1.38. The representative of Malaysia said that his delegation welcomed the initial results of the consultations in the form of a draft composite text on all six elements of the proposed multilateral register. While the text was still being studied in capital, his delegation would like to make some preliminary comments, in particular on the subject creating the greatest difficulty for Malaysia, i.e. legal effect or consequences of registration. In that respect, his delegation's particular concern was paragraph D.1. Malaysia did not agree that Members should be obliged to consider that the inclusion of a term in the register constituted prima facie evidence that the term fulfilled the definition of a GI under the TRIPS Agreement. This would assume that just because a term was a GI in one country, it was also a GI in another country. This argument was flawed as words could mean different things to different people in different places.
1.39. He said that his delegation had further difficulties with accepting the contents of the register as prima facie evidence. Firstly, this would go against the principle of territoriality of IP protection. To give an illustration, he said the current position was that, in order to obtain GI protection in Malaysia, the applicant would have to submit his application in Malaysia and, once his application was approved and included in the Malaysian register, the applicant would be issued a certificate of registration. This certificate was then prima facie evidence that the term fulfilled the definition of a GI in Malaysia. However, if the register would constitute prima facie evidence that the term fulfilled the definition of a GI, this would mean that the GIs included in the multilateral register would have the same legal weight and value as a GI that had been registered in Malaysia. Hence, there would no longer be a need for any foreign GI owner to seek registration of a GI in Malaysia to obtain protection there. They would simply register their GI in their country of origin and then, once the GI had been notified to the WTO and included in the WTO register, the owner would have the same legal rights and effects as if he had registered the term in Malaysia under the Malaysian law.
1.40. Secondly, the proposal also reversed the burden of proof. While normally, in order to obtain IP protection, the burden was on the applicant to prove that the subject-matter fulfilled the required criteria, this burden was reversed in paragraph D.1. This paragraph introduced a presumption that the term was indeed a GI and it was for others to prove that the term was not a GI. This reversal of the burden of proof was inappropriate and could have serious consequences on the protection of the public domain. When an IP right was granted, it came at a cost to the public. The public suffered a loss because the subject-matter was taken away from the public domain and exclusive rights over it were given to an individual. Therefore it was important that there were safeguards that prevented the public from suffering any unnecessary losses and that those who sought to obtain a right should prove that they were deserving of this right. Placing the burden to prove that the subject-matter fulfilled the criteria to receive IP protection on the applicant safeguarded the interest of the public because it ensured that a subject-matter would be taken away from the public domain only in cases where the applicant deserved holding their IP rights. Reversing the burden of proof as suggested would therefore have serious implications for the rights of the public and erode the safeguards that the law imposed.
1.41. He noted that, under the current draft composite text, once a term was notified the administering body did not perform substantive examination, but only carried out formality checks before including the term in the register. This meant that accepting that registration had prima facie effects was equivalent to recognizing the original registration in the originating Member. This posed a problem for several reasons. As the registration of a GI was the end result of the registration process, Members were being asked to recognize this result without any assurances that the process of registration itself was credible. Currently Members used many different procedures for recognizing and registering GIs, including through a registration process, judicial decisions or through international agreements. Some of these procedures were stricter than others. For example, if a GI gained recognition through a judicial decision, the evidentiary and procedural requirements of judicial proceedings would apply, which would entail a high burden of proof. In contrast, if a GI gained recognition through a registration process, the burden of proof would be less since it was an administrative proceeding. The registration processes in Members also differed with respect to strictness. In light of the different procedures and systems that Members had in place in recognizing and registering GIs, it would be inappropriate that the same legal weight should be accorded to all.
1.42. His delegation also disagreed with the view that having a simple register with no legal effects would be ineffective in facilitating the protection of GIs. This could be illustrated by looking at the other branches of intellectual property. With regard to patents, when an examiner examined a patent application, he would have to determine the inventiveness and the novelty of the invention. Patent examiners normally searched on certain recognized databases, such as the databases of the European Patent Office, the US Patent and Trademark Office and of other offices such as those in Japan or Korea. This was currently the common practice in Malaysia. Nothing in Malaysian law required consultation of these foreign databases or obliged Malaysia to give certain weight to them. However, as a matter of practice, they were almost always relied on by examiners and had proved to be useful. Hence even though there was no legal requirement to consult or give specific weight to the content of these registers, they were still useful in helping patent examiners making decisions regarding the patentability of the invention. His delegation believed that the same was true for the proposed GI register which, even without legal effects, would be useful and would facilitate GI protection. His delegation was looking forward to providing views on the specific drafting of the text in the next open-ended drafting session.
