South-East Asia IPR Basics Series: GIs In Malaysia.
Legal News & Analysis – Asia Pacific - Malaysia – Intellectual Property
3 May, 2016
Geographical indications (GIs) are any type of symbol, mark, etc. which is used to identify the country, region, or area from which goods originate and to which is assigned a given reputation. For example, Champagne is one of France’s most famous GIs, and goods marked as Champagne must be produced in the Champagne region and are reputed to be of high quality. Similar products not from the area must content themselves with descriptions such as “Made in Champagne-style” or “sparkling wine.” Malaysia boasts some indigenous GIs, such as Sarawak Peppers and Sabah Seaweed. In this article we’ll be looking at how you can protect your GIs in Malaysia.
GIs are not limited to foodstuffs and can be applied to other goods (such as handicrafts). Geographical indications in Malaysia are a relatively recent development and were only created by the Geographical Indications Regulations (2001). Applying for a GI carries a fee of RM 250 (roughly 55 euros), followed by a RM 450 (roughly 100 euros) fee for publication and issuance of the certificate.
GIs differ from trade marks in that you need not be the producer of the goods to apply for a GI. Instead, GI applicants may be producers, government authorities, or relevant trade organisations or associations. GIs which do not qualify for protection in Malaysia include those which are no longer protected in the country of origin or which have fallen into disuse. All applications must include the following information:
- Information identifying the applicant, as well as their organisational status (private firm, government agency, industry association, etc.)
- Information identifying the GI which is being applied for, as well as the goods to which it applies
- Characteristics of goods covered by the GI which will be used to determine whether goods qualify
- A summary of the geographical area to be covered by the GI, with supporting documents and maps as required
- A statement that the application is made in good faith
- (if the applicant resides or conducts most of its business outside of Malaysia) A local agent to be used as the address for government communications relating to the GI
No substantive examination is required. If the application checks out (and no one opposes registration), the registration will be granted. The registration itself serves as evidence that the facts asserted in the application are true.
Examinations and protection
As with trade marks, GI applications will be subject to formative examinations before being published in the Government Gazette. For two months after this publication, objections to the GI made be lodged in accordance with section 4 of the Geographical Indications Regulations. If no objections are lodged, or if the GI is found to be suitable for registration, the GI will be granted. GIs are valid for ten years and can be renewed for an unlimited number of ten-year periods. To do so, SMEs will need to provide documents which prove the uniqueness of the GI products and the GI’s continued validity (such as its continued protection in the territory of origin).
As long as a GI is valid, any products created within the confines of the all of the GI’s guidelines on place of origin, product methods, input materials, etc. will be able to use the GI.
GIs are unlike trade marks in that creating a GI does not give the applicant sole rights to use the GI. Instead, the GI can be applied to any eligible products. However, goods which do not meet the stringent requirements of the GI cannot use the GI mark. This type of infringement misleads the public (thus falling under “unfair competition) and is punishable by injunctions, damages, and other legal actions.
Before taking civil or criminal actions, SMEs should strongly consider mediation. Firms with limited budget options and a need to quickly halt infringement can use mediation as a quick and cost-efficient means of halting infringement.
Beyond mediation, the two main avenues of enforcement in Malaysia are the Enforcement Division of the Ministry of Domestic Trade, Cooperatives, and Consumerism (for criminal enforcement) and IP court litigation. Before any enforcement action, you should always gather proof of infringement.
In criminal enforcement with the Enforcement Division (ED), wrongful use of GIs can quickly yield goods seizures, injunctions, and prosecutions. To prepare for such actions, you should provide proof of infringement and a letter of complaint. After raids or product seizures, SMEs should assist the ED by providing identification and analysis of seized goods to prove infringement.
In litigation through IP courts, you can bring cases before specialised courts empowered to issue injunctions which immediately halt infringement and to assign unlimited damages to be paid to the rights owners. There are six “High Courts” (in Kuala Lumpur, Johor, Perak, Selangor, Sabah, and Sarawak) which focus on civil cases (as the damages are often difficult to quantify), as well as 15 “Sessions Courts” spread among the Malaysian states which focus on criminal cases and which have unlimited power to issue fines.
Alex Bayntun - Lees, South-East Asia IPR SME-Helpdesk