Registrable Geographical Indication in Malaysia

1. INTRODUCTION

    1.1 A geographical indication is a geographical term used in relation to a product to indicate:-

      (a) the place of origin of a product; and

      (b) the qualities and characteristics of a product, where those qualities and characteristics are due to geographical and human characteristics of the place of origin.

    1.2 Geographical indications can be used on natural or agricultural product or any product of handicraft or industry. For examples, Sabah Tea, Sarawak pepper, Darjeeling tea.

    1.3 Geographical indication protection in Malaysia is governed by the Geographical Indications Act 2000 ("the GIA ") and Geographical Indications Regulations 2001 ("the GIA Rules ") which are throughout Malaysia.

    1.4 "Geographical indication " has been defined under the GIA as follows[1] :-

      "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 characteristics of the goods is essentially attributable to their geographical origin."[2]

    1.5 "Goods " is further defined as "any natural or agricultural product or any product of handicraft or industry"[3] .

    1.6 For a geographical indication to be granted registration in Malaysia, the conditions and requirements of the GIA and the GIA Rules have to be complied with.

    1.7 This article is aimed to discuss on what is a registrable geographical indication in Malaysia.

2. WHAT IS THE PROTECTION UNDER GIA?

    2.1 Section 3 of the GIA provides that protection shall be given to a geographical indication:-

      (a) regardless whether or not the geographical indication is registered under the GIA;

      (b) 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 goods originate in another country, territory, region or locality.

3. WHAT GEOGRAPHICAL INDICATION IS NOT PROTECTED IN MALAYSIA?

    3.1 The following shall not be protected as geographical indication[4] :-

      (a) Geographical indications that do not correspond to the meaning of "geographical Indication" as defined in the GIA;

      (b) Geographical indications which are contrary to public order or morality;

      (c) Geographical indications which are not or have ceased to be protected in their country or territory of origin; or

      (d) Geographical indications which have fallen into disuse in their country or territory of origin.

4. WHO CAN APPLY FOR REGISTRATION?

    4.1 The following may be the applicants to apply for registration of a geographical indication[5] :-

      (a) a person who is carrying on an activity as a producer in the geographical area specified in the application with respect to the good specified in the application, and includes a group or groups of such person;

      (b) a competent authority; or

      (c) a trade organization or association.

5. CONCLUSION

    5.1 When the application for registration of a geographical indication complies with the requirements in the GIA and the GIA Rules 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.


    5.2 A certificate of registration issued shall be prima facie evidence of the facts stated in the certificate and of the validity of the registration [6] .

    5.3 The duration of a geographical indication shall be 10 years from the filing date of the application[7] .

    5.4 The registration of the geographical indication can be renewed for a period which shall not exceed 10 years at each renewal [8] .


[1] Section 2 of the Geographical Indications Act 2000
[2] Section 2 of the Geographical Indications Act 2000
[3] Section 2 of the Geographical Indications Act 2000
[4] Section 4 of the Geographical Indications Act 2000
[5] Section 11 of the Geographical Indications Act 2000
[6] Section 20 of the Geographical Indications Act 2000
[7] Section 19 of the Geographical Indications Act 2000
[8] Section 19A of the Geographical Indications Act 2000

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