration or fails to notify the Registrar of his opposition:
- there exists a likelihood of confusion on the part of the public due to the GI being identical with or similar to a trademark that fulfils any of the following conditions:
- 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 (“TA 2019”) where: (1) the application for the registration of the trademark was made in good faith; or (2) the trademark was registered in good faith under the TA 2019 or any previous written law relating to trademarks before the date of application for registration of the GI in Malaysia (“Date of Application”); or
- the trademark has been used in good faith in Malaysia in the course of trade before the Date of Application;
- the GI is identical or similar to a trademark that is a well-known trademark in Malaysia before the Date of Application and the registration is liable to mislead consumers as to the true identity of the goods identified by that GI.
Further, the New Act now clarifies that, for the purposes of the provision on the refusal of registration, a reference to a GI includes a variant of the GI, and a refusal of registration of a variant does not prevent the registration of any other variant of the GI if that variant satisfies the requirements of the New Act.
Homonymous Geographical Indication
In contrast to homonymous GIs being confined to wines under the GIA 2000, the Registrar may now register a homonymous GI which is identical or confusingly similar with an earlier GI with practical conditions differentiating the homonymous GI from the earlier GI, taking into account the need to ensure equitable treatment of all the parties concerned and that the public is not misled.
Institution of Proceedings in Court
Any interested person of goods identified by a GI may institute Court proceedings against any person for carrying out the following acts:
- the use in the course of trade of a GI by 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; or
- any use in the course of trade of a GI identifying wines for wines or spirits for spirits, not originating in the place indicated by the GI in question, even where the true origin of the wines or spirits is indicated or the GI is used in translation or accompanied by expressions such as “kind”, “type”, “style” or “imitation” or any similar word or expression.
The court may grant an injunction, award damages or any legal remedy to prevent any unlawful use of the GI. However, the New Act expressly disallows proceedings to be instituted against the use of a GI which: (i) is contrary to public order or morality; (ii) is not or has ceased to be protected in its country or territory of origin; (iii) is identical with the term customary in the common language as the common name of the goods or services in Malaysia; (iv) is identical with the customary name of a grape variety existing in Malaysia as of 1 January 1995, with respect to products of the vine of that grape variety; or (v) has fallen into disuse in its country or territory of origin.
The New Act now expressly provides that the institution of proceedings shall not apply to the following uses relating to GIs:
- the use by a qualified person of a particular GI of another country identifying wines or spirits in relation to any goods or services if the qualified person has, or he and his predecessor in title have, continuously used that GI in Malaysia in relation to those goods or services or related goods or services either for at least ten years before 15 April 1994; or in good faith before 15 April 1994;
- the use by a person of a trademark which is identical or similar to a GI if: (i) the application for the registration of the trademark was made in good faith, or the trademark was registered in good faith, under the Trade Marks Act 1976; or (ii) he has, or he and his predecessor in title have, continuously used that trademark in good faith in Malaysia in the course of trade, either before 15 August 2001 or before the GI in question was protected in its country or territory of origin;
- the use in the course of trade by a person of that person’s name or the name of that person’s predecessor in business except where such name is used in such a manner as to mislead the public;
- the use in the course of trade of any name contained in a registered GI in relation to any goods or services, or of any individual component contained therein, where the name or individual component is identical with the term customarily used in the common language to describe such goods or services in Malaysia or as the common name of any goods or services in Malaysia;
- the use by a qualified person of a registered GI identifying any goods other than wine and spirit in relation to any goods or services if the qualified person has, or he and his predecessor in title have, continuously used that GI in Malaysia in relation to those goods or services or related goods or services either for at least ten years before the commencement of the New Act, or in good faith before the commencement of the New Act;
- the use of a trademark which is identical or similar to a registered GI if: (a) the trademark is a registered trademark or protected international registration designating Malaysia and, pursuant to the TA 2019: (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 TA 2019 before the Date of Application; or (b) the person has, or he and his predecessor in title have, continuously used the trademark in good faith in Malaysia in the course of trade, before the Date of Application;
- the use by a person of a trademark which is identical or similar to a registered GI if the trademark is, before the Date of Application, a well-known trademark in Malaysia, and the institution of proceedings in relation to the use of that trademark is liable to mislead consumers as to the true identity of the goods identified by that GI.
Voluntary Cancellation of Registration
A key avenue now offered under the New Act to GI owners is the ability to request for a voluntary cancellation of a registered GI. The rights conferred on any interested party will cease to exist with effect from the date of the cancellation of the registration.
Cancellation of Registration by Court
The registration of a GI may be subject to cancellation upon application by any person to the Court on the following grounds which are newly furnished under the New Act: (i) the registration was in breach of rules against refusal of registration; (ii) the registration was obtained fraudulently or by misrepresentation; (iii) the GI has fallen into disuse or has ceased to be protected in its country or territory or origin; (iv) there has been a failure by a registered proprietor to maintain, in Malaysia, any commercial activity or interest in relation to the GI, including commercialisation, promotion or market monitoring; or (v) in consequence of (iv) by any interested party of goods identified by the GI, the GI has become the common name of the goods in Malaysia.
Offences under the New Act
In contrast to the GIA 2000 which does not provide for statutory offences, the following are now classified as offences under the New Act:
- falsely applying a registered GI to any goods;
- importing and selling any goods with falsely applied GI;
- submitting false information to the Geographical Indications Office or making false entries in the Register;
- falsely representing a GI as a registered GI and falsely representing the goods for which a GI is registered; and
- disobedience to any summons to appear as a witness or a request made by the Registrar to produce any document or article.
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The New Act also confers jurisdiction on the Sessions Court to try any offence under the New Act. It also provides that no prosecution for an offence under the New Act shall be instituted except by or with the written consent of the Public Prosecutor.
Tripling the number of provisions under the GIA2000, the New Act, with its comprehensive 101 sections, embodies a much-welcomed development to the preceding regime governing GIs in Malaysia. In addition to revamping core provisions contained in the GIA 2000, the New Act specifically provides for the registration of geographical indications in respect of goods only falling within the specified categories of goods, the examination and acceptance procedure for the application for registration, widening of the ambit of homonymous GIs and the voluntary cancellation of a registered GI by the registered proprietor.
In addition, the New Act also provides more extensive grounds in relation to the refusal of registration, institution of Court proceedings, cancellation of a registered GI by the Court and the types of offences under the New Act which the GIA 2000 was silent on.
Comforted by more extensive guidance, this enhanced protection afforded to owners of GIs will, in turn, contribute to maximising consumer association with products and boosting economic growth in Malaysia.
Article prepared by Teh Hong Koon (Partner) of the Intellectual Property Practice of Skrine.