THE PROTECTION OF GEOGRAPHICAL INDICATION PROCEDURE IN 2021

In the general market tendency, the commercial reputation of the business is created through signs associated with their goods such as trademarks or geographical indications. In there, the product of individuals or organizations bearing the protected geographical indication will build the trust of the sources, reputation and consistency of goods.

With the following analysis, Law Plus will go deeper into the overall analysis of the registration process of geographical indications, as well as a few notes about the protection of geographical indications, to help enterprise have an overview to implement registration for a geographical indication.

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1. What is a geographical indication?

Geographical indication is a legal concept that originates in Europe, and is widely disseminated within the World Trade Organization through the Agreement on Trade Aspects related to intellectual property rights. (TRIPs Agreement): “A geographical indication indicating a good originating from a territory or area has a certain quality, prestige or character by its geographical origin and/or human or natural factors creates.”

Based on the provisions of international law, the Vietnam Intellectual Property Law has defined “Geographical Indication” as “a sign which identifies a product as originating from a specific region, locality, territory or country”. Thus, geographical indications including geographical names, signs, symbols and symbolic images must be visually identified.

Industrial property rights to geographical indications are established on the basis of granting protection decisions issued by a competent state agency according to registration procedures regulated in the Intellectual Property Law or international registration recognized under the provisions of the international treaties to which the Socialist Republic Vietnam Association is a member.

2. The conditions for the protection of geographical indications

The effective use from the registration for protection of geographical indications is not only using and attaching business indications by stamps and trademarks, but also in order to develop the reputation of the enterprise in the economy business market, improve product quality through the operation of an enterprise or organization for the purpose of brand development.

a. A geographical indication is protected if the following conditions are satisfied:

(i) The product bearing the geographical indication originates from the area, locality, territory or country corresponding to such geographical indication;

(ii) The product bearing the geographical indication has a reputation, quality or characteristics mainly attributable to geographical conditions of the area, locality, territory or country corresponding to such geographical indication. According to:

+ Reputation of products bearing a geographical indication shall be determined on the basis of consumers’ trust in such products through the extent of their being widely known to and selected by consumers.

+ Characteristics of products bearing a geographical indication shall be defined by one or several qualitative, quantitative or physically, chemically, microbiologically perceptible criteria which can be tested by technical means or experts with appropriate testing methods.

b. Subjects are not protected as the geographical indications

(i) Names or indications which have become generic names of goods in Vietnam;

In case, geographical information has become generic name of the goods, and has been lost the ability to indicate the geographical origin, in other words, the origin of goods is no longer protected under the geographical indication meaning.

(ii) Geographical indication of foreign countries where they are not or no longer protected, or no longer used;

Specifically, geographical indications in foreign countries will not be protected as geographical indications in Vietnam if they are not protected and are no longer used.

(iii) Geographical indication identical with or similar to a protected trademark, where the use of such geographical indications is likely to cause a confusion as to the origin of products;

When a trademark is protected and the product registered for the geographical indication coincides with that trademark, the intellectual property law stipulates that such product will not be protected.

(iv) Geographical indication which mislead consumers as to the true geographical origin of product bearing such geographical indications.

When consumers misunderstand the origin of the product bearing the indication, the law stipulates that the product bearing such indication will not be protected.

Therefore, if a geographic name is registered for a product that belongs to one or more of the four cases above, it will not be protected as a geographical indication.

c. Geographical conditions relevant to geographical indications and its areas

Geographical conditions relevant to a geographical indication means natural and human factors decisive to reputation, quality and characteristics of products bearing such geographical indication.

Natural factors shall include climatic, hydrological, geological, topographical and ecological factors and other natural conditions.

Human factors shall include skills and expertise of the producers, and traditional producing processes of localities.

Geographical areas bearing geographical indications must have their boundaries accurately determined by words and by maps.

Geographical indication “Dak Ha” for coffee products in Dak Ha district, Kon Tum province. Source: http: //www.noip.gov.vn/

3. Subjects have the rights to register ownership to the Vietnamese geographical indications

According to the provisions of Vietnamese law, geographical indications are property owned by the State, so the right to register and use them belongs to the State. However, the State does not directly implement these rights but allows:

(i) Organizations and individuals that produce products bearing geographical indication;

(ii) Collective organizations representing such organizations and individuals, or;

(iii) The administrative management agencies of localities to which such geographical indication pertain to implement.

With geographical indications originating in foreign countries, the subjects have the right to register, and the organizations and individuals have the right to use the geographical indications in the country of origin.

4. Geographical indications are not assigned

Unlike other types of intellectual property, the Intellectual Property Law regulates on the restrictions on assignment of industrial property rights: “Rights to geographical indications shall not be assigned”. Accordingly, the right of geographical indication is a special industrial property right and it cannot be assigned. Because the person who implement to register a geographical indication of Vietnam does not become the holder, but the holder of it is the State of Vietnam.

In addition, a geographical indication identifies an address, a region with distinctive, easily identifiable, and attractive features, with benefits to that place. With the aim to develop, maintain its distinctive character and keep its geographical name of development and make profits with the natural features such as culture, topography, climate… of that area, the geographical indication for a place is fixed, and cannot be transferred from this local to one another.

5. Form of filing a geographical indication protection application in Vietnam

The applicants can choose either the paper application form or the online application form through the NOIP’s online public service portal, specifically:

5.1. A geographical indication registration application includes the following documents:

+ Declaration: according to a prescribed form, with enough information for applicants identification;

+ The description of the peculiar characteristics of the product bearing the geographical indication;

+ Receipts of payment of fees and charges;

+ Power of attorney (in case the request is filed through the documents certifying representative);

+ Documents certifying the registering application;

+ Documents certifying the applicant enjoys the right to register from another person;

+ Documents evidencing the right of priority (if the patent application has a claim for priority right).

+ In the case of a foreign geographical indication, additional documents proving that it is being protected in the country where it is located must be submitted.

5.2 Application form

Applicants can choose to apply directly or via mail to the National Office of Intellectual Property of Vietnam or its representative offices.

Vietnamese organizations, individuals, and foreign individuals permanently residing in Vietnam and foreign organizations and individuals having production and business in Vietnam can apply for registration directly through their legal representatives in Vietnam.

The foreign individuals not permanently residing in Vietnam, the foreign organizations and individuals that do not have a business production establishment in Vietnam shall submit their registration application through their legal representative in Vietnam.

The conditions for online application: Applicants need to have digital certificates and digital signatures, together with a register account on the Online Application Processing System approved by NOIP to implement of industrial property registration.

Farmers harvested Cau Duc pineapple, a geographical indication in Vinh Vien A Commune, Long My District, Hau Giang province. Source: http: //www.noip.gov.vn/

6. Time limit for applications processing and validity protection of geographical indications in Vietnam

– From the date on which the registration application is received by the NOIP, the geographical indication registration application shall be considered in the following step:

  • Form appraisal: 01 month.
  • Application publication: 02 months from the date the geographical indication registration application has the decision to accept a valid application.
  • Content appraisal: within 06 months from the date of application publication.

– Geographical indication registration certificate takes effect indefinitely from the date of its granted.

The protection of geographical indication decision records the organization managing the geographical indication, the organizations and individuals using the protected geographical indication or geographical indication, and the specific characteristics of the bearing product, geographical indications, the specific characteristics of geographical conditions and the geographical area bearing the geographical indication.

– A indication registration certificate may be cancelled by a third party in the following cases:

(i) The protection registration application has no right to register; or

(ii) The geographical indication in the application does not meet the standard requirements by the regulations.

(iii) The validity of a geographical indication protection registration certificate may be terminated due to geographical conditions related to the reputation, quality or characteristics of the product bearing the changed geographical indication. This leads to the loss of the product’s reputation, quality or characteristics.

7. Note for enterprise to protect geographical indications from infringements

7.1. The following acts, if performed without the permission of the holder of the registered geographical indication, shall be regarded as infringements to the rights of registered geographical indication:

(a) Using protected geographical indication for products which do not satisfy the criteria of peculiar characteristics and quality of the product bearing the geographical indication, although such products originate from geographical areas bearing such geographical indication;

(b) Using protected geographical indication for products similar to the products bearing the geographical indication for the purpose of taking advantage of their reputation and popularity;

(c) Using any sign alike, or similar to, a protected geographical indication for products not originating from geographical areas bearing the geographical indication, and therefore misleading consumers into believing such product originate from such geographic area;

(d) Using protected geographical indication of wines or spirits not originating from geographical areas bearing such geographical indication, even where the true origin of goods is indicated or geographical indications are used in the form of translation or transcriptions or accompanied by such words such as “category”, “model”, “type”, “imitation” or the like.

7.2. In order to protect geographical indications of products, enterprise can protect by taking certain measures or request for protection from a competent state authority, such as:

  • Applying technological measures to prevent acts of infringement of intellectual property rights;
  • Requesting organizations or individuals that commit, terminate the infringing acts, publicly apologize, rectify the infringement, and compensate damages;
  • Requesting the State competent authorities to handle the infringement of intellectual property rights according to the provisions of this Law and other relevant provisions.
  • Initiating a lawsuit at courts or arbitration centers to protect legitimate rights and interests.

In addition, depending on the properties and level of infringements, such acts may be handled in accordance with the administrative, civil, criminal and customs control law.

The above is LawPlus ‘s entire analysis related to the protection of geographical indications in the Vietnam’s market. If you need detailed advice, please contact LawPlus at hotline: +84 2682 779 399 or email info@lawplus.vn.

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