UK signs FTA with Vietnam adopting EU IP provisions

The UK has signed a Free Trade Agreement with Vietnam which came into force on 1 January 2021.  A tiny IP element is included. The UK FTA essentially adopts the EU Vietnam FTA, which came into force 6 months earlier. So the UK FTA adopts the same IP provisions set out in the in the EU Vietnam FTA IP chapter. 

There are several minor variations all relating to GIs which the UK doesn't generally have a strong policy on. Firstly the GI provisions are to cover “Irish Whisky/Irish Whiskey/Uisce Beatha Eireannach” and “Irish Cream”. These GIs for products produced throughout the island of Ireland, including in Northern Ireland which remains part of the UK, but subject to some EU rules under Brexit. Otherwise Northern Ireland Producers would lose GI protection. Secondly the GI for Scottish Farmed Salmon will continue to have protection in Vietnam.  

The other amendment is to remove certain provisions which grandfather certain narrow local use of Champagne  and several cheese GIs. 

The main purpose of the FTA is not however IP related (since IP is already well covered in the EU one), but to grow UK trade with Vietnam. Education, renewables and healthcare are key sectors, along with general infrastructure. 

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.

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.

Vietnam's agricultural sector needs more IP

Only 10 % of Vietnamese farm produce has IP protection, a new report says. Data from the the National Office of Intellectual Property of Vietnam (NOIP) shows that only 10% Vietnamese farm products have trademarks registered.  They identified 1,000 farm products, for which they noted that there were 59 collective marks, 12 certification marks and 24 geographical indications registered. Very few overseas registrations are made too.

This is reflective of both Vietnam's IP development stage and a sectoral weakness. An imbalance is also why developing countries see IP as mainly for western companies. IP Komodo would like to see more partnerships with international IP holders to assist local business in their sector.

Thailand seek GI protection in Vietnam

Thailand is an active protector of its GIs (click on the Thailand GI link below right for more news). Now it is expanding protection in the SE Asian region too, by seeking a GI certification for Thai silk in Vietnam. The function of GIs is to enable recognition for producers which can be leveraged in the international market. It is an underutilized IPR tool for businesses in SE Asia, given the vast number of products made in specific locales across the continent. Thailand is impressing in its widespread use of GIs.

Pajchima Tanasanti, director-general of the IPD said "Thai silk...produced in the Northeast of Thailand, has a unique texture. GI certification will ...help promote the fame of Thai silk, but also result in added value for farmers and producers." 

Thai policy has been to seek certification first for agricultural products around the world, but that is now being expanded to handicrafts. This will be the first Thai handicraft product to receive a GI certification from abroad. The Thai Queen is a backer of the Thai silk industry.

In Vietnam 35 GI certifications have been registered. They include Peruvian pisco and Scotch Whisky but most are domestic. Vietnam has also sought a GI regstration in Thailand for its Buon Ma Thuot coffee. Of the GIs registered in Thailand this is the first from another ASEAN state.

Vietnam's Phu Quoc Fish Sauce GI under threat

One of the golden rules of geographic indications (GI) is that the production of the article must follow the GI's rules.  A GI is a certification that the product possesses particular qualities, is made under certain (often traditional) methods, and enjoys a reputation, due to its geographical origin, Vietnam's most famous GI is Phu Quoc fish sauce protected as a GI since 2001. Phu Quoc is the IP Komodo's favourite offshore island in southern Vietnam.

Tuoi Tre News reports that many producers have failed to meet the GI rules because their product gets bottled in Ho Chi Minh City. Meanwhile island-bottled sauce has exceeded standards for the maximum level of histamine permitted.  They also report that overfishing of the anchovy has led to producers acquiring some fish on the open market which have been treated differently.

GIs have to be properly managed to maintain their exclusivity and so keep their protection.  It would be a shame if one of Asia's finest ones fails.

 

 

Vietnam coffee GI problems spill over into trademarks

There is already a dispute over a geographical indication (GI) for coffee, Buot Ma Thuot reported here – between Vietnam and a Chinese trademark registrant.

Now the issue is made more complicated by a new trademark conflict. Minh An Cooperative, a Vietnamese coffee producer reported to be in financial difficulties, is seeking to sell some of its trademarks (protected in Vietnam, China and the USA) to a Chinese coffee company.

But the trademarks, Coffee Duc Lap Dakmil and Coffee Duc Lac Minh An use geographic names, the first one referring to Dak Mil district and the other to Duc Lac province, both known for coffee production. The local government of Duc Lac is seeking to build up a GI under the Duc Lac name. The sale of the mark would dilute the attractiveness of a potential GI.

But worst of all the buyer is Guangzhou Buon Ma Thuot Coffee, the very same entity which registered the Vietnamese GI Buot Ma Thuot as a trademark - see the report mentioned above.

One could argue that the NOIP should not have accepted Minh An Cooperative’s trademarks for registration. Then again GIs are a new creature in Vietnam whereas the trademarks were registered some while back. It’s a rather more compressed form of the new world/old world TM vs GI conflict between the US and Europe. But now that the trademarks are registered, the NOIP and Vietnam is in difficulties. How can it take away trademark rights, which Minh An Cooperative need to sell, to allow the protection of new GIs?  It could ask the WIPO and WTO for help, but then again, they don't have the answer either.

Vietnam - GIs,TMs and dragonfruit

In Vietnam the lunar new year called Tet starts next week, and this year there is a fruity IP reason to celebrate.


VN Economy News reported yesterday about the country's frustrations that its well known agricultural products have insufficient IP protection. See here for previous reports about Chinese companies registering Vietnamese GIs in bad faith. Some 53 GIs have now been registered at the National Office of Intellectual Property(NOIP) in Vietnam. But a recent NOIP report indicates that there are at least 800 well recognised agricultural GIs in Vietnam and the report says producers need to do more to secure IP protection, though trademarks, collective and certification marks and GIs.  

But in today's fruitnet.com, it is reported that Vietnam's largest dragon fruit exporter, Binh Thuan, has registered its trademark in the US - BINH THUAN for Vietnamese dragon fruit. The importance of this is that as we enter the Chinese New Year of the Dragon is that red dragon fruit are especially popular being lucky colour red as well as very healthy. Much of the company's exports of the dragon fruit are to the US.

Chuc Mung Nam Moi as they say for Happy Lunar New Year in Vietnam!

Vietnam accuses Chinese company of GI theft

The Vietnam Coffee and Cocoa Association (Vicofa) has stated its intention to sue a Chinese company for IP infringement in relation to BUON MA THUOTcoffee from Vietnam’s Da Lak Province, its chairman said last week. BUON MA THUOTis a geographical indication belonging to Vietnam he said, and is registered at the Vietnam IP department.  However Guangzhou Buon Ma Thuot Co. Ltd. has registered the two brand names “BUON MA THUOT” and “BUON MA THUOT COFFEE 1896” as a trademark in China.  Vicofa says it is confident it would win this case.

Geographical indications enforcement is picking up pace in South East Asia. Thailand is a leader with many GIs registered and an ongoing program with European businesses to develop and register Thai GIs including to commercialise them. The Thai Department of Intellectual Property has an impressive brochure on the number of local GIs that have been developed so far. Indonesia registered its first foreign GI quite recently (Champagne).  IP Komodo expects some court decisions in this area soon.