Malaysia: The Geographical Indications Act 2022 ("GIA 2022")

Joyce Tan delves into the key changes to the law governing geographical indications in Malaysia.

Distinct from trademarks which are meant to identify a product's manufacturer or the provider of a service, a geographical indication ("GI") is used on products which have specific geographical origin and possess certain qualities, reputation or other characteristics that are attributable to that origin.

The GIA 2022 was passed by the House of Representatives on 15 December 2021 and subsequently by the Senate on 22 December 2021 to replace the existing Geographical Indications Act 2000 ("GIA 2000").

SOME NOTE-WORTHY HIGHLIGHTS OF THE GIA 2022 ARE DISCUSSED BELOW

Grounds for Refusal of Registration

The GIA 2022 has included additional grounds for refusal of registration by the Registrar. Among the notable additions include cases where:
(i) the goods do not originate from the country, region or locality indicated in the application for registration;
(ii) the GI for goods is of such a nature that may mislead the public as to the true place of their origin; and
(iii) the use of the GI would give rise to a likelihood of confusion on the part of the public by reason of an earlier conflicting GI.

Additionally, the GI will also be refused registration if there exists a likelihood of confusion on the part of the public by reason of the GI being identical with or similar to a trademark provided that:
(i) the trademark is a registered trademark under the Trademarks Act 2019 which was applied for in good faith before the application date of the GI in question;
(ii) the trademark has been used in good faith in Malaysia in the course of trade before the application date of the GI in question; or
(iii) the trademark is a well-known trademark in Malaysia before the application date of the GI in question and the registration of the GI is liable to mislead consumers as to the true identity of the goods identified by that GI.

Clarification and Definition relating to Variant

The GIA 2022 clarifies that the grounds for refusal of registration apply in respect of a "variant", which is defined in the GIA 2022 as being any variant of a GI constituting the GI, and includes any translation, transliteration or other variation of the GI.

Registration of Homonymous GI

The GIA 2022 empowers the Registrar to register any homonymous GI with practical conditions differentiating the homonymous GI from the earlier GI. The GIA 2022 defines a "homonymous GI" as a GI that, in part or in whole, has the same spelling as, or sounds the same as, a GI for any goods having a different geographical origin. Unlike the GIA 2000 whereby homonymous GIs are only applicable or allowed for wines, the GIA 2022 provides that the Registrar may register any GI that is a homonymous GI in relation to an earlier GI.

Examination Procedure for Registration Application

Moving forward, the examination procedure to examine whether the GI application fulfils the requirements for registration under the GIA 2022 includes carrying out searches for any earlier conflicting GI or trademark to such extent as the Registrar considers necessary.

Cancellation of Registered GI by the Court

Unlike the previous position in the GIA 2000 whereby any interested person can make a request to the Registrar to cancel the registration of a GI, the GIA 2022 now provides that a registered GI can only be cancelled by the court. Such cancellation actions would thus have to be instituted at the High Court instead of MyIPO.

Criminal Enforcement of GI Rights

The GIA 2022 introduces a new Part IX entitled "Offence" which criminalises the false application of a registered GI to goods and acts of importing or selling goods with falsely applied GI. A person will be considered as falsely applying a registered GI if he applies the GI or any indication directly or indirectly referring to the GI to the goods without the consent of the registered proprietor and the goods are not genuine of the registered proprietor or not in accordance with the quality, reputation or characteristic as specified in the Register.

A GI is deemed to have been applied to the goods in the following circumstances:
(a) if it is applied directly onto the goods themselves;
(b) if it is used in (i) any sign or advertisement, or (ii) any invoice, catalogue, business letter, business paper, price list or other commercial documents, including any such document in any medium; and the goods are delivered to a person pursuant to a request or order made by reference to the GI as so used; or
(c) if it is applied to any covering, label, reel or thing in or with which the goods are sold, offered or exposed for sale or are in possession for the purpose of trade or manufacture and it is used in a manner that is likely to lead persons to believe that it refers to, describes or designates the goods.

Any person who falsely applies a registered GI commits an offence and shall, on conviction, be liable:
(a) if the person is a body corporate, to a fine not exceeding RM15,000 (approx. USD3,750) for each of the goods bearing the falsely applied registered GI, and for a second and subsequent offence, to a fine not exceeding RM30,000 (approx. USD7,500) for each of the goods bearing the falsely applied registered GI; or
(b) if the person is not a body corporate, to a fine not exceeding RM10,000 (approx. USD2,500) for each of the goods bearing the falsely applied GI or to imprisonment for a term not exceeding 3 years or to both, and for a second or subsequent offence, to a fine not exceeding RM20,000 (approx. USD5,000) for each of the goods bearing the falsely applied registered GI, or to imprisonment for a term not exceeding 5 years or to both.

The GIA 2022 also adds a new Part X which empowers the enforcement officers to investigate, arrest suspects, and search and seize goods which are suspected to be the subject matter of an offence under the GIA 2022.

CONCLUSION

The GIA 2022 aims to provide clearer procedures as well as to introduce new requirements and provisions in relation to the protection and registration of GIs in Malaysia. It is hoped that the new changes would encourage more proprietors to seek protection of their GIs through registration to preserve their rights and interests.

Originally Published with Wong Jin Nee & Teo on March 2022, The Geographical Indications Act 2022 ("GIA 2022")

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.