Geographical Indications (Amendment) Regulations 2013 come into force

The Geographical Indications Act 2000 and the Geographical Indications Regulations 2001, which came into force on August 15 2001, provide for the protection of geographical indications (GI) in Malaysia.

A GI is defined under the act as:

"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".

A GI is protected regardless of registration. However, registration provides two advantages:

• The certificate of registration is prima facie evidence of the facts stated therein. It raises the presumption that the GI is valid and subsisting and entitled to protection.
• Only producers who carry on activities in the geographical area specified in the registration have the right to use a registered GI in the course of trade, and such use must be in respect of the products specified in the registration and in accordance with the quality, reputation or characteristic specified in the register.

Through the years, indications that have been registered under the act have included 'Champagne', 'Sarawak pepper', 'Sabah tea', 'Tenom coffee' and 'Bario rice'. The act provides for the appointment of a registrar of GIs and prescribes the procedures for the registration of GIs. Those who may apply for registration of a GI include producers of the goods or groups of producers in the geographical area specified.

The Geographical Indications Regulations, cited as the Geographical Indications (Amendment) Regulations 2013, came into effect on July 15 2013.

The 2013 regulations aim to regulate the requirements for registration of GI agents and to stipulate the procedures for the renewal of a GI.

Pursuant to the 2013 regulations, there will now be a Register of Geographical Indications Agents. Applicants must satisfy the registrar that they are either domiciled or resident in Malaysia, or have a principal place of business in Malaysia, and must fulfil the following requirements:

• the applicant is listed in the Register of Patents Agents maintained pursuant to the regulations under the Patents Act 1983;
• the applicant is listed in the Register of Trademarks Agents maintained pursuant to the regulations under the Trademarks Act 1976;
• the applicant is an advocate and solicitor practising in Malaysia;
• the applicant holds a recognised degree in any field of studies and has acquired the necessary knowledge or experience in the field of industrial property; or
• the applicant has at least three years' experience in the field of industrial property by virtue of being an ex-officer of the IP Office.

Under the act, a registered GI is given protection for 10 years from the date of filing and is renewable every 10 years. The 2013 regulations now provide for the procedures and fees applicable for the timely or late renewal of a GI.

The 2013 regulations appear to be implementing the same safeguards as other IP legislations, such as the Trademarks Act and the Patents Act, by spelling out the qualification requirements for GI agents.

Janet Toh Yoong San, Shearn Delamore & Co, Kuala Lumpur