GIs - the EU v US positions and the SEA battlefield

The EU and US do not see eye to eye on GI protection. Until now the non agreement hasn’t been contentious, but the 2020 USTR Special 301 report just released raises the temperature. It argues that the EU position “significantly undermines the scope of trademarks and other IP rights held by U.S. producers”.

The US does not protect GIs specifically, but allows them in practice as certification marks unless they are generic terms and provides some protection to wines through the American Viticultural Area (AVA). However many terms are generic in the US due to the historic immigrant use from the places in question. For example Italian immigrants widely used ‘Parmesan’ in the US rendering it generic in the US for that type of cheese. Meanwhile the EU has a huge GI industry (estimated at E25 million in value in 2014). There are 2 levels of GI protection – Protected Designation of Origin and Protected Geographical Indication. Above this the TRIPS rules protect GIs, with additional protection for wines and spirits, but allow non confusing uses in certain circumstances. The EU and US don’t agree on what constitutes non confusing use.

In SE Asia most countries now have sui generis GI laws. But as in many other markets, a battle is being played out as the US and EU increasingly negotiate IP protections at a bilateral level. EU FTAs with IP chapters propose extensive GI protection. This sits well in economies with strong agri sectors.

Thailand has rapidly built a national GI portfolio of agricultural and non-agricultural products (i.e. handicrafts) – 118 domestic GIs are now registered. It also has 6 foreign GI products registrations from Thung Kula Rong Hai hom mali rice in the EU to Lamphun brocade Thai silk in Indonesia. A series of other Thai GIs are still at application stage,  from Phetchabun sweet tamarind in Vietnam to Doi Tung coffee in Cambodia. Thailand is committed to developing and promoting more GIs from all of its provinces to generate income for communities. It aims to hit a billion dollars in GI based trade in the next 5 years. 

Vietnam has signed an EU FTA (which is awaiting ratification after which they will automatically protect each other's GIs) and is also known to be keen to develop more GIs.  Indonesia has filed one GI in the EU for Kopi Gaya coffee and is trying to develop more domestic GIs.

Meanwhile the US seeks to insist in its negotiations that GI protection must not override legacy trademark rights. Some GI names are incorporated into US trademarks and their export capability is diminished in third countries if GI protection is too strong. The EU typically conditions an FTA to provide mass reciprocal mutual GI recognition. The EU also requests extensive unfair competition type protection against any misleading uses.  The US goes on to argue there is inconsistency in the EU position (notably some exceptions, where some EU countries use others’ GIs as descriptors).

It is unclear how SE Asian countries should approach this, whether to offer wide and reciprocal protection to the EU (therefore enabling EU market access for their GIs), or whether to carve out exceptions for US brands (e.g. California Champagne). So far few of the US trademarks at issue seem to have reached disputes in the region but that will change over time. Thailand clearly intends to use GIs to support its agri and handicrafts sector, and countries with large agri sectors will presumably do the same; which could create a market access barrier to some US brands.

Cambodian trademark fees and timeframes

A new set of regulations relating to trademark office matters in Cambodia took effect in early 2018.

 

Trademark office fees for 2018 are rising. Most are inflation level rises in the single digits. However there are several more significant changes.  One is that fees for international Madrid registrations have been set for the first time. Cambodia which joined in 2015 has now completed implementation and so can operate as an as office of origin for a Madrid international application.  The first Madrid application filed has been filed by a Cambodian national, but has not yet been published. 

 

Filing fees have been set for the first time for collective marks, certification marks and GIs. Cambodia has just registered its first certification mark MALYS ANGKOR for premium rice.  Of the regular trademark office fees the opposition fees see the largest increases. 

There are also rules relating to timeframes - applications are due to complete within 6-9 months, an improvement on the current 1 year.
          

 

 

 

 

 

 

Vietnam's tobacco wars

A longstanding tobacco dispute is now unfolding in in Vietnam. Indonesian tobacco company Sumatra Tobacco Trading Company (STTC) owns the brands JET and HERO. Their cigarettes are sold widely in Vietnam and have been for many years. The problem is that they are all smuggled. Vinataba, Vietnam's state owned tobacco company and the Vietnam Tobacco Association say that JET and HERO cigarettes account for 80-90 percent of the 22 billion cigarettes smuggled into Vietnam each year. Because they are smuggled there are no health warnings and they do not comply with local tobacco standards. In effect such massive smuggling harms the legitimate market.

STTC are a shrewd trademark operator and registered both brands all over the world, and have 67 different marks in Vietnam! Vinataba has applied to revoke STTC's marks for non use. Vinataba has also sought to register JET and HERO trademarks at the NOIP although why is unclear. The NOIP is due to make a decision on the revocation. However as is common in Vietnam they require assistance from another ministry, the Ministry of Science and Technology, asking them to review the use of STTCs marks. 

STTC has responded that it wants to invest in Vietnam, but tobacco manufacturing is restricted. So it can only make limited sales to some state-owned enterprises and via duty-free shops at borders and airports. They deny the smuggling. But given these are some of the most popular brands in Vietnam, they cannot be completely unaware.

This dispute has been brewing for years, with complaints at the extent of smuggling growing louder. Smugglers of JET and HERO products have been arrested in the past; however border enforcement is weak and corruption and bribery rife. Local tobacco farmers complained in 2014 of the negative effect of smugglers - HERO was specifically cited.  In 2014 precise HERO and JET smuggling routes were reported on, describing the warehouses in Bangkok, the routes to Laos and Sihanoukville in Cambodia before the products are hand carried across the border into Vietnam for onward distribution. Reports sait it has been going on for decades.  

Philippines blocks testing for the GMO BT Eggplant

The Philippine Supreme Court has issued an order prohibiting the conduct of field trials of Bt eggplant, a genetically modified eggplant, and nullifying Department of Agriculture Administrative Order No. 8, which regulates field trials and release into the environment of genetically modified plants.

 

The Court held that the scientists do not have a consensus on the safety of Bt eggplant and the divergent views reflect the international debate on genetically modified organisms (GMOs) and the varying degrees of acceptance of the technology worldwide, especially in developed countries. The Court said that, after a review of the scientific literature, they arrived at the conclusion that "current scientific research indicates the biotech industry has not sufficiently addressed the uncertainties over the safety of GM foods and crops." The Court found Administrative Order No. 8 fails to meet the minimum requirements of safety under Executive Order No. 514, which established National Biosafety Framework.

The Court also applied the precautionary principle - that lack of scientific certainty is no reason for inaction at the risk of potentially serious or irreversible harm to the environment. It held that the three conditions for applying the said principle: (a) risks of harm are uncertain; (b) harm might be irreversible and what is lost is irreplaceable; and (c) harm that might result is serious, are present in the case, based on the Court's assessment of the evidence on record as well as the current state of GMO research worldwide.

The ruling is a potential blow to biotechnology research in the Philippines and investments in this area.  It is ironic that this is an area of research that the Philippines excels in, with the Internatioanl Rice Research Institute headquartered in the Philippines.

EU Vietnam FTA signed

On 4 August 2015, after three years and several rounds of negotiation, the European Union – Vietnam Free Trade Agreement (“EVFTA”) officially established principles for the basic content of the Agreement.

 

The EVFTA is a comprehensive and advanced Agreement, balancing rights and benefits for both parties whilst simultaneously complying with WTO regulations. The main content of the Agreement includes Trade of Goods, Principles of Origin, Customs, sanitary and phytosanitary (SPS) measures, technical barriers to trade (TBT), Trade of Services, Investment, Trade Defence, Competition, State Owned Corporation, Government Procurement, Sustainable Development, Capacity Build and Cooperation, Legal Matters, and Intellectual Property.

 

The major elements of the agreement are Tariff Reductions and Facilitation of Trade in Services and Investment. The Intellectual Property section commits Vietnam to a high level of protection beyond the standards of the TRIPS agreement. The IP sector of this Agreement includes copyrights, patents and other commitments related to pharmaceuticals and Geographical Indications (GI).  When the EVFTA takes effect, 169 of the EU’s GIs will be protected in Vietnam and 39 of Vietnam’s GIs will be protected in the EU, all of which are for agricultural products and foodstuffs. This aspect facilitates some types of Vietnamese agricultural product branding activities in the EU. This Agreement also allows new GIs to be added in the future. In the pharmaceutical sector, data protection will be improved and there will possibly be a patent extension of up to two years available in the event of delays in obtaining marketing authorization.

 

The intention is also that EU innovations, artworks and brands will be better protected against infringement through stronger enforcement provisions in Vietnam.

 

Although at present only principles have been agreed, so we are still awaiting the final legal texts, the EVFTA is being heralded as a ‘win-win agreement’ to boost trade activities and strengthen relations between the EU and Vietnam.

Indonesia's pro and anti tobacco industry policies

Indonesia's Ministry of Trade (MoT) has announced its intention to join the challenge against Australia at the World Trade Organization (WTO) over Australia's laws on plain packaging for cigarettes. Honduras, the Dominican Republic and Cuba have made challenges and 36 WTO Members have made third party interest interventions. MoT Director General of International Trade Cooperation, Bachrul Chairi asserted that mandatory plain packaging harms WTO members and would obstruct cigarette exports from Indonesia, thus affecting tobacco farmers as well as the national cigarette industry. Indonesia is a major tobacco grower and cigarette producer nation especially of clove cigarettes. Chairi framed the dispute in IP terms, stating that it could have wider negative effects on IP rights especially in other product sectors.

Indonesia's policy is conflicted.  The MoT seeks to protect the tobacco industry and IPRs. Meanwhile the Ministry of Health (MoH) enacted 2012 regulations to ban use of a wide range of words on packs from LIGHTS to PREMIUM and seems to have included a wide unspecified class of promotional or misleading terms. There are also rumours of a plain packaging bill being prepared.  This ministerial conflict is perhaps unusual, but illustrates the competing interests at work.