GEOGRAPHICAL INDICATIONS ACT 2000

Geographical Indications LAWS OF MALAYSIA REPRINT Act 602 GEOGRAPHICAL INDICATIONS ACT 2000 Incorporating all amendments up to 1 January 2006 PUBLISHED BY THE COMMISSIONER OF LAW REVISION, MALAYSIA UNDER THE AUTHORITY OF THE REVISION OF LAWS ACT 1968 IN COLLABORATION WITH PERCETAKAN NASIONAL MALAYSIA BHD 2006 1 2 GEOGRAPHICAL INDICATIONS ACT 2000 Date of Royal Assent ... ... ... ... … 30 May 2000 Date of publication in the Gazette … … 15 June 2000 PREVIOUS REPRINT First Reprint ... ... ... ... ... 2001 3 LAWS OF MALAYSIA Act 602 GEOGRAPHICAL INDICATIONS ACT 2000 ARRANGEMENT OF SECTIONS PART I PRELIMINARY Section 1. Short title and commencement 2. Interpretation PART II PROTECTION OF GEOGRAPHICAL INDICATIONS 3. Protection of geographical indications 4. Exclusion from protection 5. Institution of proceedings for injunction and damages 6. Failure to take action 7. Homonymous geographical indications for wines PART III ADMINISTRATION 8. Registrar, Deputy Registrars and Assistant Registrars 9. Geographical indications offices 10. Register of Geographical Indications Laws of Malaysia 4 ACT 602 PART IV REGISTRATION OF GEOGRAPHICAL INDICATIONS Section 11. Persons who may apply for registration 11A. Agent 12. Application for registration 13. Application for registration to be advertised 14. Opposition to application for registration 15. Reply by applicant 16. Filing of documentary evidence in support 17. Failure to file documentary evidence 18. Appeal to Court 19. Registration of geographical indication 19A. Renewal of registration 19B. Restoration of geographical indication removed from the Register 20. Presumption where geographical indication is registered 21. Right of use PART V OTHER POWERS OF THE REGISTRAR 22. Cancellation and rectification of registration 23. Correction of errors 24. Extension of time 25. Power to award costs 26. Security for costs PART VI SPECIAL PROVISIONS 27. Extent of application 28. Exception for prior use 29. Exception for use of personal name Geographical Indications PART VII MISCELLANEOUS Section 30. Procedure of appeal 31. Decision of Court to be final 32. Regulations SCHEDULE 5 6 Laws of Malaysia ACT 602 Geographical Indications 7 LAWS OF MALAYSIA Act 602 GEOGRAPHICAL INDICATIONS ACT 2000 An Act to provide for the protection of geographical indications and for matters connected therewith. [15 August 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 operation on a date to be appointed by the Minister by notification in the Gazette. Interpretation 2. In this Act, unless the context otherwise requires— “agent” means a Geographical Indication agent registered in accordance with this Act and the regulations made under it; “appointed date” has the same meaning as is assigned to that expression in the Intellectual Property Corporation of Malaysia Act 2002 [Act 617]; “Assistant Registrar” means the person appointed or deemed to have been appointed to be an Assistant Registrar under subsection 8(2) or (3); Laws of Malaysia 8 ACT 602 “competent authority” means any government or statutory body carrying out the functions of, on behalf of, or sanctioned by, the Government; “Corporation” means the Intellectual Property Corporation of Malaysia established under the Intellectual Property Corporation of Malaysia Act 2002; “Court” means the High Court; “Deputy Registrar” means the person appointed or deemed to have been appointed to be a Deputy Registrar under subsection 8(2) or (3); “geographical indication” means 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; “goods” means any natural or agricultural product or any product of handicraft or industry; “interested person” means any of the persons specified in section 11; “Minister” means the Minister for the time being charged with the responsibility for intellectual property; “Paris Convention” means the Paris Convention for the Protection of Industrial Property of 20 March 1883, as revised or amended from time to time; “producer” means— (a) any producer of agricultural products; (b) any person exploiting natural products; (c) any manufacturer of products of handicraft or industry; or (d) any trader dealing in any of the products mentioned in paragraphs (a), (b) or (c); Geographical Indications 9 “protectable geographical indication” means a geographical indication which does not fall within any of the categories of geographical indications specified in section 4; “Register” means the Register of Geographical Indications kept under this Act; “registered proprietor”, in relation to a geographical indication, means the person for the time being entered in the Register as proprietor of the geographical indication; “Registrar” means the Registrar of Geographical Indications as designated in subsection 8(1). PART II PROTECTION OF GEOGRAPHICAL INDICATIONS Protection of geographical indications 3. Protection under this Act shall be given to a geographical indication— (a) regardless whether or not the geographical indication is registered under this Act; and (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 the goods originate in another country, territory, region or locality. Exclusion from protection 4. Notwithstanding section 3, the following shall not be protected as geographical indications: (a) geographical indications that do not correspond to the meaning of “geographical indication” as defined in section 2; 10 Laws of Malaysia ACT 602 (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. Institution of proceedings for injunction and damages 5. (1) Any interested person may institute proceedings in the Court to prevent, in respect of geographical indications— (a) 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; (b) any use in the course of trade which constitutes an act of unfair 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 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 (d) 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 spirits 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”. (2) 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. Geographical Indications 11 Failure to take action 6. (1) No action under section 5 shall be brought against a person for the use of a trade mark which contains or consists of a geographical indication after the expiry of five years— (a) from the date such use by that person or his predecessor in title has become generally 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 where the trade mark was used or registered in bad faith. Homonymous geographical indications for wines 7. (1) In the case of homonymous geographical indications for wines, protection shall be accorded to each indication. (2) The Registrar, in cases of bona fide concurrent use of homonymous geographical indications, shall determine the practical conditions under which the homonymous geographical indications in question will be differentiated from each other, taking into account the need to ensure equitable treatment of the producers concerned and that the public are not misled. PART III ADMINISTRATION Registrar, Deputy Registrars and Assistant Registrars 8. (1) The Director General of the Corporation shall be the Registrar of Geographical Indications. (2) The Corporation may appoint, on such terms and conditions as it may determine, from amongst persons in the employment of the Corporation, such number of Deputy Registrars of Geographical Indications, Assistant Registrars of Geographical Indications and other officers as may be necessary for the proper administration 12 Laws of Malaysia ACT 602 of this Act, and may revoke the appointment of any person so appointed or deemed to have been so appointed under subsection (3). (3) The persons holding office as Deputy Registrars, Assistant Registrars and other officers under this Act before the appointed date who were given an option by the Government of Malaysia to serve as employees of the Corporation and have so opted shall on the appointed date be deemed to have been appointed as Deputy Registrars, Assistant Registrars and such other officers under subsection (2). (4) Subject to the general direction and control of the Registrar and to such conditions or restrictions as may be imposed by the Registrar, a Deputy Registrar or an Assistant Registrar may exercise any function of the Registrar under this Act, and anything by this Act appointed or authorized or required to be done or signed by the Registrar may be done or signed by any Deputy Registrar or Assistant Registrar and the act or signature of a Deputy Registrar or an Assistant Registrar shall be as valid and effectual as if done or signed by the Registrar. (5) The Registrar shall have a seal of such device as may be approved by the Corporation and the impressions of such seal shall be judicially noticed and admitted in evidence. Geographical indications offices 9. (1) A Central Geographical Indications Office and such number of branch offices of the Central Geographical Indications Office as may be necessary for the purposes of this Act shall be established. (2) Any application or other document required or permitted to be filed at the Central Geographical Indications Office may be filed at any branch office of the Central Geographical Indications Office and such application or other document shall be deemed to have been filed at the Central Geographical Indications Office. Register of Geographical Indications 10. (1) The Registrar shall keep and maintain a register called the Register of Geographical Indications in which all particulars as the Registrar deems appropriate shall be recorded. Geographical Indications 13 (2) The Register shall be kept in such form and on such material as may be prescribed. (3) The Register shall be open to the inspection of the public at such times and in accordance with such conditions as may be prescribed. (4) A certified true copy or extract of any entry in the Register sealed with the seal of the Registrar