Opposition time limit for geographical indication application in Vietnam

Geographical indications are national assets and are always associated with advantages in natural conditions, production, quality characteristics, and product reputation. Geographical indications registration is a way to protect intellectual property rights over geographical indications, and simultaneously exploit the value that this intellectual property brings. When registering a geographical indication, if a third party has opposition to the geographical indication registration application, what issues should be kept in mind? In the article below, Viet An Law will analyze the legal provisions related to opposition time limit for geographical indication application in Vietnam.

Legal basis

• Law on Intellectual Property 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, protection of industrial property rights, rights to plant varieties, and state intellectual property management.
• Circular 23/2023/TT-BKHCN guiding the Intellectual Property Law and Decree 65/2023/ND-CP guiding the Intellectual Property Law on industrial property.

What is a geographical indication?

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, i.e. “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

Geographical indication registration

Geographical indication registration is an administrative procedure carried out at the National Office of Intellectual Property, in other words, this is the owner applying to the National Office of Intellectual Property to be granted a geographical indication protection title. The right of geographical indication registration in Vietnam belongs to the State. The State allows organizations and individuals to produce products bearing geographical indications, collective organizations representing those organizations and individuals, or local administrative management authorities where geographical indications are located has the right to register geographical indications.

The geographical indication registration application must meet the general requirements specified in Articles 100, 101, and 106 of the Intellectual Property Law, Appendix I of Decree 65/2023/ND-CP, and instructions in Article 28 of Circular 23/2023/TT-BKHCN.

The time limit for opposition of geographical indication applications in Vietnam

According to Article 112 of the Intellectual Property Law 2005, amended and supplemented in 2009, 2019, and 2022, before the date of issuance of the decision to grant a protection title, within three (03) months from the date of the application for geographical indication registration is announced, any third party has the right to object to the granting of a protection title.

The time limit for opposition to a geographical indication registration application in Vietnam is significantly shorter than the time limit for opposition to registration applications of other subjects of industrial property rights due to the specific nature of this subject, specifically:

The right to opposition to industrial property registration applications in general and to opposition to geographical indication registration applications, in particular, is a new point in the Intellectual Property Law that was amended in 2022. As from the date an application for registration of industrial property is published in the Official Gazette of Industrial Property up until before the date of issuance of a decision on the grant of a protection title, any third party shall have the right to express an opinion to the competent State administrative body for industrial property rights on the grant or refusal to grant a protection title for such application. Such opinions must be made in writing and be accompanied by documents or must quote the source of information.

Form of opposition to the geographical indication registration application

When a geographical indication registration application has been submitted to the National Office of Intellectual Property shows signs of infringement, any third party has the right to send its opposition to the National Office of Intellectual Property regarding the granting or not granting of the geographical indication in respect of that application.

• Oppositions must be made in writing, accompanied by documents or citing sources of information to prove them, and fees and charges must be paid.
• The language of the opposition dossier is in Vietnamese. Documents accompanying oppositions may be made in another language but must be translated into Vietnamese when requested by the National Office of Intellectual Property.

Documents required for opposition to a geographical indication application

• Document claim opposition;
• Documents or citation of information sources to prove opposition;
• Power of Attorney (if applying through a representative);
• Copy of fees and charges payment (in case of making payment via postal service or direct payment to the National Office of Intellectual Property’s account).

Number of documents: 01 set.

Procedures for opposition to geographical indication registration applications

According to the provisions of Article 11 of Circular 23/2023/TT-BKHCN, the process of handling oppositions to geographical indication registration applications is carried out at the National Office of Intellectual Property in the following order:

Step 1: Submit an opposition

Organizations and individuals submit 01 set of documents of opposition to the geographical indication registration application to the National Office of Intellectual Property in the form of:

• Online through the Administrative Procedures Processing System of the Ministry of Science and Technology;
• Directly or via postal service to the General Office of the National Office of Intellectual Property in Hanoi or the Representative Office in Ho Chi Minh City and Da Nang.

Step 2: Assess the opposition

• The National Office of Intellectual Property checks the validity of the requirements of the application form and the deadline for the opposition. In case the opposition is filed beyond the prescribed opposition deadline, the National Office of Intellectual Property refuses to accept the application right at the time of receipt.
• After meeting the requirements, the National Office of Intellectual Property receives and notifies that opinion to the applicant, setting 02 months from the date of notification for the applicant to respond in writing, except in the case of the opinion related to the right to registration, the National Office of Intellectual Property will issue a notice for the opponent to file a lawsuit with the competent Court under the law.
• In case the opponent’s opinion is related to the right to registration, the National Office of Intellectual Property notifies the opponent to file a lawsuit with a competent court under the provisions of the law on civil procedure, except in cases where there is a clear basis for determination without the need to sue. Within 02 months from the date the National Office of Intellectual Property issued this notice if the objector does not send the National Office of Intellectual Property a copy of the Court’s notice of acceptance of the case, the National Office of Intellectual Property shall consider it as the opponent withdraw their oppositions and continue to process the application as if there were no oppositions.

Step 3: Notify the opponents

After receiving feedback from the applicant within the prescribed time limit, if deemed necessary, the National Office of Intellectual Property shall notify the opponent of the feedback and issue a determination within 02 months from the date of notification for the opponent to respond in writing to that feedback.

Step 4: Direct conversation

The National Office of Intellectual Property organizes direct dialogue between opponents and the person in charge of the unit to clearly define the issue that requires the Office’s review if deemed necessary or required by both parties.

Step 5: Handle oppositions

Based on the information, evidence, and arguments provided by the parties (if any) and/or the results of dialogue between the parties, the National Office of Intellectual Property will handle the oppositions and notify the results of handling the oppositions. Opposition comments along with the results of the substantive examination of the corresponding application to the opponents and set a time limit of 02 months for the opponents to respond.

Note:

• The time limit for the applicant to respond to opponents’ oppositions and the time limit for opponents to respond to the applicant’s comments are not included in the time limit for the National Office of Intellectual Property to carry out related procedures according to regulations.
• The time limit for resolving opposition to requests depends on the time limit for issuing the results of the substantive examination of the respective application.

Industrial property representative services of Viet An Law

• The representative of the application owner registers the geographical indication at the National Office of Intellectual Property.
• Monitor registration progress, and respond when necessary.
• Client representative opposes a third party’s geographical indication registration application when there is sufficient basis to determine rights infringement.
• Consulting and supporting clients in discussing and resolving opposition to procedures at the Intellectual Property Office.
• Representing clients to sue in court related to the right to geographical indications registration.

If you have any questions or need advice on legal services related to the opposition time limit for geographical indication application in Vietnam, please contact Viet An Law for the best support!