Geographical Indications Act 2000

Original Language Title: Geographical Indications Act 2000

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WM laws of MALAYSIA Act 602 REPRINTING GEOGRAPHICAL INDICATION ACT 2000 Contains all amendments to 1 January 2006 PUBLISHED by the COMMISSIONER of law revision, UNDER the AUTHORITY of law REVISION ACT 1968 in COLLABORATION with PERCETAKAN NASIONAL MALAYSIA BHD 2006 2 laws of Malaysia ACT 602 GEOGRAPHICAL INDICATION ACT 2000 the date of Royal Assent.................. 30 May 2000 the date of publication in the Gazette............ 15 June 2000 geographical indications 3 laws of MALAYSIA Act 602 GEOGRAPHICAL INDICATION ACT 2000 ARRANGEMENT of SECTIONS part I preliminary section 1. Short title and commencement 2. Interpretation Part II PROTECTION Of GEOGRAPHICAL INDICATION 3. Protection of geographical indications 4. Waiving of protection 5. Commencement of proceedings to obtain an injunction and damages 6. Failure to take action 7. The geographical indication for wines homonim PART III ADMINISTRATION 8. The Registrar, Deputy Registrar and Assistant Registrar 9. Office of the geographical indication 10. The register of geographical indications of 4 laws of Malaysia ACT 602 PART IV REGISTRATION of GEOGRAPHICAL INDICATIONS Section 11. People who can apply for the registration of 11A. Agent 12. Application for registration 13. Application for registration shall be advertised 14. Opposition against the application for registration 15. The answer from the applicant 16. Filing of evidence dokumentar as support 17. Failure to file evidence dokumentar 18. Appeal to the Court 19. The registration of the geographical indication 19A. Renewal of registration 19B. Restoration of geographical indication that is removed from the register of 20. Presumption if registered geographical indications 21. Usage rights part V powers OTHER REGISTRAR 22. Cancellation and rectification of registration 23. Error correction 24. Extension of time 25. The power to award costs 26. Guarantee the cost of PART VI SPECIAL PROVISIONS 27. Application of point 28. Saving previous consumption 29. Savings due to the use of his own name PART VII MISCELLANEOUS 30. Appeal procedure 31. The Court's decision is final 32. Regulations SCHEDULE geographical indications 5 laws of MALAYSIA Act 602 GEOGRAPHICAL INDICATION ACT 2000 an act to provide for the protection of geographical indications and for matters connected therewith.
[August 15th, 2001, P.U. (B) 313/2001]
Enacted by the Parliament of Malaysia as follows: part I preliminary short title and commencement 1. (1) this Act may be cited as the geographical indications Act 2000.
(2) this Act shall come into force on such date as the Minister may, by notification in the Gazette.
Interpretation 2. In this Act, unless the context otherwise requires — "goods" means any natural or agricultural product or any product of handicraft or industry;
"Register" means the register of geographical indications kept under this Act;
"agent" means a geographical indication registered in accordance with this Act and the regulations made thereunder;
"Paris Convention" means the Paris Convention for the protection of industrial property dated 20 March 1883, as revised or amended from time to time;
"Court" means the High Court;
"Minister" means the Minister for the time being charged with the responsibility for intellectual property;
6 laws of Malaysia ACT 602 "interested persons" means any persons specified in section 11;
"Registrar" means the Registrar of geographical indication specified in subsection 8 (1);
"producer" means — (a) any producer of agricultural produce;
(b) any other person using natural products;
(c) any manufacturer of handicraft products or industry; or (d) any merchant that transacts product referred to in paragraph (a), (b) or (c);
"Assistant Registrar" means a person appointed or deemed to have been appointed to be the Assistant Registrar under subsection 8 (2) or (3);
"Corporation" means the Malaysian intellectual property Corporation established under the laws of Malaysia Act 2002 [Act 617];
"geographical indication" means an indication that identifies any goods as originating from a particular country or territory, or a region or a place in the country or territory if a quality, reputation or other characteristics of a particular item that is basically can be attributed to its geographical origin;
"geographical indications that can be covered" means a geographical indication that is not included in any category of geographical indications set out in section 4;
"competent authority" means any government body or statutory bodies which carry out functions which belonged to, on behalf of, or approved by, the Government.
"due date" has the same meaning as given to the expression in the intellectual property Corporation of Malaysia Act 2002;
"Deputy Registrar" means the person who dilatik or deemed to have been appointed to be the Deputy Registrar under subsection 8 (2) or (3); and "registered proprietor" in respect of a geographical indication, means the person for the time stated in the register as the owner of the geographical indication.
Geographical indication 7 PART II PROTECTION of GEOGRAPHICAL INDICATION protection of geographical indication 3. Protection under this Act shall be given to a geographical indication — (a) regardless of whether or not a geographical indication is registered under this Act; and (b) against a geographical indication which, although literally to be true about the country, territory, region or place them the goods originate, present a false to the public that the goods originate from a country, region, area or elsewhere.
Waiving of protection 4. Notwithstanding section 3, the following are not protected as geographical indications: (a) geographical indications that are not the same as the meaning of "geographical indications" as defined in section 2;
(b) geographical indications contrary to public order or morality;
(c) geographical indications that are no longer protected or has stalled covered by its original country or territory; or (d) geographical indications that are not used in the country or territory originally.
Commencement of proceedings to obtain an injunction and damages 5. (1) any person interested can start proceedings in the Court to prevent, in respect of geographical indications — (a) the use in the course of trade any way of name or delivery of any article which indicates or that give meaning, in such manner as to mislead the public as to the geographical origin of the goods, that the goods in question originated from the geographical area other than the true place of origin of the goods;
8 laws of Malaysia ACT 602 (b) any use in the course of trade which becomes an action not fair competition within the meaning of Article 10bis of the Paris Convention as set out in the schedule;
(c) any use in the course of trade a geographical indication which, although literally to be true about the country, territory, region or place them the goods originate, present a false to the public that the goods originate from a country, region, area or elsewhere; or (d) any use in the course of trade of a geographical indication identifying wines for wines not originating from the place indicated by the geographical indication in question or of a geographical indication identifying spirits for spirits not originating from the place indicated by the geographical indication in question, even if the true origin of the wine or spirit is indicated or the geographical indication is used in translation or accompanied by a form of expressions such as "kind" , "like", "style" or "artificial".
(2) the Court may grant an injunction to prevent any unauthorized use of the geographical indication and award any damages and any other relief or remedy in law as he may deem fit.
Failure to take action 6. (1) no action under section 5 may be brought against a person because of the use of a trademark which contains or consists of a geographical indication after the expiry of five years — (a) from the date of such use by such person or pendulunya in title has been widely known in Malaysia; or (b) from the date of registration of the trade mark by that person under the trade marks Act 1976 [Act 175], whichever is earlier.
(2) subsection (1) shall not apply if the trade mark is used or is registered with bad faith.
Geographical indications Geographical Indications 9 homonim for wines 7. (1) in the case of geographical indications for wines, protection of homonim shall be given to each indicator.
(2) the Registrar, in the case of simultaneous usage bona fide geographical indications in the homonim, shall determine the circumstances of the practice under which the geographical indication in question homonim can be distinguished from each other, taking into account the need to ensure fair treatment given to producers and that people should not be confused.
PART III ADMINISTRATION Registrar, Deputy Registrar and Assistant Registrar 8. (1) the Director General of the Corporation shall be a geographical indication.

(2) the Corporation may appoint, on such terms and conditions as it may specify, from amongst the people in the Corporation, such number of Deputy Registrars, assistant registrars of geographical indications geographical indications and other officers necessary for the proper administration of this Act, and may revoke the appointment of any person appointed or deemed to have been appointed as such under subsection (3).
(3) the person who holds the position of Deputy Registrars, assistant registrars and other officers under this Act before a specified date which has been given a choice by the Malaysian Government to serve as employees of the Corporation and have chosen such shall on the appointed date be deemed to have been appointed as Deputy Registrar, Assistant Registrar and other officers under subsection (2).
(4) subject to the direction and control of the General Registrar and to any conditions or restrictions imposed by the Registrar, a Deputy Registrar or Assistant Registrar of a person may exercise any of the functions of the Registrar under this Act, and nothing prescribed or authorized or required 10 laws of Malaysia ACT 602 by this Act so made or signed by the Registrar to do or signed by any Deputy Registrar or Assistant Registrar and acts or signature of person Deputy Registrar or Assistant Registrar of a person shall be the same legal effect as if were made or signed by the Registrar.
(5) the Registrar shall have a seal of a design approved by the Corporation and their unmistakable said seal shall be judicially noticed and admitted in evidence.
Office of the geographical indication 9. (1) a geographical indication Office Center and any number of branch offices of the Office of the geographical indication Center required for the purposes of this Act shall be established.
(2) any application or other document required or permitted to be filed at the Office of geographical indication Center can be filed in any branch office of the Office of geographical indication and application or other document shall be deemed to have been filed at the Office of geographical indications Center.
The Register Of Geographical Indications 10. (1) the Registrar shall keep and maintain a register called the register of geographical indications in which shall be recorded all of the particulars as the Registrar considers appropriate.
(2) the register shall be kept in such form and the materials set.
(3) the register shall be open for inspection by the public at such time and upon such terms as may be prescribed.
(4) a copy or extract certified true for any entry in the register sealed with the seal of the Registrar shall be given to any person requiring a copy or extract of the prescribed fee paid.
11 PART IV geographical indications GEOGRAPHICAL INDICATIONS REGISTRATION people who can apply to obtain registration 11. (1) the following person shall be entitled to file an application to register a geographical indication: (a) a person who carries on an activity as a producer in the geographical area specified in the application is in respect of goods described in the application, and includes a group or groups of such persons;
(b) a competent authority; or (c) an organization or trade association.
(1A) an applicant may file an application for the registration of a geographical indication on its own or through an agent.
(2) Notwithstanding subsection (1A), if the applicant is not resident or not doing business in Malaysia, he shall appoint an agent to act on his behalf.
11A agent. (1) any person, firm or corporation may apply to act as an agent for the purposes of this Act if — (a) the person is domiciled or resident in Malaysia; or (b) a firm or corporation that is incorporated under the laws of Malaysia; and (c) the person, firm or corporation that carries on business or practice principally in Malaysia.
(2) a person's entitlement and how registration agent shall be as prescribed.
12 laws of Malaysia ACT 602 application for registration 12. (1) an application for registration of a geographical indication shall be filed with the Registrar in the prescribed manner and shall state — (a) the name, address and nationality a natural person or legal entity who filed the application, and on the nature of what the applicant submitted an application for the registration;
(b) the geographical indication for which registration is requested;
(c) the geographical area to which the geographical indication applies;
(d) goods for which the geographical indication applies;
(e) the quality, reputation or other characteristics of goods to which the geographical indication is used; and (f) such other particulars as may be prescribed.
(2) an application under subsection (1) shall be accompanied by the prescribed fee.
Application for registration shall be advertised 13. If the Registrar is satisfied, after review of the application for the registration, that the application has complied with the requirements of sections 11 and 12 and that the geographical indication to be registered is not contrary to public order or morality, the Registrar shall cause the application is advertised in the prescribed manner.
Opposition against the application for registration 14. (1) any person interested may, within two months from the date of advertising an application for registration, give notice to the Registrar and geographical indication 13 the applicant on his intention to opposes the application on the ground that geographical indication to be registered by the applicant — (a) is not included within the meaning of the definition of "geographical indications" under this Act;
(b) is contrary to public order or morality;
(c) no longer protected or has stalled covered the country of origin; or (d) do not apply in the country of origin.
(2) the notice shall be given in writing in the prescribed manner and shall contain a statement of reasons for the opposition.
The answer from the applicant 15. (1) within two months after receiving the notice of opposition the applicant shall send a reply to the Registrar and the opposition, in the prescribed manner, of the reason for its application for obtaining registration.
(2) if the applicant fails to reply to the opposition within the period specified in subsection (1) or, if that period has been extended by the Registrar, in such additional period, the applicant shall be deemed to be no longer want to proceed with its application for obtaining registration.
Filing of evidence dokumentar as support 16. (1) where the applicant is submitting a reply under subsection 15 (1), the opposition and the applicant shall file a description dokumentar supporting opposition or application for registration, as the case may be, with the Registrar.
(2) any evidence dokumentar to be filed by the opponent or applicant under subsection (1) shall be filed within the prescribed period and in the prescribed manner.
14 laws of Malaysia ACT 602 (3) if the applicant filed evidence to support its application for dokumentar get registration, opposition may be given the opportunity, within the time prescribed, to produce evidence the answer shall be submitted in the prescribed manner to the Registrar and the applicant.
(4) after considering the evidence filed by the opposition dokumentar and applicants, and after giving an opportunity for both parties to make the argument, the Registrar shall decide whether — (a) to refuse to register the geographical indication;
(b) for the registration of the geographical indication; or (c) to register the geographical indication subject to such conditions, amendments, modifications or limitations he may deem fit.
(5) the Registrar shall provide the reasons for its decision in writing within two months after making a decision under subsection (4).
(6) any person aggrieved by the decision of the Registrar under subsection (4) may appeal to the Court.
Failure to file evidence dokumentar 17. (1) if the applicant failed to file evidence dokumentar as required under subsection 16 (1), the Registrar is entitled to consider an application for the registration no longer want to continue.
(2) if the opposition failed to file evidence dokumentar as required under subsection 16 (1), the Registrar shall be entitled to assume the opposition no longer want to proceed and shall register the application and issue a certificate of registration to the applicant in the prescribed form.
Geographical indications 15 Appeals to the Court 18. (1) in any appeal under subsection 16 (6), the Court may, after hearing the parties, made an order so that — (a) geographical indication is registered;
(b) geographical indication is registered subject to any modification that is not in any way affect the identity of the geographical indication that substantially; or (c) the geographical indication not registered.
(2) if the Court makes an order under paragraph (1) (a) or (b), the Registrar shall register the geographical indication as required and issue a certificate of registration to the applicant in the prescribed form.
Registration of geographical indications

19. (1) If the Registrar is satisfied that the application for the registration of a geographical indication complies with the requirements of section 14 and 15 and that the geographical indication to be registered, it is not contrary to public order or morality and — (a) no opposition has been filed under section 14; or (b) the Registrar has made a decision under paragraph 16 (4) (b) or (c) and no appeal has been filed against the decision, then the Registrar shall register the geographical indication that and issue a certificate of registration to the applicant in the prescribed form.
(2) the period of registration of a particular geographical indication shall be ten years and registration is renewable upon application made under section 19A.
Renewal Of Registration Of 19A. (1) within the prescribed time before the expiration date of registration of a geographical indication, the Registrar shall send a notice in the prescribed manner to the registered proprietor of the date of expiry of such period.
16 laws of Malaysia ACT 602 (2) an application for renewal of registration of a particular geographical indication shall be made by the registered proprietor in the prescribed manner to the Registrar within the prescribed time before the expiration date of the registration.
(3) an application under subsection (2) shall be accompanied by the prescribed fee.
(4) subject to subsection (5), upon receipt of an application under subsection (2) and the prescribed fee, the registration of the geographical indication for a period not exceeding ten years for each renewal.
(5) for the purpose of renewing the registration of a geographical indication, the Registrar may require additional particulars and may refuse to renew the registration if the applicant has not provided additional details required.
(6) if the Registrar refuses to memperbahari the registration under subsection (5) the Registrar shall notify the applicant in writing of the decision.
(7) subject to section 19B, the Registrar may issue a geographical indication from the register if the applicant does not apply for renewal of the geographical indication within the time prescribed.
Restoration of geographical indication that is removed from the register 19B. The Registrar may keying in the geographical indication that has been removed from the register under subsection 19A (7) if — (a) the applicant filed an application for restoration within twelve months from the date of registration of the geographical indication; and (b) the Registrar is satisfied that — (i) no malicious use of geographical indications in the years immediately before its release from the register; or (ii) there are no perdayaan or confusion that may arise from the use of the geographical indication that is caused by the use of previously.
Geographical indication 17 Presumption if the geographical indication registered 20. (1) a geographical indication is registered under this Act shall, in any proceeding, raise a presumption that the indication is a geographical indication within the meaning of section 2.
(2) a certificate of registration issued under this Act shall constitute prima facie evidence of the facts stated in the certificate and of the validity of the registration.
Usage rights 21. (1) in the case of a registered geographical indication, only producers carrying on their activities in the geographical area specified in the register shall have the right to use a geographical indication registered in the course of trade.
(2) the right of use shall be in respect of the products specified in the register in accordance with the quality, reputation or characteristic specified in the register.
Part V OTHER powers of REGISTRAR Cancellation and rectification of registration 22. (1) the Registrar may, upon the request of any interested persons and when prescribed fee paid — (a) cancel the registration of a geographical indication on the grounds that the geographical indication is not eligible for protection as such with regard to section 4; or (b) correct the registration of a geographical indication on the grounds that the geographical area specified in the registration does not match the geographical indication, or that the output indicators for which the geographical indication or an indication of quality, reputation or other characteristic of the product is not available or is not satisfactory.
18 laws of Malaysia ACT 602 (2) calling for the registration of geographical indications is revoked or corrected under subsection (1) shall give notice to the applicants who file an application for registration of the geographical indication or his successor in title.
(3) the Registrar shall, in the prescribed manner, tell everyone who has a right of use over the geographical indication under section 21.
(4) the person referred to in subsection (3) and any person interested may, within the period specified by the Registrar, apply to the Registrar to participate in any proceedings that may be held by the Registrar to determine whether or not the registration of the geographical indication should be cancelled or corrected.
(5) the Registrar shall provide the reasons for its decision in writing within two months after making a decision under subsection (1).
(6) any person aggrieved by the decision of the Registrar under subsection (1) may appeal to the Court.
Error correction 23. The Registrar may correct any error of translation or transcription, write error or mistake in any application or document filed at the Registrar or in any matter recorded pursuant to this Act or the regulations made under this Act.
Extension of time 24. If through this Act or any regulations made under this act upon a time prescribed in that time an act or thing to be done, the Registrar may, upon receipt of a written request to do so and if he is satisfied that the circumstances warrant, extend the time either before or after the expiry of the prescribed fee, once paid.
The power to award costs 25. (1) in all proceedings before the Registrar under this Act, the Registrar shall have power to award such costs as he may deem reasonable to any party.
Geographical indication 19 (2) costs awarded by the Registrar may be obtained, in the event of default of payment, the court having jurisdiction of that authority by the party to whom costs have been awarded as if the cost is a debt due to it.
Warranty cost 26. (1) the Registrar may require any person who gives notice of opposition under section 14, or someone who gives an answer to the notice of opposition under section 15, and does not reside or carry on business in Malaysia so as to give assurance of the costs of the proceedings before the Registrar in respect of opposition or the application.
(2) the Registrar may consider opposition or the application no longer want to continue if the warranty costs as required under subsection (1) is not paid.
(3) the guarantee costs shall be refunded or considered as part of the costs of the proceedings, as the case may be.
PART VI SPECIAL PROVISIONS the adoption of Point 27. (1) this Act shall apply to a geographical indication which can be covered that existed before the Act comes into operation as of this Act apply to a geographical indication which can be covered that exist after this Act comes into force.
(2) in respect of a geographical indication that existed before this Act comes into force, no suit or proceeding may be brought under this Act for anything done before this Act comes into force.
20 laws of Malaysia ACT 602 Saving because the use of the previous 28. (1) there is nothing in this Act shall prevent the use of continuously and similar in Malaysia of a particular geographical indication of a another country identifying wines or spirits in connection with goods or services by any of its nationals or domisiliari of Malaysia who have used that geographical indication continuously with respect to the goods or services are similar or related in Malaysia either — (a) for at least ten years prior to 15 April 1994; or (b) in good faith before April 15, 1994.
(2) where a trademark has been applied for or registered in good faith, or where rights to a trademark have been acquired through use in good faith either — (a) before the commencement of this Act; or (b) before the geographical indication is protected in the country of origin, then this Act not affect kebolehdaftaran or the validity of the registration of a trademark, or the right to use the trademark, on the basis that such a trademark is identical or similar to a geographical indication.
(3) no nothing in this Act shall be applicable in respect of a geographical indication of any country on the goods or services for which the relevant indication is identical with the term customary in common language used as a common name for such goods or services in Malaysia or in respect of a geographical indication of any other countries on the result tree vine for which the relevant indication is identical with the common name of a type of grape that exists in Malaysia from 1 January 1995. exclusion as the use of his own name

29. This Act does not affect the right of any person to use, in the course of trade, that person's name or the name of pendulunya in business, except where such name is used in such manner as to mislead the public.
Geographical indications 21 PART VII MISCELLANEOUS Procedures of appeal 30. The same procedure shall apply to an appeal to the High Court from a decision of the Court in civil matters shall apply to appeal against the decision of the Registrar under subsection 16 (6) and 22 (6).
31 court decision shall be final. In any appeal against the decision of the Registrar under subsection 16 (6) and 22 (6), the Court's decision is final and not subject to any further appeal.
Regulations regulations 32. (1) subject to the provisions of this Act, the Minister may make regulations for the purpose of carrying out the provisions of this Act.
(2) in particular and without prejudice to the generality of subsection (1), regulations made under this section may provide for all or any of the following: (a) regulating the procedure to be followed in connection with any proceeding or other matter before the Registrar or the Office of geographical indications Centre under this Act including the service of documents;
(b) prescribing the fees to be paid in connection with any proceeding or other matter or in connection with the provision of any service by the Registrar or the Office of the geographical indications of the Centre, and set a number of fees and allow different fees in certain circumstances for certain prescribed cases;
(c) prescribing the forms and other matters to be used under this Act;
22 laws of Malaysia ACT 602 (d) regulating the keeping of the register and set form and content; and set the conditions and fees for making an extract from the register;
(e) regulating the mode of evidence in any proceedings before the Registrar under this Act and gives the Registrar the power to compel the attendance of witnesses and disclosure and production of documents;
(f) do anything which are required to be done in connection with any proceeding or other matter before the Registrar or the Office of the Centre for geographical indications;
(g) prescribing time limits;
(ga) prescribing qualifications of agents and other matters in relation to the qualifications;
(gb) provide for the registration of the agent; and (h) to regulate generally matters relating to managing the registration of geographical indications which is carried out at the Office of the central geographical indications whether or not specially prescribed under this Act.
Geographical indication 23 SCHEDULE [Paragraphs 5 (1) (b)] the PROVISIONS of the PARIS CONVENTION for the PROTECTION of INDUSTRIAL PROPERTY (1967) of Article 10bis [Competitive Disadvantage] (1) countries of the Union are bound to ensure that effective protection against competitive disadvantage given to the people of the countries.
(2) any act of competition contrary to honest practices in industrial or things is an act of commercial competition is not fair.
(3) the following in particular are prohibited: 1. all types of acts that create confusion by any means whatsoever about institutions, goods, or the industrial or commercial activities, one competitor;
2. any kind of false allegations in the course of trade which defame institutions, goods, industrial or commercial activities, one competitor;
3. indications or allegations that its use in the course of trade can be confusing people about the type, manufacturing process, characteristics, suitability of purpose, or the quantity, of the goods.
24 laws of Malaysia ACT 602 laws of MALAYSIA Act 602 GEOGRAPHICAL INDICATION ACT 2000 LIST AMENDMENT law short title force amend from geographical indication Act A1141 Act 03-03-2003 (Amendment) Order 2002 geographical indication 25 laws of MALAYSIA Act 602 GEOGRAPHICAL INDICATION ACT 2000 LIST SECTION AMENDED Section Power amend with effect from 2 A1141 Act 03-03-2003 8 A1141 Act 03-03-2003 11 A1141 Act 03-03-2003 11A A1141 Act 03-03-2003 19 A1141 Act 03-03-2003 19A-19B A1141 Act 03-03-2003 32 A1141 Act 03-03-2003