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​ 

May 9, 2023
On April 26, 2023, the Vietnamese government issued Decree No. 17/2023/ND-CP detailing some articles and enforcement measures of the 2022 Intellectual Property Law with respect to copyright and related rights (Decree 17). Decree 17 took immediate effect upon issuance, and provides long-awaited, necessary guidance for implementation of the IP Law, which took effect on January 1, 2023. The official regulations set out significantly new requirements on copyright and related rights in comparison to the draft version of the decree circulated in 2022. Some of the most critical provisions include the following: Detailed Definitions of Terms Decree 17 provides detailed definitions of copyrightable subject-matters, including “literary and scientific works, textbooks, curricula, and other written works”; “lectures, speeches, and other talks”; “journalistic works”; “musical works”; “cinematographic works”; and others. Exceptions to Copyright Infringement Section 1 of Chapter III sets out the exceptions to copyright infringement, including, among others: Reasonable reproduction of part of a work using a copying device for scientific research, personal study, or non-commercial purposes. Using a work in official activities of state agencies. Using reasonable extracts/excerpts of a work. Using a work in library activities for non-commercial purposes Reasonable reproduction of part of a performance, audio recording, video recording, or broadcast. Enforcement Against Infringements The entire Chapter VI covers the protection of copyright and related rights to a very detailed extent, including: Presumption of copyright and related rights; Technological measures to protect rights; and The basis for determination of subjects entitled to copyright and related rights protection. The mechanisms to determine infringements and damages are clearly provided, including: Grounds for determining the nature and extent of infringement; Principles for the determination of damages; and The definition and calculation of mental loss, property damage, decline in income and profit, and loss of business opportunities. Decree 17 also adds a
Read More
May 8, 2023
When a company promotes its products or services, it will naturally use laudatory terms or phrases to describe their quality. However, in Vietnam, such use could constitute trademark infringement, as many terms with a descriptive or laudatory nature have been granted registration as trademarks, often without disclaimers. Examples include “Nuoc Mam Me Lam” (“Fish sauce made by mom”) under Reg. No. 392575 for fish sauce, “Drink it, Wear it” under Reg. No. 387444 for clothing retail services, and “Making Cancer History” under Reg. No. 388177 for healthcare services. Imagine a case where a hospital advertises that its cancer treatment services can help “make cancer history.” Would such advertisement be considered trademark infringement of the registered mark “Making Cancer History”? Fair use or infringement? Under the doctrine of descriptive fair use commonly adopted worldwide, a third party, even a direct competitor, may use another party’s descriptive trademark to describe its own products or services, even if such mark has acquired secondary meaning. However, that use can only be in a purely descriptive manner. Descriptive fair use requires that the mark being used actually describes a quality or attribute of the goods or services, rather than indicating the source. The descriptive words must also be used in the normal course of language. In addition, the mark must be used in the text portions of an advertisement and not as a banner or in any other manner that sets it apart from the other words in the sentence or paragraph in which it is used. To be nominative fair use, such use should accurately refer to a trademark owner or to goods or services and cannot be misleading or defamatory, or imply endorsement or sponsorship by a trademark owner. Vietnam does not have any detailed regulation on fair use of descriptive marks.
Read More
May 8, 2023
Myanmar’s long-awaited first-to-file trademark registration system came into full effect on April 26, 2023, with the “grand opening” of the country’s Intellectual Property Department (IPD). This followed the issuance of the Trademark Rules and other related notifications at the beginning of April, in conjunction with the Trademark Law coming into force. Full enforcement of this law is a milestone in Myanmar’s long quest to establish a functioning, modern framework for trademarks in particular and for IP in general. The Trademark Law was passed in 2019 as part of suite of laws meant to modernize the country’s treatment of IP rights. Previously, IP rights holders in Myanmar relied on outdated systems based largely on laws from the colonial period under British rule. For example, brand owners could achieve some measure of protection through establishing use in the country and recording their marks with the Office of Registration of Deeds (ORD). However, these protections were limited and did not provide the same level of security and legal recourse as a comprehensive trademark registration system. Without a proper system in place, businesses were vulnerable to infringement and counterfeiting, which could be detrimental to their reputation and bottom line. The new Trademark Law will provide much-needed protection to brand owners and encourage innovation and investment in Myanmar, bringing the country in line with other Southeast Asian nations that have already implemented modern IP laws and systems, such as Thailand and Vietnam. Features of the Trademark Law In addition to the increased protection and streamlined filing procedures, the Trademark Law offers a range of other salient features: Administration: The core government ministry administering the new Trademark Law is the Ministry of Commerce. Four other ministries—the Ministry of Information; the Ministry of Industry; the Ministry of Agriculture, Livestock and Irrigation; and the Ministry of Education—are
Read More
April 25, 2023
As in many countries around the world, IP laws in Southeast Asia do not currently specify whether works generated by artificial intelligence (AI) are protected by copyright, and there is also uncertainty surrounding the issue of ownership with respect to works created by AI. While changes to the IP legal framework are expected to respond to the rapid development of AI technologies, existing copyright laws of most countries in Southeast Asia explicitly impose the requirement of a human author for copyright protection to arise. AI-Generated Works and the Law This is similar to the position in the United States, where the US Copyright Office issued a policy statement in March 2023 reiterating the US Copyright Act’s requirement of human authorship to register copyright works. The policy document states that when an AI technology determines the expressive elements of the output, the generated materials do not fulfil the human authorship requirement. However, the US Copyright Office also clarified that certain works containing AI-generated materials may nonetheless contain sufficient human authorship for a copyright claim, such as when a human selects or arranges the AI-generated materials in a sufficiently creative way for the resulting work as a whole to constitute an original work of authorship, or when an artist modifies material originally generated by AI technology to a degree that meets the standard for copyright protection. This is distinguishable from the position in countries such as the UK and Hong Kong, where absent specific provisions addressing AI-generated works, such works may arguably be considered by some as computer-generated works, with authorship assigned to the person who arranges for creation of the work. New Challenges from Generative AI The ongoing legal uncertainties surrounding the ownership and protection of AI-generated works create practical challenges for businesses that use or develop generative AI tools.
Read More