In the first quarter of 2022, Malaysia saw key legislations governing Intellectual Property (IP) being amended and new legislations being introduced. Among the newly introduced legislation is the Geographical Indications Act 2022 (“the GI Act 2022”) which came into force on 18 March 2022.
The GI Act 2022 replaced Geographical Indications Act 2000 (“the GI Act 2000”), which also brought about changes to laws relating to collective/certification mark containing Geographical Indications (GI). To give effect to the provisions of the GI Act 2022, regarding collective and certification mark the following subsidiary legislations were introduced:
- The Trademarks (Amendment of First and Second Schedules) Order 2022 (“the Amending Order”) and
- The Trademarks (Amendment) Regulations 2022 (“the Amending Regulations”).
The First Schedule of the Trademark Act 2019 (“the TA 2019”) which primarily deals with collective mark and the Second Schedule of the TA 2019 which deals with certification mark underwent significant amendments to provide the corresponding legal framework for smooth implementation of the GI Act 2022.
Subparagraph 3(1) of the First Schedule of TM 2019 has been amended by removing subparagraph 3(1)(b) which prohibited registration of collective mark containing GI which contains the name of plant variety or animal breed. Further subparagraph 3(1) (e) which prohibit registration of collective mark containing GI which are confusingly similar to an earlier registered GI has been removed and expounded in the newly inserted subparagraph 3(2) to 3(4).
The amended Paragraph 3(1) in substance prohibits registration of collective mark containing GI if it contains exclusively, indication which is identical with customary term of any good or services in Malaysia and registration is sought in relation to those goods or services, or the collective mark is not or lost protection in the country of its origin, or the goods or services do not originate from the place as indicated in the GI, or the collective mark is such as to mislead the public as to the place of origin of the goods or services.
The newly inserted subparagraph 3(2) to 3(4) of the TA 2019, prohibits registration of collective mark containing GI if the GI has been registered or an application for registration has been made under GI Act 2022 or any other applicable law prior to the application for registration of the collective mark for identical or similar goods and the goods do not originate from the place indicated by the GI. The prohibition applies regardless of the fact if the collective mark has indication of the true geographical origin of the goods or the expression such as “kind”, “type”, “style”, “imitation” or any similar words.
Nevertheless, the above-mentioned prohibition on registration do not apply if the application for registration of the collective mark was made in good faith or the collective mark had been used continuously in good faith in the course of trade either before the date of application for registration of the GI in question in Malaysia or before the GI in question is protected in its country of origin.
Further newly inserted para 3(5) of the TA 2019, prohibits registration of a collective mark which contains GI in respect of wine and spirit, and the collective mark is to be used in relation to wine or spirit not originating from the place indicated by the GI. The prohibition applies even if the true origin of the wine or spirit is indicated or the GI is accompanied by terms such as “kind”, “type”, “style”, “limitation” or any similar word or expression. Nevertheless, a collective mark with GI in reference to wine or spirit may be registered if the application is made in good faith or the collective mark had been used continuously in the course of trade either before the commencement of GI Act 2022 or before the GI in question is protected in its country of origin or if the GI in question has ceased to be protected or fallen into disuse in its country of origin.
Further, in addition to grounds of opposition of trademark under Section 34 of TA 2019, newly inserted para 6(A) of the First Schedule of TA 2019, allows any interested person to oppose the registration of a collective mark consisting of GI for reasons which prevent the registration of the collective mark with the GI or if the GI has fallen into disuse in its country of origin. The interested person as provided in Section 2 of the GI Act 2022 is “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.”
Newly inserted paragraph 8 of the First Schedule of TA 2019 allows the registered proprietor of collective mark constituting of GI to institute infringement proceeding for any infringement of the collective mark.
Nevertheless, infringement proceeding can’t be initiated for lawful use of GI registered under the GI Act 2022 or any other applicable law as provided in the newly inserted subparagraph 10(2)(b) of the First Schedule of the TA 2019.
Paragraph 12 of the First Schedule of the TA 2019 which previously provided for grounds of invalidation of registered collective mark has been replaced with new Paragraph 12 which in addition to providing grounds of invalidation of registered collective mark, also provides grounds for invalidation for collective mark consisting of GI among which include, the mark was wrongly registered in breach of subparagraphs 3(1), 3(2) and 3(5) and para 6A of the First Schedule of TA 2019, which in essence deals with collective mark containing GI which are prohibited from registration; the mark has fallen into disuse or lost protection in country of origin; non-use of the mark by the registered proprietor in Malaysia or as a result of non-use of the mark by the registered proprietor of the mark, the GI has become common name of goods in Malaysia.
The Second Schedule of the TA 2019, which deals with certification mark also underwent identical amendments as the First Schedule of the TA 2019 which deals with collective mark in order to give effect to the provisions of the GI Act 2022.
Further the Amending Regulation also introduced amendments and new regulations the Trademarks Regulations 2019 (“the TMR 2019”) to facilitate the implementation of GI Act 2022. Newly inserted regulation 53(1A) of TMR 2019, requires the application of collective mark/certification consisting of GI which relates to country other than Malaysia, to be furnished with evidence of protection of the GI in country of origin. Also, in regard to opposition proceeding involving registration of collective/ certification mark consisting of GI, newly inserted Regulation 55(3), clarifies that reference to trademark in Regulation 23(4) i.e. “where a notice of opposition is filed on the basis of a registered trademark, there shall be included in the statement of the grounds of such opposition a representation of that trademark and the following particular…” shall be construed as GI registered under the GI Act 2022 or any other previous law applicable to GI. Newly inserted Regulation 57A also states that for renewal of restoration of collective/certification mark containing GI based on a GI protected in its country of origin the request for renewal shall be companied by document to prove the protection of the GI in the country.
The coming into force of GI Act 2022, certainly warranted relevant amendments to be made to the TA 2019 and the TMR 2019 especially for collective and certification mark in order to allow the smooth implementation of GI Act 2022. The relevant amendments to the corresponding provision of the TA 2019 and the TMR 2019 should be welcomed and surely would pave the way for the implementation of the GI Act 2022.