What is Geographical Indications?
"Geographical indications" is an indication 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. Geographical indications can be used on natural or agricultural product or any product of handicraft or industry.
Protection of Geographical Indications
Protection of geographical indications shall be given:-
Regardless whether or not the geographical indication is registered; 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 of Geographical Indications. The following shall not be protected as geographical indications:-
Geographical indications which are contrary to public order or morality or territory of origin; or
Geographical indications which are not or have ceased to be protected in their country.
Geographical indications which have fallen into disuse in their country or territory of origin.
Institution of proceedings for injunction and damages under
Any interested person may institute proceedings in the Court to prevent, in respect of geographical indications:
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 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 which, although literally true as to the country, territory, region or locality in which 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 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.
Registration of geographical indication
When the application for registration of a geographical indication complies with the requirements and is not contrary to public order or morality and no opposition has been filed or no appeal to high court has been filed against the Registrar's decision, than the Register shall register the geographical indication and issue to the applicant a certificate of registration.
A certificate of registration issued shall be prima facie evidence of the facts stated in the certificate and of the validity of the registration.
Right of use
In the case of registered geographical indications, only producers carrying on their activity in the geographical area specified in the Register shall have the right to use a registered geographical indication in the course of trade.
The right of use be in respect of the products specified in the Register in a accordance to the qualify, reputation or characteristic specified in the Register.
Cancellation and rectification of registration
The Register may, on the request of any interested person and upon payment of the prescribed fee:-
cancel the registration of a geographical indication on the ground that the geographical indication does not qualify for protection; 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 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.
Any person aggrieved by the above decision of the Register may appeal to the court.
How long is the period of protection?
A registered geographical indication is given ten years of protection from the date of filling and is renewable for every ten years.
Who may apply for registration?
The following persons shall be entitled to file an application for registration of a geographical indication:-
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 with respect to the such person.
a competent authority; or
a trade organization or association.
How to file application for the registration of a geographical indication?
An application for the registration of a geographical indication shall be application and made on Form G1 accompanied by a copy of statutory declaration by the prescribed fee.
Application shall be in the national language or the English language.
Names of natural persons shall be specified in full and the names of legal entities shall be indicated by their full official designation.
Addresses shall be indicated in a customers requirements for prompt postal delivery.
The nationality of an applicant shall be indicated by the name of the country of which he is a national and legal entities shall be indicate the name of the country in which the entities are constituted and their registered office.
Applicant of a geographical indication who does not reside or carry on business in Malaysia shall appoint an agent and file Form GI 2, giving an address for service in Malaysia.
For the purpose of the registration of geographical indications, goods are classified in the manner prescribed in the Geographical Indications Regulations 2001.
Upon application a fee of RM 250.00 is charged, followed by RM 450.00 for advertisement and issuance of certificate. A list of geographical indications fees applicable is available in the Geographical Indications Regulations 2001.