Biopiracy – a Dangerous Form of Impersonation of Agricultural Brand Names

Biopiracy – a Dangerous Form of Impersonation of Agricultural Brand Names[1]

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Impersonating Agricultural Brands

According to the Vietnamese dictionary, impersonation means borrowing someone else's name to do something for oneself or impersonating another person (usually to do something shady).[2] The online Collins Dictionary defines impersonation as pretending to be another person with the intent to deceive. [3]

In commercial activities, impersonation is a common phenomenon. For example, most recently, the phenomenon of impersonating ST25 rice awarded the world’s best rice in 2019 appeared a lot on the signs of stores, shops, or is widely promoted and offered for sale on the internet while the renowned breeder of the ST25 rice variety who created the ST25 rice crop and won the world's best rice award in 2019, engineer Ho Quang Cua, told Vietnamnet that "it's only been 2 months since the seed has been sold, has not the ST25 rice been available so as to widely offer for sale on the internet?!”.

In 2018, many newspapers also reflected the fact that farmers in Ly Son island district expressed their deep concern about many traders and businesses impersonating Ly Son garlic. It is known that Ly Son garlic, a famous specialty, is a type of garlic with a mild spicy flavor, not as pungent as other types of garlic grown in 3 communes An Binh, An Hai and An Vinh of Ly Son island district, Quang Ngai province. On June 29, 2020, Ly Son garlic was officially protected in the form of a geographical indication under Decision 2421/QD-SHTT of the Director of the Intellectual Property Office of Vietnam.

Like Vietnam, impersonation of famous agricultural product brands also frequently appear in other countries. For instance, the Thai government is also struggling to combat the phenomenon of impersonating Thai Hom Mali rice, a famous traditional Thai rice product called Thai jasmine fragrant rice or alternatively Khao-hom-ma-li-Thai. In English, this well-known rice is officially called Thai Hom Mali rice or another name is Thai Jasmine rice.[4]

Biopiracy – a dangerous new form of impersonation

In the 1990s, another form of impersonation caused great concerns in developing countries having their long tradition in cultivating and producing rice and rice grains was the phenomenon of biopiracy which is understood to refer to the usage, appropriation of traditional knowledge, stealing biological genetic resource without authorization and compensation to legally transform into IP rights, ie. in the form of patents. According to the New York Times, Texas-based Ricetec Inc. filed an application for grant of patent for a type of new rice variety with the USPTO naming Basmati rice and this caused a fierce conflict lasting many years between the Indian Government the US Government. India is worried that if a patent is granted for the Basmati hybrid rice variety, which Ricetec also named identical with the Basmati rice variety centeries-long grown in India and Pakistan, it will lead to the fact that Indian Basmati rice (India is the world's largest exporter of Basmati rice) exported into the US, would be blocked at the US customs because of patent infringement. During the case of Basmati remained tensive between the US and India, around November 2001, it was the turn of the Thai Government to hire attorneys to find a way to prevent the US from granting a patent in favor of an American breeder Chris Deren who claimed patent protection for a new rice variety developed through using genetic resources based on the Thai Jasmine Rice.

Thailand's experience in combating impersonation of Thai Hom Mali Rice and Suggestions for Vietnam

While the name Thai Jasmine Rice has become a common name (generic mark), the Thai Government quickly thought of a strategy to both combat the phenomenon of generics and combat impersonation of Thai Jasmine Rice rice by endevoring to register its reputable rice brand name Thai Hom Mali Rice as a certification mark in the United States. In 2004, the national brand Thai Hom Mali Rice was filed by the Department of Foreign Trade under the Thai Ministry of Industry and Trade and ultimately granted certificate of certification mark no. 2,816,123 by the USPTO.

The best way to protect Vietnamese agricultural product brands abroad, especially in the US market, is that Vietnam should build and quickly protect geographically originated specialty brands including ST25 rice in the form of certification mark with the USPTO. Having done so would aim at both targets of combating impersonation, counterfeiting and probably avoiding the risk of these brands becoming generic similar to Indian Basmati rice or Thai Jasmine rice. On the other hand, we also need to keep a close eye on the possibility that foreign breeders or inventors, those who can foresee commercial benefits big enough as they used to anticipate monetary significant values of Basmati rice or Thai Jasmine rice, may claim a patent for a new hybrid plant crop based on the genetic resources of indigenous plant varieties likely including the Vietnamese rice variety ST25.

Bross & Partners, a Vietnam intellectual property law firm ranked Tier 1 in 2021 by Legal 500 Asia Pacific, has experience in resolving intellectual property rights disputes including trademarks, copyrights, patents, plant varieties in Vietnam and abroad.

Should you need any assistance, please contact: vinh@bross.vn; mobile: 0903 287 057; Zalo: +84903287057; Skype: vinh.bross; Wechat: Vinhbross2603.