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Geographical Indications Act 2000

LAWS OF MALAYSIA

REPRINT

Act 602

GEOGRAPHICAL INDICATIONS

ACT 2000

Incorporating all amendments up to 1 January 2006 PUBLISHED BY

THE COMMISSIONER OF LAW REVISION, MALAYSIA

UNDER THE AUTHORITY OF THE REVISION OF LAWS ACT 1968 IN COLLABORATION WITH

PERCETAKAN NASIONAL MALAYSIA BHD

2006

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GEOGRAPHICAL INDICATIONS ACT 2000

Date of Royal Assent ... ... ... ... ... 30 May 2000 Date of publication in the Gazette ... ... 15 June 2000 PREVIOUS REPRINT

First Reprint ... ... ... ... ... 2001

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LAWS OF MALAYSIA

Act 602

GEOGRAPHICAL INDICATIONS ACT 2000

ARRANGEMENT OF SECTIONS

PART I

PRELIMINARY

Section

1. Short title and commencement

2. Interpretation PART II

PROTECTION OF GEOGRAPHICAL INDICATIONS

3. Protection of geographical indications

4. Exclusion from protection

5. Institution of proceedings for injunction and damages

6. Failure to take action

7. Homonymous geographical indications for wines PART III

ADMINISTRATION

8. Registrar, Deputy Registrars and Assistant Registrars

9. Geographical indications offices

10. Register of Geographical Indications 4 Laws of Malaysia ACT 602

PART IV

REGISTRATION OF GEOGRAPHICAL INDICATIONS

Section

11. Persons who may apply for registration 11A. Agent

12. Application for registration

13. Application for registration to be advertised

14. Opposition to application for registration

15. Reply by applicant

16. Filing of documentary evidence in support

17. Failure to file documentary evidence

18. Appeal to Court

19. Registration of geographical indication 19A. Renewal of registration

19B. Restoration of geographical indication removed from the Register

20. Presumption where geographical indication is registered

21. Right of use PART V

OTHER POWERS OF THE REGISTRAR

22. Cancellation and rectification of registration

23. Correction of errors

24. Extension of time

25. Power to award costs

26. Security for costs PART VI

SPECIAL PROVISIONS

27. Extent of application

28. Exception for prior use

29. Exception for use of personal name Geographical Indications 5

PART VII

MISCELLANEOUS

Section

30. Procedure of appeal

31. Decision of Court to be final

32. Regulations SCHEDULE

6 Laws of Malaysia ACT 602

Geographical Indications 7

LAWS OF MALAYSIA

Act 602

GEOGRAPHICAL INDICATIONS ACT 2000

An Act to provide for the protection of geographical indications and for matters connected therewith.

[15 August 2001, P.U. (B) 313/2001]

ENACTED by the Parliament of Malaysia as follows: PART I

PRELIMINARY

Short title and commencement

1. (1) This Act may be cited as the Geographical Indications Act

2000. (2) This Act shall come into operation on a date to be appointed by the Minister by notification in the Gazette.

Interpretation

2. In this Act, unless the context otherwise requires-- "agent" means a Geographical Indication agent registered in accordance with this Act and the regulations made under it; "appointed date" has the same meaning as is assigned to that expression in the Intellectual Property Corporation of Malaysia Act 2002 [Act 617];

"Assistant Registrar" means the person appointed or deemed to have been appointed to be an Assistant Registrar under subsection 8(2) or (3);

8 Laws of Malaysia ACT 602

"competent authority" means any government or statutory body carrying out the functions of, on behalf of, or sanctioned by, the Government;

"Corporation" means the Intellectual Property Corporation of Malaysia established under the Intellectual Property Corporation of Malaysia Act 2002;

"Court" means the High Court;

"Deputy Registrar" means the person appointed or deemed to have been appointed to be a Deputy Registrar under subsection 8(2) or (3);

"geographical indication" means 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;

"goods" means any natural or agricultural product or any product of handicraft or industry;

"interested person" means any of the persons specified in section 11;

"Minister" means the Minister for the time being charged with the responsibility for intellectual property;

"Paris Convention" means the Paris Convention for the Protection of Industrial Property of 20 March 1883, as revised or amended from time to time;

"producer" means--

(a) any producer of agricultural products;

(b) any person exploiting natural products;

(c) any manufacturer of products of handicraft or industry; or

(d) any trader dealing in any of the products mentioned in paragraphs (a), (b) or (c);

Geographical Indications 9

"protectable geographical indication" means a geographical indication which does not fall within any of the categories of geographical indications specified in section 4;

"Register" means the Register of Geographical Indications kept under this Act;

"registered proprietor", in relation to a geographical indication, means the person for the time being entered in the Register as proprietor of the geographical indication;

"Registrar" means the Registrar of Geographical Indications as designated in subsection 8(1).

PART II

PROTECTION OF GEOGRAPHICAL INDICATIONS

Protection of geographical indications

3. Protection under this Act shall be given to a geographical indication--

(a) regardless whether or not the geographical indication is registered under this Act; and

(b) as against another geographical indication which, although literally true as to the country, territory, region or locality in which the goods originate, falsely represents to the public that the goods originate in another country, territory, region or locality.

Exclusion from protection

4. Notwithstanding section 3, the following shall not be protected as geographical indications:

(a) geographical indications that do not correspond to the meaning of "geographical indication" as defined in section 2;

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(b) geographical indications which are contrary to public order or morality;

(c) geographical indications which are not or have ceased to be protected in their country or territory of origin; or (d) geographical indications which have fallen into disuse in their country or territory of origin.

Institution of proceedings for injunction and damages

5. (1) Any interested person may institute proceedings in the Court to prevent, in respect of geographical indications-- (a) the use in the course of trade of any means in the designation or presentation of any goods that indicates 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) any use in the course of trade which constitutes an act of unfair competition within the meaning of Article 10bis of the Paris Convention as set out in the Schedule; (c) any use in the course of trade of a geographical indication which, although literally true as to the country, territory, region or locality in which the goods originate, falsely represents to the public that the goods originate in another country, territory, region or locality; or

(d) 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 for spirits not originating in the place indicated by the geographical indication in question, even where the true origin of the wines or spirits is indicated or the geographical indication is used in translation or accompanied by expressions such as "kind", "type", "style" or "imitation".

(2) The Court may grant an injunction to prevent any unlawful use of the geographical indication and award any damages and any other legal remedy or relief as it deems fit.

Geographical Indications 11

Failure to take action

6. (1) No action under section 5 shall be brought against a person for the use of a trade mark which contains or consists of a geographical indication after the expiry of five years--

(a) from the date such use by that person or his predecessor in title has become generally known in Malaysia; or (b) from the date of registration of the trade mark by that person under the Trade Marks Act 1976 [Act 175],

whichever is earlier.

(2) Subsection (1) shall not apply where the trade mark was used or registered in bad faith.

Homonymous geographical indications for wines

7. (1) In the case of homonymous geographical indications for wines, protection shall be accorded to each indication. (2) The Registrar, in cases of bona fide concurrent use of homonymous geographical indications, shall determine the practical conditions under which the homonymous geographical indications in question will be differentiated from each other, taking into account the need to ensure equitable treatment of the producers concerned and that the public are not misled.

PART III

ADMINISTRATION

Registrar, Deputy Registrars and Assistant Registrars

8. (1) The Director General of the Corporation shall be the Registrar of Geographical Indications.

(2) The Corporation may appoint, on such terms and conditions as it may determine, from amongst persons in the employment of the Corporation, such number of Deputy Registrars of Geographical Indications, Assistant Registrars of Geographical Indications and other officers as may be necessary for the proper administration 12 Laws of Malaysia ACT 602

of this Act, and may revoke the appointment of any person so appointed or deemed to have been so appointed under subsection (3).

(3) The persons holding office as Deputy Registrars, Assistant Registrars and other officers under this Act before the appointed date who were given an option by the Government of Malaysia to serve as employees of the Corporation and have so opted shall on the appointed date be deemed to have been appointed as Deputy Registrars, Assistant Registrars and such other officers under subsection (2).

(4) Subject to the general direction and control of the Registrar and to such conditions or restrictions as may be imposed by the Registrar, a Deputy Registrar or an Assistant Registrar may exercise any function of the Registrar under this Act, and anything by this Act appointed or authorized or required to be done or signed by the Registrar may be done or signed by any Deputy Registrar or Assistant Registrar and the act or signature of a Deputy Registrar or an Assistant Registrar shall be as valid and effectual as if done or signed by the Registrar.

(5) The Registrar shall have a seal of such device as may be approved by the Corporation and the impressions of such seal shall be judicially noticed and admitted in evidence.

Geographical indications offices

9. (1) A Central Geographical Indications Office and such number of branch offices of the Central Geographical Indications Office as may be necessary for the purposes of this Act shall be established. (2) Any application or other document required or permitted to be filed at the Central Geographical Indications Office may be filed at any branch office of the Central Geographical Indications Office and such application or other document shall be deemed to have been filed at the Central Geographical Indications Office. Register of Geographical Indications

10. (1) The Registrar shall keep and maintain a register called the Register of Geographical Indications in which all particulars as the Registrar deems appropriate shall be recorded.

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(2) The Register shall be kept in such form and on such material as may be prescribed.

(3) The Register shall be open to the inspection of the public at such times and in accordance with such conditions as may be prescribed.

(4) A certified true copy or extract of any entry in the Register sealed with the seal of the Registrar shall be given to any person requiring the copy or extract on payment of the prescribed fee. PART IV

REGISTRATION OF GEOGRAPHICAL INDICATIONS

Persons who may apply for registration

11. (1) The following persons shall be entitled to file an application for registration of a geographical indication:

(a) a person who is carrying on an activity as a producer in the geographical area specified in the application with respect to the goods specified in the application, and includes a group or groups of such person;

(b) a competent authority; or

(c) a trade organization or association.

(1A) An applicant may file an application for registration of a geographical indication personally or through an agent. (2) Notwithstanding subsection (1A), where an applicant does not reside or carry on business in Malaysia, he shall appoint an agent to act on his behalf.

Agent

11A. (1) Any person, firm or company may apply to act as an agent for the purposes of this Act if--

(a) that person is domiciled or resident in Malaysia; or 14 Laws of Malaysia ACT 602

(b) the firm or company is constituted under the laws of Malaysia; and

(c) such person, firm or company carries on business or practice principally in Malaysia.

(2) The qualifications and the mode of registration of an agent shall be as prescribed.

Application for registration

12. (1) An application for the registration of a geographical indication shall be filed with the Registrar in the prescribed manner and shall specify--

(a) the name, address and nationality of the natural person or legal entity filing the application, and the capacity in which the applicant is applying for registration; (b) the geographical indication for which registration is sought; (c) the geographical area to which the geographical indication applies;

(d) the goods for which the geographical indication applies; (e) the quality, reputation or other characteristic of the goods for which the geographical indication is used; and (f) any other particulars as may be prescribed.

(2) An application under subsection (1) shall be accompanied by the prescribed fee.

Application for registration to be advertised

13. If the Registrar is satisfied after examining the application for registration, that the application has complied with the requirements of sections 11 and 12 and that the geographical indication sought to be registered is not contrary to public order or morality, the Registrar shall cause the application to be advertised in a manner as may be prescribed.

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Opposition to application for registration

14. (1) Any interested person may, within two months from the date of advertisement of an application for registration, give notice to the Registrar and the applicant of his intention to oppose the application on the grounds that the geographical indication sought to be registered by the applicant--

(a) does not fall within the meaning of the definition of "geographical indication" under this Act;

(b) is contrary to public order or morality;

(c) is not or has ceased to be protected in its country of origin; or

(d) has fallen into disuse in its country of origin. (2) The notice shall be given in writing in the prescribed manner and shall include a statement of the grounds of opposition. Reply by applicant

15. (1) The applicant shall within two months after the receipt of the notice of opposition send a reply to the Registrar and the opponent, in the prescribed manner, of the grounds for his application for registration.

(2) If the applicant fails to reply to the opposition within the period specified in subsection (1) or, if the period has been extended by the Registrar, within the additional period, the applicant shall be deemed to have abandoned his application for registration. Filing of documentary evidence in support

16. (1) Where the applicant submits a reply under subsection 15(1), the opponent and applicant shall file documentary evidence in support of the opposition or the application for registration, as the case may be, with the Registrar.

(2) Any documentary evidence to be filed by the opponent or applicant under subsection (1) shall be filed within the prescribed time and in the prescribed manner.

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(3) Where the applicant files the documentary evidence in support of his application for registration, the opponent may be given an opportunity, within the prescribed time, to submit to the Registrar and applicant evidence in reply to be adduced in the prescribed manner.

(4) After considering the documentary evidence filed by the opponent and applicant, and after giving both parties an opportunity to make submissions, the Registrar shall decide whether-- (a) to refuse to register the geographical indication; (b) to register the geographical indication; or

(c) to register the geographical indication subject to such conditions, amendments, modifications or limitations as he may think fit.

(5) The Registrar shall within two months after making a decision under subsection (4) prepare his grounds of decision in writing. (6) Any person aggrieved by the decision of the Registrar under subsection (4) may appeal to the Court.

Failure to file documentary evidence

17. (1) Where the applicant fails to file the documentary evidence as required under subsection 16(1), the Registrar shall be entitled to treat the application for registration as abandoned. (2) Where the opponent fails to file the documentary evidence as required under subsection 16(1), the Registrar shall be entitled to treat the opposition as abandoned and shall register the application and issue to the applicant a certificate of registration in the prescribed form.

Appeal to Court

18. (1) In any appeal under subsection 16(6), the Court may, after hearing the parties, make an order for--

(a) the geographical indication to be registered; Geographical Indications 17

(b) the geographical indication to be registered subject to any modification which shall not in any manner

substantially affect the identity of the geographical indication; or

(c) the geographical indication not to be registered. (2) Where the Court makes an order under paragraph (1)(a) or (b), the Registrar shall register the geographical indication as required and issue to the applicant a certificate of registration in the prescribed form.

Registration of geographical indication

19. (1) Where the Registrar is satisfied that the application for registration of a geographical indication complies with the requirement of sections 14 and 15 and that the geographical indication sought to be registered is not contrary to public order or morality and--

(a) no opposition has been filed under section 14; or (b) the Registrar has made a decision under paragraph 16(4)(b) or (c) and no appeal has been filed against that decision, the Registrar shall register the geographical indication and issue to the applicant a certificate of registration in the prescribed form. (2) The period of registration of a geographical indication shall be ten years and the registration is renewable upon an application made under section 19A.

Renewal of registration

19A. (1) During the prescribed time before the date of expiry of the registration of a geographical indication the Registrar shall send a notice in the prescribed manner to the registered proprietor of such date of expiry.

(2) An application for the renewal of the registration of a geographical indication shall be made by the registered proprietor in the prescribed manner to the Registrar within the prescribed time before the date of expiry of the registration. 18 Laws of Malaysia ACT 602

(3) An application under subsection (2) shall be accompanied by the prescribed fee.

(4) Subject to subsection (5), upon receipt of an application under subsection (2) and the prescribed fee, the Registrar shall renew the registration of the geographical indication for a period which shall not exceed ten years at each renewal. (5) For the purpose of renewing the registration of a geographical indication, the Registrar may require additional particulars and may refuse to renew the registration if the applicant does not furnish the additional particulars required.

(6) If the Registrar refuses to renew the registration under subsection (5) the Registrar shall notify the applicant in writing of the decision.

(7) Subject to section 19B, the Registrar may remove a geographical indication from the Register if the applicant fails to apply for the renewal of the geographical indication within the prescribed time. Restoration of geographical indication removed from the Register 19B. The Registrar may restore a geographical indication that has been removed from the Register under subsection 19A(7) if-- (a) the applicant files an application for such restoration within twelve months from the date of expiry of the registration of the geographical indication; and

(b) the Registrar is satisfied that--

(i) there has been no use in bad faith of the geographical indication during the year immediately preceding

its removal from the Register; or

(ii) no deception or confusion is likely to arise from the use of the geographical indication by reason

of its previous use.

Presumption where geographical indication is registered

20. (1) A geographical indication registered under this Act shall, in any proceedings, raise a presumption that such indication is a geographical indication within the meaning of section 2. Geographical Indications 19

(2) A certificate of registration issued under this Act shall be prima facie evidence of the facts stated in the certificate and of the validity of the registration.

Right of use

21. (1) In the case of registered geographical indications, only producers carrying on their activity in the geographical area specified in the Register shall have the right to use a registered geographical indication in the course of trade.

(2) The right of use shall be in respect of the products specified in the Register in accordance to the quality, reputation or characteristic specified in the Register.

PART V

OTHER POWERS OF THE REGISTRAR

Cancellation and rectification of registration

22. (1) The Registrar may, on the request of any interested person and upon payment of the prescribed fee--

(a) cancel the registration of a geographical indication on the ground that the geographical indication does not qualify for protection as such having regard to section 4; or (b) rectify the registration of a geographical indication on the ground that the geographical area specified in the registration does not correspond to the geographical indication, or that the indication of the products for which the geographical indication is used or the indication of the quality, reputation or other characteristic of such products is missing or unsatisfactory.

(2) The persons who request for the cancellation or rectification of the registration of the geographical indication under subsection (1) shall give notice to the applicant who filed the application for registration of the geographical indication or his successor in title. 20 Laws of Malaysia ACT 602

(3) The Registrar shall, in a manner to be prescribed, notify all persons having the right to use the geographical indication under section 21.

(4) The persons referred to in subsection (3) and any other interested persons may, within a period which shall be specified by the Registrar, apply to the Registrar to join in any proceedings which may be held by the Registrar to determine whether or not the registration of the geographical indication should be cancelled or rectified.

(5) The Registrar shall within two months after making a decision under subsection (1) prepare his grounds of decision in writing. (6) Any person aggrieved by the decision of the Registrar under subsection (1) may appeal to the Court.

Correction of errors

23. The Registrar may correct any error of translation or transcription, clerical error or mistake in any application or document filed with the Registrar or in any matter recorded pursuant to this Act or the regulations made under this Act.

Extension of time

24. Where by this Act or any regulations made under this Act, a time is specified within which an act or thing is to be done, the Registrar may, upon receiving a written request so to do and if he is satisfied that the circumstances justify it, extend the time either before or after its expiration, upon payment of the prescribed fee. Power to award costs

25. (1) In all proceedings before the Registrar under this Act, the Registrar shall have power to award to any party such costs as he may consider reasonable.

(2) Costs awarded by the Registrar may in default of payment be recovered in a court of competent jurisdiction by the party to whom the costs were awarded as if they were debts due to such party.

Geographical Indications 21

Security for costs

26. (1) The Registrar may require any person who gives a notice of opposition under section 14, or an applicant who gives a reply to the notice of opposition under section 15, who does not reside or carry on business in Malaysia to give security for costs of the proceedings before the Registrar relating to the opposition or application.

(2) The Registrar may treat the opposition or application as abandoned if the security for costs as required under subsection (1) is not paid.

(3) The security for costs shall be refundable or be considered as part of the payment of the costs of the proceedings, as the case may be.

PART VI

SPECIAL PROVISIONS

Extent of application

27. (1) This Act shall apply to a protectable geographical indication in existence before the commencement of this Act as it applies to a protectable geographical indication in existence after the commencement of this Act.

(2) In respect of a geographical indication in existence before the commencement of this Act, no suit or proceedings shall be brought under this Act for anything done before the commencement of this Act.

Exception for prior use

28. (1) Nothing in this Act shall prevent continued and similar use in Malaysia of a particular geographical indication of another country identifying wines or spirits in connection with goods or services by any nationals or domiciliaries of Malaysia who have 22 Laws of Malaysia ACT 602

used that geographical indication in a continuous manner with regard to the same or related goods or services in Malaysia either-- (a) for at least ten years before 15 April 1994; or (b) in good faith before 15 April 1994.

(2) Where a trade mark has been applied for or registered in good faith, or where rights to a trade mark have been acquired through use in good faith either--

(a) before the commencement of this Act; or

(b) before the geographical indication is protected in its country of origin,

this Act shall not prejudice the registrability or the validity of the registration of the trade mark, or the right to use the trade mark, on the basis that such a trade mark is identical with or similar to a geographical indication.

(3) Nothing in this Act shall apply in respect of a geographical indication of any country with respect to goods or services for which the relevant indication is identical with the term customary in common language as the common name for such goods or services in Malaysia or in respect of a geographical indication of any other country with respect to products of the vine for which the relevant indication is identical with the customary name of a grape variety existing in Malaysia as of 1 January 1995. Exception for use of personal name

29. This Act shall not prejudice the right of any person to use, in the course of trade, that person's name or the name of that person's predecessor in business, except where such name is used in such a manner as to mislead the public.

PART VII

MISCELLANEOUS

Procedure of appeal

30. The same rules of procedure which apply to appeals to the High Court from a decision of a subordinate court in civil matters shall apply to appeals against a decision of the Registrar under subsections 16(6) and 22(6).

Geographical Indications 23

Decision of Court to be final

31. In any appeal against the decision of the Registrar under subsections 16(6) and 22(6), the decision of the Court shall be final and not be subject to any further appeal.

Regulations

32. (1) Subject to the provisions of this Act, the Minister may make regulations for the purpose of carrying into effect the provisions of this Act.

(2) In particular and without prejudice to the generality of subsection (1), regulations made under this section may provide for all or any of the following:

(a) to regulate the procedure to be followed in connection with any proceedings or other matters before the Registrar or the Central Geographical Indications Office under this Act including the service of documents;

(b) to prescribe the fees to be paid in connection with any proceedings or other matters or in connection with the provision of any service by the Registrar or the Central Geographical Indications office, and to prescribe the amount of such fees and to allow different fees in certain circumstances for certain prescribed cases;

(c) to prescribe forms and other matters to be used under this Act;

(d) to regulate the keeping of the Register and to prescribe its form and contents; and to prescribe the conditions and fees for making any extracts of the Register;

(e) to regulate the mode of giving evidence in any proceedings before the Registrar under this Act and to empower the Registrar to compel the attendance of witnesses and the discovery and production of documents;

(f) for doing anything required to be done in connection with any proceedings or other matters before the Registrar or the Central Geographical Indications Office;

(g) to prescribe time limits;

24 Laws of Malaysia ACT 602

(ga) to prescribe the qualifications of agents and other matters relating to such qualifications;

(gb) to provide for the registration of agents; and (h) to regulate generally matters pertaining to the business of the registration of geographical indications carried on in the Central Geographical Indications Office whether or not specially prescribed under this Act.

Geographical Indications 25

SCHEDULE

[Paragraph 5(1)(b)]

PROVISIONS OF THE PARIS CONVENTION FOR THE

PROTECTION OF INDUSTRIAL PROPERTY (1967)

Article 10bis

[Unfair Competition]

(1) The countries of the Union are bound to assure to nationals of such countries effective protection against unfair competition. (2) Any act of competition contrary to honest practices in industrial or commercial matters constitutes an act of unfair competition. (3) The following in particular shall be prohibited:

1. all acts of such a nature as to create confusion by any means whatever with the establishment, the goods, or the industrial or commercial activities, of a competitor;

2. false allegations in the course of trade of such a nature as to discredit the establishment, the goods, or the industrial or commercial activities, of a competitor;

3. indications or allegations the use of which in the course of trade is liable to mislead the public as to the nature, the manufacturing process, the characteristics, the suitability for their purpose, or the quantity, of the goods.

26 Laws of Malaysia ACT 602

LAWS OF MALAYSIA

Act 602

GEOGRAPHICAL INDICATIONS ACT 2000

LIST OF AMENDMENTS

Amending law Short title In force from

Act A1141 Geographical Indications 03-03-2003

(Amendment) Act 2002

Geographical Indications 27

DICETAK OLEH

PERCETAKAN NASIONAL MALAYSIA BERHAD,

KUALA LUMPUR

BAGI PIHAK DAN DENGAN PERINTAH KERAJAAN MALAYSIA

LAWS OF MALAYSIA

Act 602

GEOGRAPHICAL INDICATIONS ACT 2000

LIST OF SECTIONS AMENDED

Section Amending authority In force from

2 Act A1141 03-03-2003

8 Act A1141 03-03-2003

11 Act A1141 03-03-2003

11A Act A1141 03-03-2003

19 Act A1141 03-03-2003

19A ­ 19B Act A1141 03-03-2003

32 Act A1141 03-03-2003