Geographical Indications in the Law on Intellectual Property of 2022
By Le Quang Vinh, Senior Partner – Bross & Partners
To comply with the international commitments after joining the new generation trade agreements including CPTPP, EVFTA and RCEP, Vietnam has revised quite a lot of regulations related to subject matters of intellectual property rights, especially including Geographical Indications (GIs) under the Third Amendment to the 2005 IP Law (the “2022 IP Law”) which has just been passed by the National Assembly on June 16, 2022. The 2022 IP Law replaces the 2009 First Amendment and Second Amendment to the 2005 IP Law (the “2005 IP Law”). The IP Law 2022 will take effect from January 1, 2023 except for provisions on sound marks that was effective since January 14, 2022 and provisions on protection of experimental data for agricultural chemical products that will be effective from January 14, 2024. Bross & Partners shall hereunder update some vital changes concerning Geographical Indications.
Re-defining GIs and Adding Homonymous Geographical Indications
The 2022 IP Law inverts the legal sign “geographical origin” before “product” bearing such geographical origin. Whereby, the 2022 IP Law redefines a geographical indication as a sign used to indicate the geographical origin of a product as originating from a specific area, locality, region or country. The 2022 IP Law also adds the concept of homonymous GIs the first time, stipulating that homonymous GIs are geographical indications having same pronunciation or spelling.
Condition for Protection of Homonymous GIs
Since geographical indications are often the names of regions, areas, or territories, it is likely for similar geographical indications to be co-existing with respect to a particular product in a particular market. Such possible concurrence of GIs having the same spelling or pronunciation can mislead consumers into believing that the products bearing those geographical names have same origin. For example, EU’s GI Prosecco filed in Australia is opposed by the Winemakers’ Federation of Australia (WFA) on the grounds that Prosecco is the appellation of a grape variety commonly used in Australia since the 1990s.
The 2022 IP Law only protects homonymous geographical indications upon the competent authority has carefully reviewed 02 factors: (a) geographical indications are used in practice in a manner that does not cause confusion to consumers as to the geographical origin of the product bearing the geographical indication; and (b) the fair treatment principle is ensured among organizations and individuals producing products bearing such geographical indications. In order to examine the eligibility of protection of homonymous GIs, applicants must provide documents explaining the conditions for use and mode of presentation of such geographical indication to guarantee their distinctive characters.
Right to Registration of Geographical Indications
As far as Vietnamese GIs is concerned, a collective organization acting for an organizations or individuals those who produce products bearing GIs or the local administrative agency where GIs are located may exercise the right to register GIs but only the State has ownership over such GIs. For foreign GIs, entitlement to register a GI is determined in accordance with the laws of the country of origin where such GI is originated.
Two Mechanisms for Opposition of GI Applications
The 2022 IP Law adds for the first time a new mechanism allowing a third party to oppose an application for registration of a geographical indication in addition to third party’s written opinion kept unchanged. It is worth noting that while the third party’s written opinion would only serve as a reference source for examining a GI application, it seems that legislators seek to develop an additional mechanism to oppose the GI application as an independent new opposition procedure (not a reference source for the processing of a trademark application). Please also bear in mind that unlike a third party’s written opinion that can be filed any time calculating from the point of time an applied-for GI is published in the Industrial Property Official Gazette until prior to the date of decision on grant of title of protection, any third party may only file an opposition to that GI application within 3 months since the publication date of the GI application.
Counterfeit Geographical Indications Goods
The 2022 IP Law expands the scope of determining acts of production and sale of counterfeit GI goods, specifically acts of forging stamps and labels containing signs identical or similar to the extent that it is difficult to distinguish from the registered GI used for the same item of goods, and those identical or similar signs are put onto goods by organization or individual without the GI owner’s permission in accordance with the 2022 IP Law or according to the laws of country of origin having the GIs.
It should be noted that the act of producing, trading in or forging stamps and labels containing signs identical or similar to the extent that it is difficult to distinguish from the protected geographical indication used for the same item may constitute a crime infringing industrial property rights and may be prosecuted for penal liability under Article 226 of the Penal Code as amended in 2015 if all the crime constituent elements are satisfied, especially the element of on a commercial scale basis, ie. infringing goods worth from 200 million VND ($8,800) or more.
Bross & Partners, an intellectual property company ranked First (Tier 1) by Legal 500 Asia Pacific, has experience in resolving complicated IP disputes including trademarks, domain name, copyrights, patents, plant varieties.
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