Geographical Indications in Vietnam

27 October, 2015

 

Geographic Indications, or ‘GIs’ as they are generally known, are an important measure of protection for producers of distinctive, quality goods typically produced in their region and well known as being produced in that region.

 

These products, which draw their popularity not only from their original brand, but also the conditions, produce, and production techniques which have been associated with the region in which they are produced.

 

This article summarises the current state of GI protection in Vietnam, and how new GI regions can register their denominations of origin in the country.

 

A Geographic Indication (GI) is a name or sign which identifies goods as having a specific geographical origin, and possessing qualities, reputation, or characteristics that are essentially attributable to products from that place of origin. Often, in cases where a region has developed exceptional production methods, or where the local climate or soil is especially conducive to certain agricultural products, a product’s quality, reputation or other characteristics can be determined by where it comes from.

 

Examples of GIs include sparkling wines from the Champagne region as ‘Champagne’, Gruyère cheese from Switzerland, or Longjing tea from China.

 

Whilst GIs operate in a similar way to trade marks, they differ in that they may be used by all producers who make their products in the location designated by the GI whose products share the specified qualities.

Geographic indications in Vietnam

 

GIs have been recognised in Vietnam since the promulgation of the updated IP laws in 2006. They are defined in Vietnamese law as follows:

 

‘A geographical indication means a sign which identifies a product as originating from a specific region, locality, territory or country’.

 

– Article 4 of the IP Law 2005, Paragraph 22

 

GIs include the geographical name and the signs, symbols or images associated with it. The following subject matter cannot be protected as a GI however:

 

• Names or indications which have become generic names of goods in Vietnam;
• GIs of foreign countries where they are no longer protected or no longer used;
• GIs identical or similar to an existing protected mark, where the use of such a GI is likely to cause confusion as to the origin of the products;
• GIs which mislead consumers as to the true geographical origin of products bearing such GIs

 

Obtaining GI registration in Vietnam

 

Registrations for GIs must be made by producers of the relevant GI products, or any representative body of the GI, in Vietnamese, although any documents relating to power of attorney or rights to register may be submitted in their original language. Applications are made to the National Office of Intellectual Property of Vietnam (NOIP) or its branch offices in Ho Chi Minh City or Da Nang and must

include the following documents:

 

• A registration request made in the standard form provided by the NOIP;
• Documents, samples, and information identifying the GI (e.g. a description of the particular characteristics and quality of products bearing the GI and a map of the geographical area);
• Power of attorney, where the application is filed by a representative;
• Documents evidencing the right to registration, where applicable

 

Relevant fees and charges

 

The total application cost for a GI in Vietnam comes to approximately EUR 30 including filing, initial publication, examination, certification, registration, and final publication fees.

 

Once obtained, a GI will last indefinitely, without any need to renew the registration.

 

Enforcement

 

Should your GI be infringed in Vietnam, there are three main avenues of enforcement which can be pursued; administrative actions, civil litigation, and criminal prosecution. This being said however, private mediation via legal professionals is often more effective and should be considered as a viable first action in the event of an infringement.

 

Administrative actions

 

Administrative actions are both cost-effective and time-efficient, and this is usually the most common route for companies to take when infringement has been discovered. It is a good way to deal with small-scale infringers and to gather evidence for larger scale infringements. Due to the nature of the remedies available and speed of case handling, administrative actions are an especially effective method of putting an immediate stop to on-going IPR infringement.

 

Administrative actions involve different government bodies, depending on the nature of the infringement, if the correct enforcement bodies are contacted and involved, they are usually quickly able to assess the situation and issue appropriate penalties. These include cease and desist orders, revocation of business licenses, monetary fines, and/or the confiscation and destruction of infringing goods. These penalties may not be as severe as those available through civil litigation or criminal prosecution, however they do offer a practical, realistic chance of stopping infringers quickly, and in some cases obtaining damages.

 

Civil litigation

 

Civil litigation is usually only used in the event of larger scale infringements and very few cases are brought before Vietnamese civil courts. This is partially due to the lack of proper IP training and human resources within the judicial system, resulting in somewhat unpredictable case outcomes. Vietnamese authorities are working to improve the civil system however, working in cooperation with international organisations and government agencies.

In civil actions, right holders can request provisional measures such as preliminary injunctions, as well as claim actual damages or loss of earnings. Where actual loss cannot be determined however, the maximum award is currently set at approximately EUR 18,000.

 

Criminal prosecution

 

As with civil actions, criminal prosecutions are relatively rare in Vietnam, however they also provide for the harshest penalties for infringers.

 

For GI infringement, criminal charges may be brought against infringers for the reproduction or distribution of work to the public which is both intentional, and equivalent to a ‘commercial scale’. The term ‘commercial scale’ has yet to be officially defined in law however and there is not yet sufficient case law to give an accurate estimate.

 

Criminal cases usually take around 12 months, with a further 12 month appeal proceeding. Penalties for copyright infringement include a monetary fine of up to EUR 38,000 and imprisonment up to three years. As such, favourable rulings can provide a valuable deterrent to potential future infringers.

 

However, criminal proceedings for GI infringement will only be actioned on the request of the ‘victim’ as defined by Vietnamese law. As ‘victims’ in Vietnamese law, for the purposes of legal proceedings, must be individuals, company owned marks cannot be defended in the criminal courts. As such, it is unlikely that SMEs will be able to make use of the criminal court system for the protection of GIs unless an individual GI producer can be presented as the plaintiff.