You are using an outdated browser and your browsing experience will not be optimal. Please update to the latest version of Microsoft Edge, Google Chrome or Mozilla Firefox. Install Microsoft Edge

September 22, 2023

Balancing Conflicting Rights of Geographical Indications in Vietnam

Subscribe to Updates
Managing Intellectual Property

The most familiar and well-protected IP rights are copyrights, patents, and trademarks. However, geographical indications (GIs) are also protected by TRIPS, and are perhaps the most contested rights worldwide.

Like a trademark, a GI identifies the origin of goods, but refers to a particular region which yields product qualities that cannot be replicated elsewhere. In practice, most GIs relate to agricultural products, and many originate from Europe, such as the terms Champagne, Mozzarella, and Parmesan. Due to the fundamental relationship between place and product, there have been major arguments that producers outside a specified region are not permitted to use the place name on product labels, no matter how similar their product is to the GI-protected product. A few years ago, a series of European GIs for cheese products were opposed in Vietnam by U.S. producers who considered the terms common names that should not be monopolized under the GI protection scheme. In addition, the overlapping rights between trademarks and GIs and their historically tempestuous relationship add more trauma to lawmakers and IP practitioners.

Amid this controversy, Vietnam has joined many international agreements with regard to IP and GI rights, including the TRIPS Agreement, the CPTPP, and the EU-Vietnam Free Trade Agreement (EVFTA). Although Vietnam’s IP Law has been amended to reflect these agreements, Vietnamese lawmakers still bear a heavy responsibility in drafting and issuing legislation to further guide the implementation of the amended law, to not only correctly reflect Vietnam’s international commitments, but also to balance the rights of many sides with conflicting interests regarding GIs and trademarks. This legislation includes an upcoming circular regarding industrial property rights (the “draft Circular”).

Information Transparency

The CPTPP requires GI applications or petitions to be published for opposition, and provides procedures for opposing such GIs. In addition, it requires Vietnam to “make available information sufficient to allow the general public to obtain guidance concerning the procedures and the processing for filing applications or petitions to ascertain the status of specific applications and petitions.” However, Vietnam still has no public database of GIs, apart from the corresponding publications in the IP Gazette. The establishment of such a database, including the status of GI applications and registrations and relevant information and forms for opposing a GI application or requesting the cancellation of a registered GI, is crucial for meeting this requirement.

Under current practice and as provided under the draft Circular, the contents of GI applications to be published in the IP Gazette include the abstract of the specific characteristics of the product bearing the GI and the product name bearing the GI. However, in practice, the IP Gazette has not yet specified, as required under the CPTPP, (i) an indication of the individual terms for which the protection is disclaimed in the case of multi-component terms seeking protection as GIs, or (ii) an indication of whether the GI application also includes a translation or transliteration of the name for which protection is sought.

Common Terms and Fair Market Access

The amended IP Law clearly states that a GI will not be registered if it has become the common name of goods according to the perception of relevant consumers in the Vietnamese territory. However, there is still no guidance on how to determine whether a term is the “common name.” Vietnam must issue guidance on this, taking into account the CPTPP’s provision that such factors could include dictionaries, newspapers, and relevant websites, and the way the goods are marketed and used.

In addition, exceptions in the EVFTA concerning the prior use of terms such as Asiago, Feta, Fontina, and Gorgonzola state that GI protection over those names would not bar anyone in Vietnam from continuing to use the names if they had been using them in good faith before 1 January 2017. However, to date, there is no guidance or confirmation on this, leaving the companies who satisfy such conditions in limbo.

It should be noted that the guidelines under the CPTPP are a non-exhaustive list, therefore any guidance for Vietnam should also be open. In addition, it will be more practical if a non-exhaustive list of common names is made publicly available to ensure the free use of generic terms will not be threatened by future GI applications.

Prior Trademark Rights

Under the amended IP Law, a GI will not be protected if it is identical or similar to a trademark that is currently protected or is pending under an application with an earlier filing date or priority date, if the use of that GI is likely to cause confusion as to the commercial origin of the goods. The draft Circular also stipulates that within the GI examination procedure, when the IP Office identifies marks that are identical to or closely resembling the GIs, it must notify the owner of the mark and invite opinion on the GI’s registration. This could be interpreted to mean that the IP Office would not be entitled to refuse ex officio a GI when it is confusingly similar to a prior trademark, but only when there is an objection from the trademark owner—a potential conflict with Article 117 (Refusal to grant protection) of the IP Law.

Conflict between prior trademarks and GIs has actually happened—for example, the case of the “Tan Trieu” pomelo, which was granted a GI registration certificate by the IP Office in 2012 to the Dong Nai Province People’s Committee. However, the IP Office had already granted two trademark registrations for the identical sign “Tan Trieu” to Tan Trieu Que Huong Private Enterprise in 2008, also for pomelo products. The IP Office later invalidated the trademark registrations, leaving many doubts for the public.

Meanwhile, under the TRIPS Agreement, if a trademark has been applied for or registered in good faith, or if rights to a trademark had been acquired through use in good faith before the GI was protected, whether such trademark is identical or similar to a GI shall not prejudice eligibility for or the validity of the registration or use of the trademark. However, neither the IP Law nor the draft Circular touch upon this matter. Therefore, to clear up any possible conflict between owners of trademark and GIs, the law should have clearer guidance on this issue.

Outlook

Vietnam’s efforts to rebuild its existing legal system when entering the global playing field have been commendable, and the amended IP Law and draft Circular both show promising changes. However, practical measures still need to be adopted in the country’s legal framework to truly facilitate IP rights for GI and trademark owners.

This article first appeared in Managing Intellectual Property.

Related Professionals

Practices

Intellectual Property

Location

RELATED INSIGHTS​ 

August 30, 2024
As in many other countries, registered trademarks in Indonesia that are not used for a given period of time can be canceled. A recent decision (Decision No. 144/PUU-XXI/2023) from the country’s Constitutional Court has extended the non-use cancellation period from three years to five years, applicable from July 30, 2024. This ruling could have a major impact on trademark holders in the country. Background of the Case Article 74 of Indonesia’s Trademark Law of 2016 specifies that trademarks can be canceled if they go unused in the trade of goods or services for three consecutive years from the date of registration or last use. This provision is aligned with the Paris Convention and the TRIPs Agreement. On October 27, 2023, an Indonesian individual named Ricky Thio asked the Constitutional Court to examine the constitutionality of Article 74, arguing that it opened a pathway for third parties to eliminate trademarks owned by small and medium-sized enterprises (SMEs), and did not provide certainty to his registered trademark in terms of the period of protection. Additionally, he argued that the period of three consecutive years was burdensome for SMEs, and asked the court to void Article 74 and add force majeure circumstances—such as Covid-19—as an exemption to non-use cancellation. Mr. Thio submitted this request while he was defending his trademark registration from a non-use cancellation request filed by Zhejiang Dahua Technology Co., Ltd. In his defense to that cancellation request, Mr. Thio explained that the non-use of the trademark was due to the Covid-19 pandemic. The cancellation case followed a different judicial pathway, and was under appeal before the Supreme Court at the time Mr. Thio filed his request for judicial review with the Constitutional Court. Mr. Thio’s case also attracted the submission of an amicus brief—a relatively new trend in Indonesia—from
Read More
August 30, 2024
In 2023, Vietnam’s Intellectual Property Rights Infringement Prevention Cooperation Program reported that 776 cases of IPR infringement were resolved nationwide. Of these, 546 were addressed through administrative measures, while criminal proceedings were initiated in just five cases. These statistics clearly show that administrative measures overwhelmingly dominate the response to counterfeit goods, with criminal actions being relatively rare. This raises an intriguing question: Why do IPR holders prefer administrative routes over criminal measures in Vietnam? And what challenges and obstacles make criminal enforcement less commonly pursued in these cases? Overlapping legal provisions Under Vietnam’s Penal Code, two key offenses address counterfeit goods: Manufacturing and trading in counterfeit goods under Article 192. Manufacturing and trading in industrial property rights-infringing goods under Article 226. Both provisions regulate counterfeit goods, yet they suffer from a lack of clear definitions and guidelines for application. Article 192 does not explicitly define “counterfeit goods”. Instead, authorities refer to Article 3.7 of Decree No. 98/2020/ND-CP, as amended, which outlines several categories of counterfeit goods, including: (i) utility counterfeits (goods not meeting normal expectations of usage or function), (ii) substandard goods, (iii) counterfeit goods based on misrepresentation, and (iv) counterfeit stamps, labels, and packaging. Meanwhile, Article 226 specifically deals with counterfeit goods that infringe trademark rights. These “trademark-counterfeit goods” are defined under Article 213.2 of the IP Law as goods or packaging bearing trademarks or signs that are identical or confusingly similar to protected trademarks for the same goods, used without the trademark owner’s permission. In this regard, “counterfeit goods” and “trademark-counterfeit goods” are treated as distinct, non-overlapping concepts, each corresponding to a separate offense. However, in practice, there is often a gray area where the two overlap. Many cases involve infringing goods that meet the criteria for both categories, allowing authorities to apply both regulations simultaneously. For
Read More
August 30, 2024
With the emergence of online marketplaces and e-commerce platforms, consumers have transformed their ways of engaging in transactions, gaining unprecedented convenience and access to a vast array of products. These platforms allow small businesses and individual entrepreneurs to reach a wider audience in an increasingly competitive market. Challenges in Tracing Online Infringers The growth of these online marketplaces and e-commerce platforms has also given rise to challenges, particularly in locating the actual identity of online infringers and combating intellectual property infringement activities. Online infringers often take advantage of anonymity to offer counterfeit products for sale on their platforms. Not only do these online infringing activities violate the rights of IP owners, but they also involve the sale of counterfeit products that are often manufactured with inferior quality and may pose significant risks to consumers’ health and safety. In today’s modern world, tracing the actual identity of online infringers proves challenging, as infringers adopt numerous methods to conceal their identity. The most frequently used method is using a fake name and address when dispatching parcels to consumers, making it difficult to verify the seller’s identity and the location of the sender on the parcel package. Some infringers exploit cash-on-delivery logistics services to prevent the disclosure of their identity, such as bank account numbers and bank account owner names, which would typically be required for direct payments. Instead, the shipping company collects the payment on their behalf, allowing the infringers to remain anonymous and making it more difficult to find their actual identity. Thailand’s New Regulations on Cash-on-Delivery Logistics Services Recently, the Committee on Contracts of Thailand’s Consumer Protection Board announced the Notification regarding Stipulation of Cash-on-Delivery Logistics Services as a Controlled-Receipt Business B.E. 2567 (2024) under the Consumer Protection Act B.E. 2522 (1979) in the Thai Royal Gazette dated July
Read More
August 7, 2024
A recent case at the Myanmar Competition Commission has set a significant precedent in the country’s approach to unfair competition practices. The case, involving a Thai manufacturer of cement grout and tile adhesive products and a local Myanmar producer, highlighted the Commission’s willingness to address issues of deceptive marketing and unfair competition. Background The case centered around a Thai manufacturer who has been distributing their cement grout and tile adhesive products in Myanmar for many years through local distribution agents. The company had established a well-known brand and a strong reputation for quality in the Myanmar market. In recent years, the Thai company discovered that a local individual in Myanmar was manufacturing and selling similar products with packaging nearly identical to their own. The local producer was using the same mark device, color, and packaging design themes, and the products contained deceptive information. Legal Proceedings After an initial cease-and-desist letter failed to resolve the issue, a complaint was submitted to the Myanmar Competition Commission. The case was notable because the Commission typically does not address issues of copying designs, marks, colors, or packaging themes. However, the complaint emphasized that the local individual was misleading customers and competing unfairly by using deceptive information and copying distinctive designs and themes. Lawyers from Tilleke & Gibbins, representing the Thai manufacturer, provided extensive documentation proving their client’s long-standing presence in the Myanmar market and the local individual’s deceptive practices. The Commission’s Investigation Committee conducted a thorough investigation, including market surveys and hearings involving both parties. Commission’s Decision After nearly a year of deliberation, on July 4, 2024, the Decision-Making Committee of the Myanmar Competition Commission ruled in favor of the Thai manufacturer. The decision required the local individual to: Immediately cease the production and distribution of cement grout and tile adhesive products bearing
Read More