– Geographical Indications Act 2022, in force since March 18, 2022.
– Geographical Indications Regulations 2022, in force since March 18, 2022.
– Guidelines of Geographical Indications 2022, issued by the Malaysian Intellectual Property Office.

Definition: a geographical indication is 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.

Applicants: the following persons may apply for registration of a geographical indication, namely (1) any person who is carrying on an activity as a producer in the geographical area with respect to the goods and includes an association of such person; (2) a competent authority which means government bodies and those sanctioned by the government as well as foreign government and any other authority which is competent to certify goods, and has the responsibility for the geographical indication in question.

Foreign applicants: must file through locally registered agents.

Registrability: an application may only be sought in respect of any goods falling within one or more of the categories of goods as set out in the guidelines or practice directions issued by the Registrar.

Categories of goods: set out in First Schedule of the Guidelines which consists of 5 classes - Class 1 (Wine and Spirits), Class 2 (Prepared foodstuff and beverages), Class 3 (Agricultural, aquacultural, horticultural products), Class 4 (Handicraft), Class 5 (Textiles other than handicrafts).

Grounds of refusal: (a) the geographical indication does not correspond to the meaning of "geographical indication"; (b) the geographical indication identifies goods that do not fall within any of the categories of goods as determined by the Registrar; (c) the geographical indication consists exclusively of an indication which is identical with the term customary in the common language as the common name of any goods in Malaysia if registration is sought in relation to the goods; (d) the geographical indication is contrary to public order or morality; (e) the geographical indication is not or has ceased to be protected in its country or territory of origin; (f) the goods do not originate in the country, region or locality indicated in the application for the registration of geographical indication; (g) the geographical indication in relation to the goods is of such a nature which may mislead the public as to the true place of origin of the goods; (h) if there exists a likelihood of confusion on the part of the public because the geographical indication is identical with or similar to, and has the same geographical origin as, an earlier geographical indication; (i) if there exists a likelihood of confusion on the part of the public by reason the geographical indication is identical with or similar to a trademark if the trademark is applied for or registered or used in good faith before the application date of the said geographical indication; (j) is identical with or similar to a well-known trademark before the application date of the said geographical indication and that the registration of the geographical indication is liable to mislead consumers as to the true identity of the goods identified by that geographical indication.

Filing requirements for an application (to be sent to resident agent):
1. The details of the applicant which include the name and address, the address for service, nationality of country of establishment of the applicant, and other details of the applicant to enable him to be contacted;
2. The capacity in which the applicant is filing for registration (if the applicant is an association, the name and address of the members of the association; if the applicant is a competent authority, the name and address of producers under the control of such competent authority);
3. A clear and durable representation of the geographical indication for which the registration is sought;
4. The geographical area to which the geographical indication applies;
5. The goods for registration of the geographical indication;
6. The quality, reputation or other characteristics of the goods, as the case may be, is essentially attributable to the place from which the goods originate:
- geographical area;
- physical characteristics of goods which may include color, shape, texture, size, weight, and taste;
- proof of origin;
- causal link between the geographical area and a specific quality, reputation or other characteristics of the goods which may include history, uniqueness, human factor, local factor, climate factor, soil factor or any other related factor;
- specific steps or processing techniques in productions that shall take place in the identified geographical area;
- description of labelling, if any;
- award or recognition from an authorised body, if any;
- inspection body or body authorities verifying compliance of the goods specification, if any;
7. Where the geographical indication for which registration is sought relates to a country other than Malaysia, evidence that the geographical indication has obtained protection as a geographical indication in the country or territory of origin;
8. Where a geographical indication contains or consists of a word which is not in Roman characters or national/English language, a translation and transliteration of the word and the language to which the word belongs;
9. Such other particulars as may be determined by the Registrar.

Examination procedure: an application will first be examined to see whether it fulfills the requirements for registration which includes a search of any earlier geographical indication or earlier trademark. Where the Registrar is satisfied that the application fulfills the requirements, the Registrar shall issue a notice of acceptance for the applicant to make payment within the specified period in the notice. Upon payment, the acceptance shall be published in the Intellectual Property Official Journal whereby it may be opposed by any interested person within two months from the date of publication.

Opposition: the formal notice of opposition must be answered by way of a formal reply, followed by evidence to be filed in support of the opposition and the application.

Registration: in the event there is no opposition or the opposition is (subject to appeal to the High Court) resolved in the applicant’s favor, the geographical indication will be registered and the certificate issued.

Exception for prior use: the Act permits continued and similar use of a particular geographical indication of another country identifying wines or spirits in connection with goods or services either (a) if such use has been for at least ten years prior to April 15, 1994; or (b) made in good faith before April 15, 1994. The Act would also not prejudice a trademark applied for or registered before the commencement of the Act or before the geographical indication is protected in its country of origin. Use of such a trademark is permitted even though such a trademark may be similar to or identical with a geographical origin.

Legal remedies: any interested person of goods identified by a geographical indication, not necessarily the registrant, may institute proceedings in the Court against any person carrying out the following acts: (a) the use in the course of trade of a geographical indication by any means in the designation or presentation of any goods that indicate or suggests in a manner which misleads the public as to the geographical origin of the goods that the goods in question originate in a geographical area other than the true place of origin; (b) if the use of the geographical origin constitutes unfair competition (Article 10bis of the Paris Convention); and (c) any use in the course of trade of a geographical indication identifying wines for wines not originating in the place indicated by the geographical indication in question or a geographical indication identifying spirits and spirits not originating in the place indicated by the geographical indication in question, even where the true origin of the wines or spirit is indicated or the geographical indication is used in translation or accompanied by expressions such as "kind", "type", "style" or "imitation". Any use within the meaning of (a) - (c) shall be deemed to be an act to which the legal remedies are available, even if the geographical indication is literally true as to the geographical origin of the goods in question, provided that such use falsely represents to the public that the goods originate in another country, territory, region or locality. Further, the proceedings may be instituted against any use of a registered geographical indication which identifies any goods, other than a wine or spirit, belonging to a category of goods, in relation to any goods which are of the same category as those goods, but which did not originate in the place indicated by the registered geographical indication in question, even if the true origin of those goods is indicated or the geographical indication is used in translation or accompanied by any expressions such as "kind", "type", "style" or "imitation" or any similar word or expression.

Offences: Part IX sets out two main offences which relate to the use of geographical indication namely: (1) falsely applying a geographical indication, where it is applied without the consent of the registered proprietor to the goods which are not the genuine goods of the registered proprietor, person authorised by the registered proprietor or person who has the right to use the geographical indication under section 28; or that the goods are not in accordance with the quality, reputation or characteristic as specified in the Register; (2) importing into Malaysia for the purpose of trade or manufacture, sale, or offering or exposing for sale, or has in his possession custody or control for the purpose of trade or manufacture such goods with falsely applied geographical indications.