How Malaysian Trademarks Act 2019 protects Perlis Harumanis mangoes’ GI mark

Around month of June, 2020, the Intellectual Property Corporation of Malaysia (“MyIPO”) have addressed farmers or businessmen outside Perlis to not label their mangoes as “Harumanis” as they can be held liable under the Geographical Indications (GI) Act 2000 (“GI Act”) precisely under Section 5 of the GI Act.

This is because the Harumanis mangoes or its scientific name “Clone MA 128” or Magifera indica Linn on August 2, 2011 was registered as a geographical indicator on behalf of the Perlis Agriculture Department. Clone MA 128 is an exclusive type of mango grown only in Perlis and the smallest state in Malaysia regarded its mangoes to be one of the major agricultural products and its main agricultural activities besides watermelon and sugar cane.  Perlis has allocated around 1,200 hectares of land for the cultivation of Harumanis mangoes and has reported exporting the mangoes to other countries such as Japan and Singapore and the industry is worth around US$16.8million to RM70million.

That is why strict protection is given to Perlis Harumanis as it involves high profits that contribute to the Malaysian economy. Under Section 5 of the GI Act, “The Court may grant an injunction to prevent any unlawful use of the geographical indication and award any damages and legal remedy as it deems fit.”

Further protection can be applied to Perlis Harumanis mangoes as the new Trademarks Act 2019 (“the new Trademarks Act”) also laid down protection for a trademark that contains recognized geographical indications. Under the new Trademarks Act, power is vested to Registrar to refuse to register a trademark if it consists of recognized geographical indications.

Therefore, in the event, any person would like to register Perlis Harumanis under their name and claim so as theirs is bound to be against the new Trademarks Act 2019 and Section 5 of the GI Act.

The same concept applies to Perlis Harumanis as with all the registered GIs under the MyIPO whereby the Harumanis trademark is valid for ten (10) years. According to the law, it is set to expire next year since it was registered back in 2011. Renewal of the registration may be valid for a period not exceeding ten (10) years per renewal and this shall be renewed by the applicant at least three (3) months prior to the expiration of the GI registration. If the applicant fails to apply for renewal six (6) months after the expiration, the registered GI will be taken down from the Register.

This announcement from MyIPO was made in accordance with the Perlis Harumanis Entrepreneurs Association’s plea to other Malaysian states to abstain farmers or businessmen outside Perlis from using the Harumanis mangoes’ trademark for their own locally grown mangoes. Besides knowing how vital it is to register trademarks, this also highlights the importance of trademark renewal under the law of Malaysia.