GEOGRAPHICAL INDICATIONS ACT 2022

Geographical Indications LAWS OF MALAYSIA Act 836 GEOGRAPHICAL INDICATIONS ACT 2022 1 2 Laws of Malaysia Act 836 Date of Royal Assent ... ... 16 March 2022 Date of publication in the Gazette ... ... 18 March 2022 Publisher’s Copyright C PERCETAKAN NASIONAL MALAYSIA BERHAD All rights reserved. No part of this publication may be reproduced, stored in a retrieval system or transmitted in any form or by any means electronic, mechanical, photocopying, recording and/or otherwise without the prior permission of Percetakan Nasional Malaysia Berhad (Appointed Printer to the Government of Malaysia). Geographical Indications 3 LAWS OF MALAYSIA Act 836 GEOGRAPHICAL INDICATIONS ACT 2022 ARRANGEMENT OF SECTIONS Part I PRELIMINARY Section 1. Short title, commencement and application 2. Interpretation Part II ADMINISTRATION 3. Registrar, Deputy Registrar and Assistant Registrar 4. Protection of Registrar, Deputy Registrar, Assistant Registrar and other officers 5. Geographical Indications Office and other branch offices Part III REGISTER OF GEOGRAPHICAL INDICATIONS AND RECORD OF REGISTRAR 6. Register of Geographical Indications and record of Registrar 7. Inspection of Register Part IV REGISTRATION OF GEOGRAPHICAL INDICATIONS Chapter 1 Application for registration of geographical indications 8. Application for registration of geographical indication 9. Registration only in respect of goods falling within categories of goods 4 Laws of Malaysia Act 836 Chapter 2 Grounds for refusal of registration Section 10. Grounds for refusal of registration of geographical indication 11. Registration of homonymous geographical indication Chapter 3 Examination 12. Examination of application for registration of geographical indication 13. Acceptance of application for registration of geographical indication 14. Publication of acceptance of application for registration of geographical indication Chapter 4 Amendment or withdrawal of application for registration of geographical indication 15. Amendment or withdrawal of application for registration of geographical indication Chapter 5 Opposition 16. Opposition proceedings Chapter 6 Registration 17. Registration of geographical indication Part V PERIOD AND RENEWAL OF REGISTRATION OF GEOGRAPHICAL INDICATION 18. Period of registration of geographical indication 19. Renewal of registration of geographical indication Geographical Indications 5 Part VI CORRECTION AND CANCELLATION Section 20. Interpretation 21. Correction of Register and record of Registrar 22. Voluntary cancellation of registered geographical indication 23. Cancellation of registered geographical indication by Court 24. Cancellation of registration of any variant Part VII EFFECTS OF REGISTERED GEOGRAPHICAL INDICATION 25. Rights conferred under registered geographical indication 26. Transfer of registration of registered geographical indication 27. Registration as prima facie evidence 28. Right of use of producer Part VIII GEOGRAPHICAL INDICATION AGENTS 29. Recognition of registered geographical indication agent 30. Register of Geographical Indications Agents 31. Registration of geographical indication agent 32. Cancellation of registration of geographical indication agent, etc. 33. Privileged communications with registered geographical indication agent Part IX OFFENCE 34. Falsely applying registered geographical indication to goods 35. Importing or selling, etc., goods with falsely applied geographical indication 36. Submission of false information to Geographical Indications Office or false entry in Register 37. Falsely representing geographical indication as registered 38. Offence relating to disobedience to summons or refusal to give evidence 6 Laws of Malaysia Act 836 Part X INVESTIGATION AND ENFORCEMENT Chapter 1 Investigations and complaints Section 39. Interpretation 40. Powers of Controller, Deputy Controller and Assistant Controller 41. Power of investigation 42. Complaints to Assistant Controller Chapter 2 Information gathering powers 43. Power of Assistant Controller to require provision of information 44. Assistant Controller may retain document 45. Confidentiality 46. Privileged communication 47. Giving false or misleading information, evidence or document 48. Destruction, concealment, mutilation and alteration of records Chapter 3 Powers of arrest, search, seizure, etc. 49. Power of arrest 50. Power to enter premises, inspect and seize goods, etc. 51. Magistrate may issue search warrant 52. Search may be made without warrant 53. Access to recorded information or computerized data, etc. 54. Tipping-off 55. Search warrant valid notwithstanding defects 56. List of things seized 57. Forfeiture of seized goods, etc. 58. Release of seized goods, etc. Geographical Indications 7 Section 59. No cost or damages arising from seizure to be recoverable 60. Obstruction 61. Evidence of agent provocateur is admissible 62. Taking of samples 63. Jurisdiction to try offences 64. Institution of prosecution 65. Compounding of offences 66. Principal liable for acts of servant or agent 67. Offences committed by body corporate 68. Protection of Controller, Deputy Controller and Assistant Controller and other persons Part XI LEGAL PROCEEDINGS IN COURT, COSTS AND EVIDENCE 69. Service of application, order or judgment on Registrar 70. Registrar not to be made party to certain proceedings 71. Appearance of Registrar in proceedings before Court 72. Costs of proceedings before court 73. Certificate of validity 74. Evidentiary value of copies certified by Registrar 75. Sealed copies of document to be evidence 76. Electronic form, etc., certified by Registrar admissible in evidence Part XII PROTECTION FOR GEOGRAPHICAL INDICATION 77. Institution of proceedings against certain uses of geographical indication 78. Homonymous geographical indication 8 Laws of Malaysia Act 836 Part XIII EXCEPTIONS Chapter 1 Exceptions in respect of geographical indication Section 79. Exception for certain uses of geographical indication 80. Exception for failure to take action 81. Exception for prior use 82. Exception for use of personal name Chapter 2 Exceptions in respect of registered geographical indication 83. Exception for certain uses of registered geographical indication 84. Exception for prior uses of registered geographical indication and trademark Part XIV MISCELLANEOUS AND GENERAL 85. Intellectual Property Official Journal 86. Electronic filing 87. Issuing document electronically 88. Address for service 89. Power of Registrar to allow amendment of document 90. Power of Registrar to allow extension of time 91. Reinstatement 92. Mode of giving evidence 93. Exercise of discretionary power 94. Costs awarded by Registrar 95. Guidelines or practice directions by Registrar 96. Appeal from decision of Registrar 97. Rights under other laws unaffected 98. Power to make regulations 99. Power to amend Schedule Geographical Indications Part XV REPEAL, SAVING AND TRANSITIONAL Section 100. Repeal, saving and transitional 101. Guidelines, etc., on transitional matters Schedule 9 10 Laws of Malaysia Act 836 11 Geographical Indications LAWS OF MALAYSIA Act 836 GEOGRAPHICAL INDICATIONS ACT 2022 An Act to provide for the protection and registration of geographical indications in relation to goods, and for the implementation of the relevant treaties and related matters. [ ] ENACTED by the Parliament of Malaysia as follows: Part I PRELIMINARY Short title, commencement and application 1. (1) This Act may be cited as the Geographical Indications Act 2022. (2) This Act comes into operation on a date to be appointed by the Minister by notification in the Gazette and the Minister may appoint different dates for the coming into operation of different parts or provisions of this Act. (3) This Act shall apply to any interested person of geographical indications whether or not registered under this Act unless expressly provided otherwise. 12 Laws of Malaysia Act 836 Interpretation 2. In this Act, unless the context otherwise requires— “this Act” includes any subsidiary legislation made under this Act; “repealed Act” means the Geographical Indications Act 2000 [Act 602]; “goods” means any goods as determined by the Registrar; “trademark” has the same meaning as assigned to it in the Trademarks Act 2019 [Act 815] or in any previous written law relating to trademark; “registered trademark” means a trademark registered under the Trademarks Act 2019 or any previous written law relating to trademark; “well-known trademark” has the same meaning as assigned to it in the Trademarks Act 2019 or any previous written law relating to trademark; “Register” means the Register of Geographical Indications kept under this Act; “determined by the Registrar” means any determination made by the Registrar in the guidelines or practice directions under section 95; “prescribed” means, in relation to proceedings before the Court or preliminary thereto or connected therewith, prescribed by rules of court made by the Rules Committee constituted under the Courts of Judicature Act 1964 [Act 91], and in other cases, prescribed by the Minister in the regulations made under this Act; “agent” means a geographical indication agent registered in accordance with this Act; “Court” means the High Court; Geographical Indications 13 “Minister” means the Minister charged with the responsibility for geographical indications; “interested person” in relation to goods identified by a geographical indication, means a producer of the goods, a trader of the goods, or an association of such producers, an association of such traders or an association of such producers and traders; “qualified person” means— (a) a citizen of Malaysia or an individual who is residing in Malaysia; (b) a body corporate incorporated under any written law in Malaysia; or (c) any other person who has a real and effective industrial or commercial establishment in Malaysia; “Registrar” means the Registrar of Geographical Indications as designated in subsection 3(1); “protected international registration designating Malaysia” has the same meaning as assigned to it in the Trademarks Act 2019; “producer” means any producer, manufacturer or trader of goods identified by the geographical indication; “use” means use as part of, in connection with— (a) any transaction, including a purchase, a sale or an exchange; (b) any importation or exportation; (c) any advertisement; or (d) any invoice, wine list, catalogue, business letter, business paper, price list or other commercial documents; “Assistant Registrar” means a person appointed to be an Assistant Registrar under subsection 3(3); 14 Laws of Malaysia Act 836 “Corporation” means the Intellectual Property Corporation of Malaysia established under the Intellectual Property Corporation of Malaysia Act 2002 [Act 617]; “geographical indication” means an indication which may contain one or more words 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 its geographical origin; “registered geographical indication” means a geographical indication that is registered under section 17 or the repealed Act; “homonymous geographical indication” means a geographical indication that, in part or in whole, has the same spelling as, or sounds the same as, a geographical indication for any goods having a different geographical origin; “earlier geographical indication” means— (a) a geographical indication which has been registered under section 17 or the repealed Act; or (b) an application for registration of a geographical indication which has been made under se