The 11-member Comprehensive and Progressive Agreement for Trans-Pacific Partnership (“CPTPP”) officially came into force on December 30, 2018. The trade deal was signed by Australia, Brunei, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore and Việt Nam in Santiago in March 2018. The CPTPP took effect in Vietnam on 14 January 2019. Could you please advise if the CPTPP has any effects on the current IP Law of Vietnam, particularly on Geographical Indication Related Issues in Vietnam?
KENFOX: Yes, per Article 18.32.1(b) of the CPTPP which provides for “Grounds of Opposition and Cancellation”, [1. If a Party protects or recognises a geographical indication through the procedures referred to in Article 18.31 (Administrative Procedures for the Protection or Recognition of Geographical Indications), that Party shall provide procedures that allow interested persons to object to the protection or recognition of a geographical indication, and that allow for any such protection or recognition to be refused or otherwise not afforded, at least, on the following grounds: b) the geographical indication is likely to cause confusion with a preexisting trademark, the rights to which have been acquired in accordance with the Party’s law].
For the above provision, in Vietnam, Per Notification No. 1926/TB-SHTT dated 01 February 2019, issued by the IP Office of Vietnam, when a third party provides an opinion as to a geographical indication application, the IP Office of Vietnam will receive and handle it per Point 6 of Circular No. 01/2007/TTBKHCN of the Ministry of Science and Technology dated 14 February 2007 guiding the implementation of Decree No. 103/2006/ND-CP of the Government dated 22 September 2006 detailing and guiding the implementation of a number of articles of the Law on Intellectual Property on industrial property, as amended and supplemented under Circular No. 13/2010/TT- 2 BKHCN dated 30 July 2010, Circular No. 18/2011/TT-BKHCN dated 22 July 2011, Circular No. 05/2013/TT-BKHCN dated 20 February 2013 and Circular No. 16/2016/TT-BKHCN dated 30 June 2016.
Opposition to a GI application by a third party for the reason that the geographical indication is “likely to cause confusion” with another person’s protected trademark must be considered instead of (the reason that the geographical indication) “will cause confusion” as set forth in Article 80.3 of the IP Law. The assessment of the likelihood of causing confusion must take into account the fact that the geographical indication is oftentimes a pre-existing object (regardless of the registration) and is known by many people, or even well-known, and is thus likely to “be confused” rather than “cause confusion” with a trademark.
Per Article 18.32.5, [If the protection or recognition of the translation of transliteration of a geographical indication is provided through administrative procedures, then such procedures and the grounds for protection/cancellation must be equivalent/identical to those applicable to regular geographical indications]. In Vietnam, GI applications in the form of translation or transliteration filed as from the effective date of the CPTPP are handled in the same manner applicable to regular GI applications.
Under Article 18.34, [An individual component of a multi-component term that is protected as geographical indication shall not be protected if that individual component is the common name of the associated goods]. In Vietnam, in respect of geographical indication applications filed as from the effective date of the CPTPP, if a geographical indication is a multi-component geographical indication of which an individual component is identified as the common name of goods in Vietnam, then the component will be excluded from the scope of protection (with a disclaimer thereon) when the multi-component geographical indication is approved protection in Vietnam.