Geographical indication registration in Vietnam

Geographical Indication registration is essential for traditional or local goods such as foods in each country. Viet An Law Firm is an intellectual property representative organization of the Vietnam Intellectual Property Department. After nearly 20 years of operation, Viet An Law Firm is proud to be one of the most prestigious law firms, providing the best services to customers in the field of legal consulting and intellectual property consulting and representation services in Vietnam. In the following article, Viet An Law will guide you through procedures of geographical indication registration in Vietnam according to current law.

Legal basis

• Law on Intellectual Property 2005, as amended and supplemented 2009, 2019, 2022.
• Decree 65/2023/ND-CP details and guides the implementation of several articles of the Intellectual Property Law on industrial property.

Rights to geographical indications under Vietnamese law

According to the provisions of Article 6 of the Law on Intellectual Property, industrial property rights to geographical indications are established based on a decision to grant a protection title by a competent state agency according to registration procedures as prescribed in this Law or in international treaties to which Vietnam is a member.

Protection conditions for geographical indication in Vietnam

A geographical indication is a sign used to indicate the geographical origin of a product from a specific area, locality, territory, or country. General conditions for protected geographical indications are as follows:

• Products bearing geographical indications have geographical origin from the region, locality, territory or country corresponding to the geographical indication;
• Products bearing geographical indications have reputation, quality or characteristics mainly determined by the geographical conditions of the area, locality, territory or country corresponding to that geographical indication.

Application for geographical indication registration in Vietnam

• Registration declaration according to Form No. 09, Appendix I, Decree 65/2023/ND-CP;
• Documents, samples, and information showing geographical indications registered for protection, including:

1. Names and signs are geographical indications;
2. Products bearing geographical indications;
3. A description of the characteristics, specific quality, and reputation of the product bearing the geographical indication and the typical elements of natural conditions that create the specific characteristics, quality, and reputation of that product (after this is called a description of specific properties);
4. Map of the geographical area corresponding to the geographical indication;
5. Documents proving that the geographical indication is being protected in the country where that geographical indication is located if it is a foreign geographical indication;
6. For homonymous geographical indications, documents explain the conditions of use and the way of presenting geographical indications to ensure the ability to distinguish between geographical indications.

• Document proving the right to register a geographical indication, if the applicant enjoys that right of another person;
• Documents proving priority rights, if there is a claim for priority rights, include one of two or both of the following types of documents:
  • Copy of the first application or applications certified by the agency that received the first application;
  • Certificate of transfer of priority rights if that right is inherited from another person.
• Proof of payment of official fees.
• Power of attorney (if the geographical indication registration application is submitted through industrial property representative Viet An Law);

Note: The description of specific characteristics must have the following main contents:

• Description of the respective product, including raw materials and physical, chemical, microbiological, and organoleptic properties of the product;
• How to determine the geographical area corresponding to a geographical indication;
• Evidence that the type of product originates from the geographical area;
• Describe local and stable production and processing methods;
• Information on the relationship between the characteristics, specific quality, or reputation of the product and geographical conditions;
• Information on the self-inspection mechanism for specific properties and quality of the product.

Procedures of geographical indication registration in Vietnam

Step 1: Receive geographical indication registration application

Registration applications can be submitted in person or sent by post to the headquarters of the National Office of Intellectual Property.

Step 2: Formality examination of the geographical indication registration application

Check the compliance with the regulations on the form for the application, thereby concluding whether the application is considered valid or not.

In case the dossier contains errors, the National Office of Intellectual Property will send a Notice of intention to refuse to accept a valid application, clearly stating the reason and setting a time limit for the applicant to correct the errors or object to this intended refusal. If within the above time limit, the applicant does not correct the errors, does not correct the errors unsatisfactorily, or does not have a valid objection to the intended refusal, the National Office of Intellectual Property will issue a Notice of refusal to accept valid application and terminate application processing.

On the contrary, if the application has no errors or the errors have been corrected, the National Office of Intellectual Property will issue a Notice accepting the valid application.

Step 3: Publication of the geographical indication registration application

Within 02 months from the date of acceptance of a valid application, the application will be published in the Industrial Property Official Gazette.

From the date of publication until the date of issuance of the decision to grant a protection title, the National Office of Intellectual Property will receive:

• The third person’s opinion on the granting of a protection title is in the form of a written document attached to the document or a citation of information sources to prove it as a reference source of information for the application processing process.
• Objecting to the granting of protection titles in written form accompanied by documents or citing information sources to prove and must pay fees within three (03) months. Handling of objections is carried out according to the order and procedures specified in the Circular guiding the implementation prescribed by the Minister of Science and Technology.

Step 4: Substantive examination of the geographical indication registration application

This procedure is to evaluate the possibility of protection of the geographical indication stated in the application after it has been recognized as valid. The time limit for substantive examination is no more than 06 months from the date of publication of the application.

In case of re-examination when there are objections to the results of substantive examination, the time limit for re-examination is equal to two-thirds (2/3) of the time limit for the first examination. Complicated cases may take longer but not beyond the time limit for the first examination.

Note:

• The time for the applicant to amend or supplement the application is not included in the time limits for formality and substantive examination and re-examination according to regulations.
• The time limit for processing a request to amend or supplement an application does not exceed one-third (1/3) of the time limits for formality and substantive examination as prescribed.

Step 5: Decide to grant/refuse to grant a protection title

• In case the geographical indication stated in the application does not meet the protection requirements, the National Office of Intellectual Property will issue a Decision to refuse to grant a protection title;
• In case the geographical indication stated in the application is not subject to refusal to grant a protection title or the applicant has a valid objection to the intended refusal, and the applicant pays the full fee, the National Office of Intellectual Property will do:
  • Notify the results of substantive examination, clearly stating the intention to grant a protection title to the whole or part that meets the protection conditions and set a time limit for the applicant to pay official fees or object to the results of substantive examination;
  • Decision to grant a protection title and record it in the National Register of Industrial Property if the applicant pays fees.

New points on geographical indication registration under the amended Intellectual Property Law 2022

Homonymous geographical indications

The revised Intellectual Property Law 2022 has made technical corrections to the concept of geographical indications in Clause 22 to ensure reasonable expression without changing the connotation. At the same time, the new Law also adds Clause 22a on the concept of homonymous geographical indications in Article 4. Accordingly, the concept of homonymous geographical indications is a completely new concept, applied from 2023 under the definition the following meaning:

“Article 4. Interpretation of terms

22a. Homonymous geographical indications are geographical indications that have the same pronunciation or spelling.”

Simultaneously with this concept, protection conditions for homonymous Geographical Indications are also added in Clause 2, Article 79, specifically including the following criteria:

• Used in practice in a manner that does not confuse consumers about the geographical origin of the product bearing the geographical indication;
• Ensure the principle of fair treatment between organizations and individuals producing products bearing that geographical indication.

Accordingly, the application for registration of homonymous geographical indications needs to be supplemented with documents explaining the conditions for use and the way of presenting geographical indications to ensure the ability to distinguish between geographical indications.

Right to register foreign geographical indications

To be consistent with the commitments in EVFTA and practice, the new Law has added the right to register foreign geographical indications of foreign organizations and individuals who are rights holders of geographical indications according to the law of the exporting country. origin in Vietnam in Clause 2, Article 88. Registration of an application in the form of an international application is carried out according to the newly added Article 120a of the Intellectual Property Law.

In case a foreign geographical indication is no longer protected in the country of origin, it will be added as a basis to terminate all or part of the validity of the geographical indication protection certificate according to Article 95.1(k) of the Department of Defense Law. intellectual property.

Certificate of protection of geographical indications

To be consistent with EVFTA and reality, Article 92.2 of the new Law has removed the provision that information about “organizations and individuals with the right to use geographical indications” is content recorded in the protection certificate.

At the same time, the regulations on amending protection certificates in Article 97 of the new Law also have supplements related to who has the right to request amendments and information allowed to change and correct errors. Specifically, “organizations and individuals exercising the right to register geographical indications according to the provisions of Article 88” also have the right to request amendments similar to protection title holders. In addition to content related to name and address, the new Law also allows amending content about (i) nationality and (ii) names of authors, title holders, and geographical indication management organizations to comply with the updated content on the right to register and the right to request amendments above.

Right to manage geographical indications

Regarding the exercise of management rights, the Government is responsible for guiding the implementation of this right in Articles 37 and 38 of Decree 65/2023/ND-CP to clearly define the role of state management and the role of The property owner is the State in Article 121 of the Intellectual Property Law.

Remove the regulation on geographical indication management organizations having the right to allow others to use them in Article 123.2(a) of the Intellectual Property Law. Accordingly, entities granted the right to use and manage geographical indications currently only have the right to prohibit others from using them according to the provisions of law to comply with the amended provisions of Article 121 on owners. geographical indication.

Geographical indication registration service of Viet An Law

• Legal advice on geographical indication registration procedures;
• Drafting geographical indication registration dossiers;
• Submit documents and monitor progress at the National Office of Intellectual Property;
• Exchange and provide information to customers during the geographical indication registration process.

If you have any difficulties or problems related to geographical indication registration in Vietnam, please contact Viet An Law Firm for advice!