The Geographical Indications Act 2022 ("GIA 2022")

• Published date: 18 October 2022
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Wong Jin Nee & Teo
• Author: Joyce Tan delves

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...