New points of Vietnam IP Law 2022 on geographical indications

New points of the Vietnam Intellectual Property Law 2022 on geographical indications have brought important changes in the field of intellectual property rights protection related to geographical indications. Coming into effect in 2023, these new provisions create an additional mechanism and enhance the level of protection for geographical indications. In light of these changes, Viet An Law will present important new points of Vietnam IP Law 2022 on geographical indications.

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.

Concept of geographical indication

The revised Intellectual Property Law 2022 has made technical corrections to the concept of geographical indications in Clause 22. Specifically, according to the new Law, geographical indications are defined as “a sign used to indicate the geographical origin of a product from a specific area, locality, territory or country”. Compared to the old definition, i.e. “a geographical indication is a sign used to indicate a product originating from a specific area, locality, territory or country”, the new definition has ensured a more reasonable approach without changing the content of the regulations.

Simultaneously, the new Law also supplements 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 following definition:

“Article 4. Interpretation of terms

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

To comply with this concept, protection conditions for homonymous geographical indications are 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 how to present 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 Article 88.2. The registration of applications in the form of international requests under international treaties of Vietnam shall comply with Article 120a newly supplemented in the Law on Intellectual Property with the competent authority of the National Office of Intellectual Property with procedures similar to domestic registration.

According to the instructions in Article 91 of Decree 65/2023/ND-CP, in this case, foreign rights holders can use registration certificates or other documents to prove rights holders according to the law of the origin country to prove its rights in case a foreign geographical indication is protected in Vietnam. Particularly for geographical indications protected under international treaties, rights owners can use documents and information in international treaties containing content on the recognition and protection of geographical indications or extract from the National Register of Industrial Property as proof.

Additionally, if 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 Law on Intellectual Property (as supplemented). The date of termination of the designation is identical to the date the geographical indication ceases to be protected in the country of origin.

Protection title of geographical indications

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

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.

The Law 2022 removed the regulation on geographical indication management organizations having the right to allow others to use them in Article 123.2(a). 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 of geographical indication.

Counterfeit geographical indications goods

Regulations in Article 213 of the Intellectual Property Law, before being amended in 2022, merged the concepts of “Counterfeit trademark goods” and “Counterfeit geographical indication goods” into the concept of “Counterfeit trademark goods”, which leads to some inadequacies when applied to actual acts of counterfeiting geographical indications.

The new Law in 2022 separates these two concepts based on differences in their protection mechanisms and infringing behavior characteristics. Accordingly, goods with counterfeit geographical indications are specifically defined as:

“… goods or goods packages bearing a mark or sign or stamp which contains signs that are identical or confusingly similar to a protected geographical indication being used for the same goods and these signs are attached by organizations or individuals that do not have the right to use such geographical indication according to Clause 4 Article 121 of this Law or law of the country of origin of such geographical indication.”

Unfair competition for geographical indications

The relationship between domain names and industrial property objects such as trademarks and geographical indications is regulated in Article 130 of the Intellectual Property Law on unfair competition practices to combat abusive practices, illegally possessing or using a domain name that is identical or similar to another subject’s legal industrial property protection object. In the new law, these acts are expanded not only to subjects who have registered domain names but only the act of “possession and use” of a domain name with infringing elements is already within the scope of this article.

In addition, to generalize the constitutive purposes of unfair competition behavior, the new law uses the term “bad faith” instead of listing regulations as the previous law. This amendment ensures consistency with the laws of other countries and international regulations in the Uniform Domain-Name Dispute-Resolution Policy (UDPR) jointly issued by the Internet Corporation for Assigned Names and Numbers (ICANN) and WIPO. This regulation helps expand the scope of proving unfair competition practices related to domain names that are occurring more and more frequently and more sophisticatedly in practice.

Services on geographical indication registration 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.

Above are some updated contents of Viet An Law related to new points of Vietnam IP Law 2022 on geographical indications. If you need advice on geographical indication registration procedures, please contact Viet An Law Firm for advice!