A geographical indication is defined as an indication which identifies any goods as originating in a country or territory, or a region or locality in that country or territory, where the quality, reputation or other characteristic of the goods is essentially attributable to their geographical origin. Geographical indications may be used on any natural or agricultural product, or any product of handicraft or industry. The protection of geographical indications in Malaysia is governed by the Geographical Indications Act 2000 and the Geographical Indications Regulations 2001 which came into force on 15 August 2001.
Qualification for protection
A geographical indication (GI) that meets the above definition qualifies for protection provided:
- it is not contrary to public order or morality;
- it has not ceased to be protected in the country or territory of origin; and
- it has not fallen into disuse in the country or territory of origin.
Protection and the right to take legal action for unlawful use are available whether or not the GI is registered under the Act. A GI that is registered, however, carries a presumption that it meets the legal definition of a GI and the certificate of registration is prima facie evidence of the validity of the registration.
Application for registration
The following persons/legal entities are entitled to apply for registration of a geographical indication:
- a person carrying on activity as a producer in the geographical area specified in the application with respect to the goods specified in the application, and this includes a group or groups of such persons;
- a competent authority; and
- a trade organization or association.
Where the applicant's ordinary residence or principal place of business is outside Malaysia, he shall appoint a Malaysian-based agent. An application for registration shall be filed with the Intellectual Property Corporation of Malaysia (MyIPO). The application must include:-
- an identification of the applicant and the capacity in which the applicant seeks registration;
- the geographical indication;
- the geographical area to which the GI applies;
- the goods for which the GI applies;
- the quality, reputation or other characteristic(s) of the goods; and
- a Statutory Declaration by the applicant setting out the particulars relied on.
Upon examination and being satisfied the GI qualifies for registration, the Registrar shall cause the application to be advertised, for which an official fee is payable. Within two months of the date of advertisement, any interested person may oppose the Registration. The Registrar shall then decide the opposition, and either refuse or register the GI. In the case of registration, a certificate is issued. A registered GI is given 10 years of protection from its date of filing and is renewable for every 10 years.
Right of use
For a registered GI, only producers carrying on their activity in the geographical area specified in the Register shall have the right to use the GI in the course of trade. The right of use shall be in respect of the products specified in the Register and in accordance with the quality, reputation and characteristic(s) specified in the Register.
Cancellation and rectification
The Registrar has the power to cancel or rectify the registration of a GI on the application of an interested person.
Right to take action for unlawful use
Any interested person may institute proceedings in the High Court to prevent unlawful use of a GI. This includes:-
- 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; and
- any use in the course of trade which constitutes an act of unfair competition as defined in the Act.
The Court may grant an injunction to prevent unlawful use of a GI, and award damages and any other legal remedy or relief as it deems fit.