Geographical indications infringement in Vietnam

Presently in Vietnam, the number of protected geographical indications is increasing rapidly, not only in quantity but also in regional scope. A characteristic of Vietnam laws is that they record the public ownership of geographical indications that many people have the right to use. This can lead to acts of infringement of rights to geographical indications with different factors, nature, and levels. In this article, Viet An Law will provide legal regulations related to geographical indications infringement in Vietnam.

Legal basis

• Intellectual Property Law in 2005, as amended and supplemented in 2009, 2019, 2022.
• Decree 65/2023/ND-CP has detailed several articles and measures to implement the Intellectual Property Law on industrial property.

Definition of geography indications

According to Clause 22, Article 4 of the 2005 Intellectual Property Law, amended and supplemented in 2009, 2019, and 2022, a geographical indication means a sign which identifies a product as originating from a specific region, locality, territory, or country.

The revised Intellectual Property Law 2022 has made technical corrections to the concept of geographical indications. Compared to the old definition ” a geographical indication means a sign which identifies a product as originating from a specific region, locality, territory, or country”, the new definition has ensured a more reasonable approach without changing the content of the regulations.

Conditions for protection of geographical indications

A geographical indication shall be protected when it satisfies the following conditions:

• The product bearing the geographical indication originates from the area, locality, territory, or country corresponding to such geographical indication;
• The product bearing the geographical indication has a reputation, quality, or characteristics mainly attributable to geographical conditions of the area, locality, territory, or country corresponding to such geographical indication

The reputation of a product bearing a geographical indication is determined by geographical conditions, which is determined by consumers’ confidence in that product through how widely consumers know and choose the product.

Quality and characteristics of products bearing a geographical indication shall be defined by one or several qualitative, quantitative or physically, chemically, microbiologically perceptible criteria that can be tested by technical means or experts with appropriate testing methods.

Geographical conditions relevant to a geographical indication mean natural and human factors decisive to reputation, quality, and characteristics of products bearing such geographical indication include: Natural factors (climatic, hydrological, geological, topographical, and ecological factors and other natural conditions); Human factors (skills and expertise of producers, and traditional production processes of localities).
Geographical areas bearing geographical indications shall have their boundaries accurately determined in words and maps.

Geographical indications infringement in Vietnam

A geographical indication is an object of industrial property rights, so rights to geographical indications are a type of industrial property rights. In the issue of protecting intellectual property rights to geographical indications, identifying acts of infringement is extremely important, serving as the basis for handling organizations and individuals that commit acts of infringement, while at the same time protecting the legitimate rights and interests of relevant entities.

Determination of violations

Based on Article 72 of Decree 65/2023/ND-CP, acts are considered infringements on industrial property rights and rights to plant varieties when the following grounds are found:

• The subject in consideration falls into the scope of subjects under protection;
• There are elements of infringement in the subject in consideration;
• The person who commits the act that is in consideration is not the holder of industrial property rights or rights to plant varieties and is not a person permitted by laws or a competent authority according to Clause 2 Article 125 of the Law on Intellectual Property; amended, supplemented in 2009, 2019,2022
• The act in consideration takes place in Vietnam. The act will also be considered to take place in Vietnam if it occurs on the Internet and is carried out on an information website under a Vietnamese domain name or with the display language of Vietnamese or aims at consumers or information users in Vietnam.

Type of infringement

• Using protected geographical indications for products that do not satisfy the criteria of peculiar characteristics and quality of products bearing geographical indications although such products originate from geographical areas bearing such geographical indications;
• Using protected geographical indications for products similar to products bearing geographical indications to take advantage of their reputation and popularity;
• Using any sign identical with, or similar to, protected geographical indications for products not originating from geographical areas bearing such geographical indications and therefore misleading consumers as to that products originate from such geographical areas;
• Using protected geographical indications of wines or spirits for wines or spirits not originating from geographical areas bearing such geographical indication, even where the true origin of goods is indicated or geographical indications are used in the form of translations or transcriptions, or accompanied by such words as “category,” “model,” “type,” “imitation” or the like.

Elements of infringement

Elements of infringement on rights to geographical indications displayed in the form of signs attached to goods, goods packaging, means of services, transaction documents, signs, advertising means, and other means of businesses that are identical or similar to the point of confusion with the protected geographical indications.

The ground to assess elements of infringement on rights to geographical indications is the scope of protection of geographical indications determined according to certificates of registration of geographical indications, international treaties that have contents of recognition and protection of geographical indications, or excerpts from the National Industrial Property Register.

To determine if a suspicious sign is an element of infringement on rights to a protected geographical indication, it is necessary to compare such a sign to the related geographical indication while comparing the product bearing that sign to the product with the protected geographical indication based on the following grounds:

• The suspicious sign is identical or similar to the point of confusion over the protected geographical indication. Specifically, a sign is considered identical to a protected geographical indication if it has the same wording structure, including pronunciation and transcription of letters, meanings, or images and symbols under the scope of protection of the geographical indication. A sign is considered similar to the point of confusion over the protected geographical indication if it is similar in terms of wording structure, including pronunciation and transcription of letters, meanings, or images and symbols under the scope of protection of the geographical indication and misleads consumers that the product bearing the suspicious sign originates from a protected geographical area;
• The product bearing the suspicious sign is identical or similar to the product bearing the protected geographical indication in terms of nature, functions, uses, and consumption channel;
• Regarding wines and brandies, aside from the regulations prescribed in Point a and Point b of this Clause, signs that are identical with protected geographical indications, even if they are presented in the form of definition, transcription, or words indicating types, styles, forms, or equivalences used for products not originating from geographical areas with protected geographical indications are also considered elements of infringement on rights to geographical indications.

To protect the reputation of the address, the law requires the use of the address as well as the quality of the products for the address require permission and supervision by the manage reference addresses organization. This inspection is intended to eliminate products that do not meet established standards and quality, even though they originate from the area providing the reference address. Products that do not ensure quality can still be considered counterfeit goods with geographical indications according to the provisions of Article 213 of the Intellectual Property Law.

Measures to handle infringement

Organizations and individuals who commit acts of infringing intellectual property rights on geographical indications, depending on the nature and extent of the infringement, may be handled with civil, administrative, or criminal remedies.

Civil remedies

Courts shall apply the following civil remedies in handling organizations and individuals that have committed acts of infringing upon intellectual property rights:

• Compelling the termination of infringing acts;
• Compelling the public apology and rectification;
• Compelling the performance of civil obligations;
• Compelling the payment of damages;

Administrative remedies

The following acts of infringing upon industrial property rights shall be administratively sanctioned:

• Committing an act of infringing upon intellectual property rights which causes damage to consumers or society;
• Failing to terminate an act of infringing upon intellectual property rights through the intellectual property right holder has issued a written notice requesting the termination of such act;
• Producing, importing, transporting, or trading in intellectual property counterfeit goods defined in Article 213 of this Law or assigning others to do so;
• Producing, importing, transporting, or trading in articles bearing a mark or a geographical indication that is identical or confusingly similar to a protected mark or geographical indication or assigning others to do so.

Criminal remedies

Individuals who commit acts of infringing upon intellectual property rights involving elements that constitute a crime shall be examined for penal liability according to the provisions of criminal law.

Intellectual property protection services of Viet An Law

• Legal advice on infringement of rights to intellectual property;
• Support to identify, analyze, and evaluate acts of intellectual property rights infringement;
• Support methods to protect rights and handle rights violations;
• Draft documents, represent customers, and contact state agencies in the process of protecting rights;
• Exchange and provide information to customers during the procedure to handle intellectual property infringement

If you have questions related the geographical indications infringement in Vietnam, or geographical indication registration, please contact Viet An Law Firm to receive the best support from our team of lawyers!