CONFLICT BETWEEN

GEOGRAPHICAL INDICATION AND TRADEMARK PROTECTIONS

UNDER THE TRIPS AGREEMENT AND VIETNAM LAWS

Thi Thu Ha LE 12

Introduction. Trademarks and geographical indications are commercial indications to

distinguish and identify the source of products or services. Trademark helps consumers

recognize manufacturing enterprises in the market. Referring to the geographical

indication, consumer knows that a product comes from a particular area and possesses

certain characteristics that are essentially attributable to that origin3. In fact, certain

geographical indications are registered as trademarks and vice versa, some trademarks

consist of geographical indications. This leads to a conflict of rights between

geographical indications and trademarks protections. Trademarks and geographical

indications conflict resolution processes vary from one country to another as different

geographical indications protection regulations apply.

The introduction of the TRIPs (The Agreement on Trade-related Aspects of

Intellectual Property Rights) in 1994 in the framework of the WTO marks a new step

on geographical indications protection on a world scale. It is the most comprehensive

multilateral agreement4 on intellectual property in which geographical indication and

trademark are considered as two independent objects, and this is the first time a

resolution to this problem is proposed.

Plan. This paper will explore the potential conflict between trademark and

geographical indication protections (I) and the conflict resolution modalities under the

TRIPS agreement and under the laws of Vietnam (II).

I. The potential conflict between trademark and geographical indication

protections

Division. Potential conflicts in the protection of trademarks and geographical

indications are presented (2) and based on the analysis of the protection regime for

these two objects of intellectual property (1).

1 Ph.D, Lecturer in Intellectual Property and Brand, Foreign Trade University, Vietnam2 Book chapter in EU ASEAN Partenariat, FEDUCI, Sweet & Maxwell Publisher, 2013. Suggested Citation : Le, Thi Thu Ha, Conflict between geographical indication and trademark protection under the TRIPS Agreement and Vietnam laws, in EU ASEAN Partenariat, FEDUCI, Sweet & Maxwell Publisher, 20133 Refer to: http://www.wipo.int/about-ip/fr/geographical_ind.htm4 Refer to: http://www.wto.org/french/tratop_f/trips_f/intel2_f.htm

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1-The protection of Trademarks and Geographical indications

Presentation. The terms Trademark (A) and Geographical indication (B) are legally

defined under the provisions of the TRIPS.

A. Trademark

Definition. The trademark is one of the intellectual property rights objects mentioned

by many international conventions on industrial property. However, the TRIPs

agreement was the first to specifically define the concept of trademark5 as follows:

Any sign, or any combination of signs, capable of distinguishing the goods or

services of one undertaking from those of other undertakings, shall be capable

of constituting a trademark... Where signs are not inherently capable of

distinguishing the relevant goods or services, Members may make

registrability depend on distinctiveness acquired through use. 6

According to this provision, a trademark is used to distinguish goods and services of a

business from those of its competitors. Any sign (names, letters, figures, images,

colours and special factors like sound, smell, gestures...7) or any combination of these

signs, capable of distinguishing, can be registered as trademark. This is an important

condition, which reflects the main function of trademarks: distinctiveness8. This is an

important condition, and reflects the main function of trademarks which is

distinctiveness. In fact, trademarks guarantee the commercial origin of goods and

services rather than they ensure their quality. Distinctiveness can identify the products

or services of a company and retain customer’s loyalty9. The holder of a trademark has

5 The Paris Convention for the Protection of industrial property of 1883 and the Madrid Protocol of 1891 setting up a system for the international registration of trademarks. 6 TRIPs, Article 15.1a.7 Article 15 of the TRIPs agreement also openly provides that “Members may require, as a condition of registration, that signs be visually perceptible”. In fact, such jurisdictions as the United States and the EU allow the registration as trademarks of special signs like signs of flavor or sounds (Trademark Application Serial No. 74/485,223 for Harrison motorcycle, NBC trademark, Microsoft, etc.), or scent (the scent of Plumeria flowers for sewing and embroidery-TTAB, the smell of freshly-cut grass for tennis balls (R 156/ 1998 – 2). Source: WIPO, Handbook of Intellectual Property, 2003. However, some countries such as Vietnam or Japan confine signs which can be registered as trademarks to only visible ones. US and EU nations allow the registration of such invisible trademarks as sounds.8 The TRIPs agreement does not define the criteria of “distinctiveness” but we can see that “distinctiveness” is understood relatively consistently as “not misleading, non-descriptive nor deceptive”.The descriptive signs are often purely ones used to indicate the type, origin, duration and purpose of use or any characteristics of goods, therefore, they can be used for any type of goods and services and no type can be registered exclusively to avoid confusion for consumers. 9 Actually, trademark’s function is far beyond a simple reference to the origin of product and service, but are also meaningful for quality, emotion, image and even culture, such as Louis Vuitton, Chanel, Coca Cola, Apple, Hennesy… See : O’Connor B., “The law of geographical Indication”, 2004, Cameron May, p108.

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the exclusive right to use, to exploit and prevent others from using it without its

permission10.

Signs indicating geographical origins. Signs that are used to designate the

geographical origin, such as names, symbols, emblems, are generally descriptive and

therefore they are often excluded from trademark protection. In addition to the

principle of the exclusive right granted to the trademark’s holder and to avoid that an

exclusive right of a collective sign is allocated to an individual or a certain company,

the TRIPs Agreement and local legislation prohibit registration of a trademark that is

deceptive or likely to mislead the public to avoid confusion for consumers11, for

example, signs indicating geographical origins12. However, exceptions to trademark

protection in article 15.1.b of the TRIPs Agreement specify cases in which signs which

though themselves are not inherently capable of distinguishing relevant goods or

services, can still benefit from registrability if they acquire distinctiveness through

use13. According to this provision, signs indicating geographical origins which are

inherently considered to have a “descriptive” nature can still be registered as

trademarks if they reach distinctiveness or the second meaning through use14.

Principles of registration. Exception of distinctiveness reflects the combination of

two principles for acquiring the trademark’s right. Trademark protection is established

on the basis of “first to file”, which means giving priority to the first applicant for

protection. However, there are still a few countries such as the USA which apply the

principle of “first to use”, which means giving priority to the first user. However, the

TRIPs accepts the distinctiveness acquired by use of the trademark, i.e. the one who

proves that he was the first to use the trademark gains priority.

10 TRIPs, art. 16.1.11 Gever F., “Geographical name and signs used as tradermark”, 8EIPR, 1990, p285.12 The court of Australia refused to protect the sign “Michigan” as a trademark of earthmoving equipment. A number of similar decisions were made by the courts in the UK such as the sign “Glastonbury” for Whisky, “Canada” for maltless beverage, “Green Moutain” for grapes or Montserrat” for lime. In Switzerland, there are similar decisions: “Alaska” for beverages, in particular mineral water, and “Cusco” for sweets (in particular “chocolate”). In Russia, a trademark “Sir Kent” for tea was not registered because it could confuse and mislead the consumer concerning the true origin of the product. See O’Connor Bernard (2003), p111.13 Plusieurs jurisprudences sont citées, telles que CAMEL HAIR BELTING (Reddaway vs Banham), ABERCROMBIE pour des vêtements, IMAGESTREAM pour des logiciels d’ordinateur, LASTING PERFORMANCE pour du savon; MAXIMA pour de l'équipement médical, NETMEETING pour des programmes de communications en réseau des ordinateurs… (cités par Blakeney M. dans “Proposal for the International Regulation of Geographical Indication", 2001).14 In fact, many signs containing geographical origins have been registered as trademarks. Some indicate correctly the geographical origins of their product such as "Swiss-Alp" for Swiss chocolate, “France-Caline” for a French perfume, "Navarra" for Spanish liqueur. But some are made up or do not indicate the real origin of products, for example, Dutch trademarks “Etna” for chimneys and “Malta Heineken” for beer, “London Dock” for tobacco and articles for smokers in Amsterdam, “Yellow River” for French flowers, “River Neva” for German spirits, “Black sea” for alcoholic drinks in Brussels, “Kent” for conserves produced in Benelux, “Bosford Dry London Gin” for Italian sweet liqueurs. See O’Connor, p111.

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Duration of protection. The trademark registration gives the holder of the trademark

an exclusive right to exploit and use the trademark for at least seven years under

TRIPs agreement and which is indefinitely renewable15.

B- Geographical indications

Definition. The definition of geographical indication has been internationally accepted

by the countries member of the TRIPs Agreement:

…Geographical indications are, for the purposes of this Agreement, indications

which identify a good as originating in the territory of a Member, or a region

or locality in that territory, where a given quality, reputation or other

characteristic of the good is essentially attributable to its geographical origin.16

Two important elements are inferred from the above definition: indications identify

geographical origins of the goods and The goods have “quality”, “reputation” or

“other characteristics” essentially attributed by its geographical origin.

Indications identify geographical origins of the goods

If Trademarks can be any signs while geographical indications must be indications: not

only direct indications like geographical names but also symbols or emblems…

visually evoking the place of origin of the product.

Geographical name. This is the most common sign providing direct information

about the geographical origins of goods. Indications can be the name of a country

("Columbia", "Thai’s", "Swiss made", "Australia wine"…), a territory or just a city, a

region ("Cognac", "Bordeaux"…), even the name of a bridge ("London Bridge"), a

mountain ("Matterhorn"), a valley, an island ("Phu Quoc", "Murano") or any place that

can become geographical indications. There is no requirement for indication as a

geographical name17. In addition, the TRIPs agreement allows one name which is

not a geographical name to be used for geographical indications. Thus, even

though India does not have any geographical name called "Basmati", people still

know it is an indication for rice from India. Besides, some names are not direct

geographical ones but have become geographical indications through a long-

standing usage by the locals such as "Alphonso" mangoes grown in Maharashtra

15 TRIPs, art 18.16 TRIPs, art 22.1.17 Rangnekar, Dwijen (2003), “Geographique Indications – A Review of Proposals at the TRIPs Council: Extending Article 23 to Products other than Wines and Spirits”. Complete document available on: h tt p ://www.icts d . o r g /i p rso n li n e/u n cta d icts d / do c s/rang n e k ar _ m ay 200 3_final. p d f , p. 22.

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state, India, "Feta" cheese from Greece or "Khadi" hand-made fabrics from South

India.18

Iconic symbol, Images. The TRIPs agreement allows geographical indications by

iconic symbols or images having a connection with certain locations, as the Eiffel

Tower for goods produced in France, the Pyramids for Egypt goods or the Statue of

Liberty for America’s goods, which can be used to indicate goods origin. In some

cases, the image of an individual can also help associate product origins. For example,

the image of the Cuban leader Che Guevara is commonly used for cigarette products

originating from Cuba.

From a marketing standpoint, beside names, image signs are relatively useful

information when product images are promoted. Such really well-known images and

symbols as the French Eiffel Tower, the Swiss Matterhorn mountain, London Tower in

the UK help consumers associate quickly with a certain geographical area. However,

image information may also causes consumers to associate differently. For instance, is

the Eiffel Tower image the symbol of Paris or of France in general? Is the London

Tower image the symbol of London or of the whole UK? Thus, image signs should

only be the information accompanying geographical names, help improve protection

ability as well as better implement the function of geographical indications. The use of

merely image and symbol signs in some cases will cause confusion for consumers19.

Goods must have the “quality”, “reputation” or “other characteristics” brought

by geographical origins. 20

The link between products and geographical area. This link differenciates

geographical indications from previous relating concepts as Appellations of origin and

Indications of source21. Geographical indications show not only the goods’ place of

origin but also their quality, reputation or distinctive charaters due to geographical

18 Latha R. Nair & Rajendra Kumar, “Geographical Indications: a search for identity”, 2005, LexisNexis Butterworths, p95.19 Lê Thi Thu Ha, « Protection des Indications géographiques du Vietnam dans le contexte d’intégration économique internationale », La maison d’Edition d’Information et de Communication, 2011, p15.20 The TRIPs Agreement does not explain specifically each of these terms. In reality, there has never been any decision of the WTO regarding the scope of protection of geographical indications. 21 Indications of source are mentioned as objects of industrial property in article 1.2 of The Paris Convention 1883. Indications of source connects the product to a specific region, and does not require additional conditions such as quality or special characteristics. The concept of “Appellations of origin” is quoted in the Madrid Agreement 1891, and then defined in the Lisbon Arrangement 1958. According to the latter, an Appellation of origin is the geographical name of a country, a region or a town/village and is used to indicate a product which originates from it and the quality and characteristics of which are exclusively or mainly due to the geographical environment, including the natural and human factors. Whereas this link is essential and the whole production process must be carried out in the relevant geographical area, this link is weaker for the geographical indication.

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environment, including natural factors (climatic, hydrological, geological, ecological

and other natural conditions) and human factors (skills, know-how of the producers,

and traditional manufacturing processes). However, just one characteristics, among the

quality, reputation or distinctive factors, is enough. Reputation is an additional element

of the two following qualifiers: quality and special characteristic. Therefore,

geographical indications can be used for goods the reputation of which is based on

local initiatives22 like for handicraft goods or industrial goods23. "Sheffield", "Swiss

watches" and "Swiss knives" are geographical indications used for industrial

products.24.

Potential development of geographical indications. The concept of geographical

indications under the TRIPs agreement has overcome the limitations set out by

previous international conventions and opened greater opportunities for the protection

of geographical indications. This is based on the three following points:

First, signs protected as geographical indications are broader than appellations of

origin. While appellations of origin are merely direct names indicating geographical

places, geographical indications may be indirect signs, such as images, symbols.

Second, the requirement for the link between product quality and the geographical

origin for geographical indications is lighter than the one requested for appellation of

origin. The strict regulations on appellations of origin under the Lisbon agreement are

difficult to apply to non-agricultural products, therefore, regulations on geographical

indications under the TRIPs agreement are strongly supported by developed and

developing countries. 25

Third, in the concept of geographical indications, an additional factor named

“reputation” of goods appears alongside factors named “quality” or “other

characteristics”, however, indications having one among the three above factors can be

considered geographical indications. If goods having reputation but no specific quality

brought by geographical origin are not protected by an appellation of origin, they can

be protected by a geographical indication. This is the basic difference between

geographical indications and appellations of origin. This regulation opens

opportunities for the protection of non-agricultural products which developing and less

developed countries aim at26. 22 The need for a strict link between the quality of the products and the geographical origin of the appellations of origin is excluded for non-agricultural products.23 Maskus, Keith E. (2003), “Observations on the Development Potential of Geographical Indications.”, 2003.24 Quoted by Latha R. Nair & Rajendra Kumar op.cit., p99.25 Rangnekar, Dwijen (2003), op.cit.26 Thailand has allowed the registration of geographical indications protection for handicrafts or industrial products such as “Aranyik” for knives, “Benjarong” for five-color chinaware, “Borsarng” for umbrellas,

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Methods of protection The TRIPs Agreement does not provide for any specific

regulation on the method for geographical indications protection. In fact, each country

protects geographical indications in its own way27. Three legal systems in three groups

of countries are recorded with regards to this matters. Certain countries in the

European Union which have a long tradition of geographical indications protection

(Spain, France, Italy and Portugal) often have their own law on geographical

indications protection (called sui generis). Countries such as the United States,

Canada, New Zealand protect geographical indications through an existing system of

collective trademarks and certification trademarks. In addition, geographical

indications are also protected under business law and competition law. The difference

in the methods of geographical indications protection, especially from the standpoint

of the EU and the USA has led to conflicts between the protection mechanisms of

these two subjects (trademarks and geographical indications).

2-Conflict between trademark and geographical indication protections

Presentation. As widely used commercial indications, trademarks or geographical

indications provide consumers with information on the origin of products, distinguish

the different products or services available on the market. Besides similarities, there

are also a number of differences. The comparison between trademarks and

geographical indications (A) is necessary to determine the potential conflicts between

trademarks and geographical indications (B).

A. Distinguishing between Trademark and Geographical indication

Component elements. The first difference lies in the distinctive signs constituting

trademarks and geographical indications. While trademarks can be made up of non-

descriptive signs which are capable of distinguishing, geographical indications are

often direct or indirect indications describing the origin of goods. Thus, names

indicating geographical origin are often excluded from protected signs.

Owners. Trademarks identify goods and services of a certain business from those of

its competitors. Geographical indications identify products from a specific

geographical area. Only products manufactured in a certain geographical area,

satisfying requirements for quality, reputation or having main characteristics due to

"Chantaburi" for sapphire, “Sukhotai” for gold. See O’Connor B., p307. 27 Sabrina Lucatelli, "Appellation d’origine et Indication géographiques dans les pays membre de l’OECD : Implications économiques et juridiques", 2000. Document complet disponible sur : http://www.lib.ox.ac.uk/olis/

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such geographical origin can bear geographical indications. Therefore, the trademark

owner is a moral or legal entity, while geographical indications are not property of a

specific business but everyone located in the certain geographical area meeting the set

forth requirements have the right to use such geographical indications. That means that

geographical indications belong to collective ownership, limited to a certain number of

manufacturers in the area. Thus, from an economic standpoint, geographical

indications can still be considered as a form of collective monopoly, which legally

eliminates competition from manufacturers located outside this geographical area28.

Transfer of rights. The trademark owner has the exclusive right to use and to transfer

it. Geographical indications are a collective property so they cannot be transferred.

Protection duration: Protection duration for trademarks is for 7 years but it can be

extended many times. Geographical indications are protected so long as protection

standards meet the requirements.

B. Conflicts between trademarks and geographical indications

Presentation. The difference between the legal systems of (i) geographical indications

protection and (ii) the possibility of registering signs indicating the geographical origin

as a trademark or geographical indication led to potential conflicts of rights and

interests, especially in respect of the existence of a specific link between product

characteristics and geographical origin29.

Conflict of interest. Trademark owners have the right to use and to prevent others

from using without permission such trademarks whereas the right to use geographical

indications belongs to all product manufacturers located in that geographical area. So

who has the right to use signs providing geographical indications, trademark owners or

geographical indications owners? This will affect the competitiveness of products

issued from the relevant geographical area on the market and above all, the quality of

the products issued from the relevant geographical area.

28 Investigation findings of the EU Competition commission about five associations of geographical indications manufacturers sued for the abuse of monopoly position on the market as Parma ham, French Red Label, Gorgonzola cheese, Parma and San Daniele, Parmigiano Reggiano and Grana Padano cheese. See OECD, "Appellations d’Origine et Indications géographiques dans les pays membres de l’OECD : implications économiques et juridiques", 2000.29 There is no conflict when the product benefiting from the trademark consisting of a sign providing a geographical indication does not bear the quality, reputation or the characteristics resulting from the relevant geographical area, e.g. the “Trường Sơn” trademark for the pen produced by the Hongha company and the “Mont Blanc” pen trademark.

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Legal conflict. Conflicts result from the exclusivity character of trademarks and the

collective character of geographical indications. Conflicts result from the coexistence

of these two objects. Unless specific restrictions, in both cases (a trademark registered

or recognized through use and a posterior geographical indication or geographical

indication registered as a trademark later), trademarks and geographical indications

will coexist.

II. Conflict resolution between geographical indications and trademarks

Division. Conflict resolution between geographical indications and trademarks is an

important issue in international negotiations on intellectual property. We will see how

to solve this issue under international law (1) and national legislation (2).

1. Under the TRIPs agreement

Principle. The TRIPS Agreement provides for a framework for the implementation of

IPR protection at national level. It provides that geographical indications and

trademarks are two subjects of intellectual property rights that should be protected

equally. Therefore, the relation between trademarks and geographical indications is to

be found in the respective regulations applying to these two subjects.

Under trademark regulations. Under the trademark protection regulations, the

following principle has been developed: “exclusive rights of a trademark registered

previously in a good faith”.

“The owner of a registered trademark shall have the exclusive right to prevent

all third parties not having the owner’s consent from using in the course of

trade identical or similar signs for goods or services which are identical or

similar to those in respect of which the trademark is registered where such use

would result in a likelihood of confusion » 30.

According to this provision, the trademark owners have the exclusive rights to prevent

the use of identical or similar signs for identical or similar goods, so as to avoid

confusion for the public. In other words, a trademark can contain a geographical

indication if the use of this indication in the trademark does not mislead the public in

respect of the true place of origin. Accordingly, the "Bordeaux" trademark, registered

by an American company for biscuits, is not invalidated in the United States and

Canada because such trademark does not wrongly represent to the public that these

30 The TRIPS agreement – Article 16.1.

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cookies are from Bordeaux, a region of France. The same decision is given in the case

of the "Touraine" for tea, coffee products. 31

Under geographical indications regulations. In this section, the TRIPs Agreement

provides that the registration of a trademark containing a geographical indication shall

be refused or invalidated, in order to prevent the use of misleading indications in

respect of the origin of goods:

Each member shall (…) refuse or invalidate the registration of a trademark

which contains or consists of a geographical indication with respect to goods

not originating in the territory indicated, if use of the indication in the

trademark for such goods in that member’s country is of such a nature as to

mislead the public as to the true place of origin. 32

For wines and spirits, a trademark containing a geographical indication is prohibited

even if its use does not directly mislead the public:

The registration of a trademark for wines which contains or consists of a

geographical indication identifying wines or for spirits which contains or

consists of a geographical indication identifying spirits shall be refused or

invalidated, […] with respect to such wines or spirits not having this origin33.

This means that a trademark will be refused protection if it contains the components of

a geographical indication.

Exceptions. The TRIPS Agreement provides for the following exception:

"Where a trademark has been applied for or registered in good faith, or where

rights to a trademark have been acquired through use in good faith either:

- before the date of application of these provisions in that Member as

defined in Part VI; or

- before the geographical indication is protected in its country of origin;

31 National Institute des Appellations d’origine vs Pepperidge Farm Inc., and Institut National des Appellations d’origine vs Chock Full O’Nuts Corp, quoted by Daniel R. Bereskin in “Legal protection of geographical indications in Canada”, complete document available on: http://www.bereskinparr.com/French/publications/pdf/TM-Geographic-Bereskin.pdf32 TRIPs, Art. 22.3.33 TRIPs, Art. 23.2.

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measures adopted to implement the protection of geographical indication shall

not prejudice eligibility for or the validity of the registration of a trademark, or

the right to use a trademark, on the basis that such a trademark is identical

with, or similar to, a geographical indication "34.

This provision gives an opportunity for the protection of a geographical indication

identical or similar to the one applying to a prior trademark. This exception leads to

different interpretations in local jurisdictions according to their respective views on the

matter.

Countries favoring the protection of trademarks. For countries having a system of

geographical indication protection incorporated into their existing laws on trademarks

(certification trademarks and collective trademarks), unfair competition and consumer

protection, such as the United States, Canada or Australia, the registration of a

geographical indication identical or similar to an earlier registered trademark for an

identical or similar product will be rejected to avoid confusion. This means that the

principle of “exclusive rights of a trademark registered previously in a good faith” is

applied and that it is impossible to register a geographical indication as a trademark. In

this case, the protection of a geographical name can be made by the registration of

certification marks, provided that the use of this indication is fair and that such

exceptions take into account the legitimate interests of the trademark owner and of

third parties35. This is the case of "Bordeaux" for wine and "Roquefort" for cheese

(France), "Rioja" for wine (Spain), "Madère" for wine (Portugal)36. However, the

protection is impossible if the relevant name is considered generic37.

Priority over geographical indications protection. For European countries who

favor the appellation of origin and geographical indication, it is not possible to register

a trademark containing a geographical indication or which consists of such an

indication, if this indication is already registered. The exception to Article 24.5 of

TRIPs Agreement is only applied for the registration of a geographical indication. If a

trademark has been filed or registered in good faith, this provision allows the

coexistence of a geographical indication similar or identical to the trademark in

question. The application of a geographical indication will be rejected if a similar or

34 TRIPs, Art. 24.5.35 Grevers F., “Topical issues of the protection of geographical indication”, 1999.36 Refer to: http://www.uspto.gov37 Refer to: Wineworths Group Ltd vs Comite Interprofessionnel du vin de Champagne (1992), Consorzio del Prosciutto di Parma vs Maple Leaf Meats Inc (2001).

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identical trademark was early registered and well known38, and that the use of the

geographical indication could induce the public in error as to the origin of products39.

Co-existence of trademark and geographical indication. Unlike the United States and Australia, “exclusive rights of a trademark registered previously in a good faith”

is not the rule governing the protection of geographical indications in the European Union. The European Union countries confirm that Article 24.5 of the

TRIPs Agreement on the exception of geographical indications protection over

trademarks allows the coexistence of an early registered trademark and a similar or

identical geographical indication protected later. A registered trademark can only

prevent a geographical indication to be registered later if a trademark has been used

and has achieved a certain prestige40. If the trademark has not acquired any reputation,

the geographical indication is still accepted for registration, which leads to the

coexistence of trademarks and geographical indications. This means that a pre-

registered trademark still will be used but it loses its monopoly when a geographical

indication identical or similar to a product trademark is protected41. Thus, the European

Union applies the principle of the coexistence of a pre-registered trademark and a

geographical indication similar or identical to the trademark protected later. In fact,

this standpoint has been applied in some decisions of the European Commission in

cases related to [the interaction of] geographical indications and trademarks42.

Controversy. The United States, Australia and New Zealand believe that the

European Union interpretation is inconsistent with the principle of exclusive

trademarks set out in Article 16.1 of the TRIPS Agreement. When the two subjects

coexist, trademarks owners have no rights to prevent others from using geographical

indications even though geographical indications are identical to their own trademarks.

This above disagreement has led to a dispute before the World Trade Organisation

(WTO) between the United States, Australia and New Zealand (the plaintiff) and the

European Union (the defendant). The dispute was considered for more than one year

by the WTO and on March 15, 2005, the WTO acknowledged that the Regulation of

the European Union did not infringe WTO provisions43. The Regulation [of the

38 For instance "Tabasco", which is the name of a province in Mexico but which is also registered as a trademark for a gravy product.39 Council Regulation (EC) No 510/2006 on the protection of Geographical Indications and Designations of Origin for Agricultural products and Foodstuffs, Article 14.40 For instance, Tabasco, a province name in Mexico is registered as the trademark of a sauce product.41 Regulation No 510/2006 of the European Union – Article 14.42 For example, a recent EU decision allows the coexistence of the trademark "Gerry" registered for bottled water and similar geographical indication "Kerry" for mineral water (Gerolsteiner Brunnen GmbH and Co. v Putsch GmbH, Case C-100/0, 2004); or geographical indication "Bayerisches Bier" is also registered for not causing confusion with trademark "Bavarian beer" registered earlier. 43 Decision No WT/DS/174/R, available at the following link: http://www.uspto.gov/web/offices/dcom/olia/globalip/pdf/case_summary.pdf

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European Union] allows the coexistence of trademarks and geographical indications

only if the risk of confusion between trademark and geographical indications is not

highly likely. Article 17 of TRIPs Agreement allows Members to provide for limited

exceptions to the rights conferred by a trademark. Geographical indications will be

refused or invalided if they are identical or likely to cause confusion with trademarks

registered earlier.

Conclusion. Thus, although the TRIPS Agreement is the first multilateral agreement

setting out the relationship between the trademarks and the geographical indications

protections, it has not solved thoroughly this relationship. Conclusion No.

WT/DS174/R of the WTO still does not solve the disagreement between two different

viewpoints on this relationship fore born by the United States and European Union.

Despite of the WTO’s decision on the matter, each group of countries still explains

this exception according to their own argument.

B. Under Vietnam’s legislation

Observations. Becoming the 150th member of the WTO means that Vietnam has to

modify its legal system for it to be consistent with the commitments set out in the

TRIPS Agreement. Vietnam’s Law on Intellectual Property 200544 was built right at

the time when the controversy among these countries was at its most stressful stage,

therefore it drew the attention of the above relevant countries. In this context,

Vietnam’s regulations on this issue had to be considered in order to ensure that the two

basic principles, that is (i) to protect national interests and (ii) to comply with

international treaties45, are complied with. This is a big challenge for Vietnamese law

makers.

Principle of protecting national interests and the community. Vietnamese

geographical indications are considered national assets which must be protected under

the mechanism of geographical indication protection, and privatization is not allowed.

The form of protection of geographical indications is freely chosen by their owners or

by the said countries, either as geographical indications, or as collective trademarks or

certification marks.

Principle of integration. Vietnam does not have a long history of legislation on

geographical indications protection like Western countries have. Therefore, in the face

44 The English version of the Vietnamese intellectual property law is available at: http://www.wipo.int/wipolex/en/details.jsp?id=5005.  45 Tran Viet Hung, Report on Geographical indications and Trademarks, Conference entitled “Geographical indications, the road to access the market”, Hanoi, 2003.

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of opposite viewpoints on the protection of trademarks and geographical indications,

regulations brought forward by Vietnam ensure the principle of harmonizing

international relations and do not cause disputes with any partner.

Resolutions. The legal basis of conflict resolution is considered in two cases: the

ability to register trademarks containing signs indicating origins (§1) and the solution

of the relation between a pre-registered trademark and a later application of

geographical indication registration (§2).

(§1) Trademarks applied for protection contain signs indicating origins

Division. The ability to register as trademark signs indicating geographical origin is

considered in two cases: existence and absence of previously registered geographical

indications.

In case of absence of previously registered geographical indications

Principe. Signs indicating geographical origins are excluded from registration as

trademarks46, due to lack of distinctiveness47.

Exceptions. However, there still exist a few exceptions which permit the registration

of signs indicating geographical origins as trademarks if such signs have been used

and widely recognized as trademark or signs registered as collective trademarks or

certification trademarks 48.

As a trademark. Where signs indicating geographical origins have been used and

widely recognized as trademarks49, this means that these signs have achieved the

distinctiveness through the use as trademarks, and therefore they can be protected.

This is also consistent with the exception in Article 15.1 of the TRIPs Agreement

which allows:

…“where signs are not inherently capable of distinguishing the relevant goods

or services, Members may make registrability depend on distinctiveness

acquired through use”.

46 Intellectual Property Law, art 73.5 et 74.2.c.47 Trademark protection in Vietnam is not acknowledged to a lot of signs, such as “Berlina“ for food products such as sausages, ham, pâté, “Java” for computer software and associated equipment, “American snack” for jam, sweets…48 LPI, art 74.2.e.49 LPI, art 74.2.a.

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Some trademarks containing signs indicating geographical origins still exist in

Vietnam, such as "Sai Gon" beer, "Hanoi" beer, "Da Lat" wine, "Ben Tre" Cocotier …

These trademarks had been registered before the promulgation of Law on Intellectual

Property 2005. The exclusive use of collective name by a person (legal or physical)

has caused many disputes50. Since 2005, trademark registration applications for

products bearing geographical names have been refused to prevent those indications of

origin from becoming private properties, especially in the case of a link between

product characteristics and geographical origin.

As a collective mark. Signs indicating geographical origins shall be capable of

registration as collective trademarks. Collective trademarks offer to consumers the

guarantee of products having certain characteristics (quality, nature or origin). The

registration of collective trademarks must be based on regulations defining the

conditions to use trademarks51.

To avoid cases abuse of collective trademarks containing geographical elements and

an exclusive use of region name by an individual or enterprise, others relevant

conditions will be examined. First, the right to register collective trademarks only

belongs to organizations and individuals operating production and business in that

locality52, then the right to use collective trademarks is not transferred to organizations

and individuals who are not to be found in those collective trademarks owners53.

A number of signs identifying the geographical origin in Vietnam are registered as

collective marks.54 Collective trademarks can be considered right options to protect

specific products of the locality and also a temporary solution for potential products

registered as geographical indications but for which the locality does not have enough

financial and technical competence to perform that registration55.

As certification mark. Signs indicating geographical origins shall be capable of

registration as certification trademarks. A certification trademark indicates that the

products for which it is used have achieved certain standards (quality, nature or

50 Refer to the dispute between the “Vang Đà lạt” (Dalat wine) trademark and the “Vang đỏ Đà lạt” (Dalat red wine) trademark.51 Art 37.6 of 01/2007/TT-BKHCN decree, the English version is available at: http://www.wipo.int/wipolex/en/details.jsp?id=5013.52 Intellectual Property Law, Article 87.3.53 Intellectual Property Law, Article 142.2.54 Since the Law on Intellectual Property came into effect, there have been 46 signs indicating place names and registered as collective trademarks (out of 85 applications) and which are granted protection. Source: National Office of Intellectual Property of Vietnam, data updated on October 2011.55 Where collective trademarks are registered for protection, if the locality continues to register geographical indications, such collective trademarks overlapping such geographical indications will be cancelled. For example, "Thanh Ha" litchi, "Hung Yen" longan and "Vinh" orange.

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origin). In the case of certification of origin, it implies the existence of a specific link

between product characteristics and geographical origin, and the registration of

collective trademarks is subject to public authority’s permission for the use of

geographical name56. The owner of the trademark which does not market the product

and has a control function over the characteristics established by the regulations for

use. From this function standpoint, the certification mark is the closest to the

geographical indication57.

In case of an existing protected geographical indication

Division. If a geographical indication exist and is protected, the possibility to register a

sign containing the same geographical element as a trademark depends on the

assessment of whether such signs are identical or similar to the protected geographical

indication.

Identical or similar signs. If a trademark contains signs which are identical or similar

to a protected geographical indication, it will not be considered as distinctive and [it

will be considered?] that the use of such sign makes consumers misunderstand the

geographical origins of the relevant good or service58. The above is provided by

Vietnam’s Law on Intellectual Property:

“Signs identical with or confusingly similar to protected geographical

indications if the use of such signs is likely to cause misconceptions to

consumers about the geographical origins of goods (Art 74.2.l);

And

Signs identical with a geographical indication or consist of a

geographical indication or being translated or transliterated from a

protected geographical indication for wines or spirits, if such signs shall

be registered for wines or spirits not originating from the place

indicated by that geographical indication (Art 74.2.m);

56 Art 37.7 01/2007/TT-BKHCN decree.57 Among the certification trademarks which have been registered, some certify the origin of the product and service: « Bavi » for milk, « Lapthach » for fish, « Binhthuan » for dragonfruits, « Donduong » for pineapple, "Dalat" for vegetables... Please see the complete list at http://noip.gov.vn/noip/RESOURCE.NSF/vwResourceList/1644A67C8D33914A4725785C000E763B/$FILE/NhanCN.pdf. 58 Intellectual Property Law, Article 42.2.l.

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The last one is a special provision for an enhanced protection for wines or strong

liquors in Law on Intellectual Property compared to previous regulations in the Civil

Code. This additional protection is independent of any actual deceit or unfair

competition act. In general, the use of geographical indications is prohibited if there is

a public deceit. The use of geographical indications for wines or spirits not originating

from the place indicated will be refused without whether those signs can confuse

consumers or not being taken into consideration. Even where the true origin of the

goods is indicated or the geographical indication is used in translation or accompanied

by expressions such as "kind", "type", "style", "imitation" or the like, such use may be

prohibited. This is consistent with the purpose of the TRIPs Agreement to set a higher

level of protection for wine and spirits.

Evaluation. Relating to the determination of the possibility to mislead consumers, the

signs "similar or identical" are likely to cause confusion with a protected geographical

indication if such signs are subject to registration of trademark for identical or similar

products or services. The signs are considered identical or similar to a geographical

indication if they are similar in terms of words, including pronunciation, phonetic

transcription of letters, symbols or iconic emblems protected as geographical

indications. 59

§2- Later registered trademarks and geographical indications

Principe. When a trademark has been registered, an application for the protection of a

related geographical indication may be considered. The application is refused if such

geographical indication is identical or similar to a trademark previously registered and

such use of that geographical indication would cause confusion about the origin of the

product. 60

Co-existence. A geographical indication identical or similar to a trademark previously

registered can co-exist with such trademark if such trademark has been registered for

true protection before the date when the application for the geographical indication has

been made in good faith. However, Vietnam’s Law on Intellectual Property has not

provided for the possibility of registering as geographical indications signs similar or

identical to a trademark for unidentical or unsimilar products or services. Disputes will be decided upon on a case by case basis.

59 01/2007/TT-KHCN decree, art 39.12.ii.60 Intellectual Property Law, Article 80.3.

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Conclusion. the principle of consumer protection and harmonization of the interests

of trademark and geographical indication holders is always set out in the regulations

relating to the resolution of the conflicts between two subjects. (See summary in

Annex 1). The element of good faith in the registration and the risk of confusion are

always taken into consideration. The resolution also ensure the application of the

initially proposed principles of (i) national asset protection and of (ii) integration.

From the viewpoint of regarding geographical indications as national assets, the

protection of national assets is implemented through the stipulation of conditions

aiming at strictly controlling the use of place names as trademarks. Specifically, where

trademarks are identical or similar to or contain previously registered geographical

indications, registration is refused; registration of trademarks containing geographical

indications of goods is also refused. Under these regulations, the use of geographical

indications to register as exclusive trademarks is limited and almost impossible for

Vietnamese geographical indications.

From the viewpoint of harmonizing interests among countries, the principle of "first

to file" also applies to the protection of trademarks and geographical indications. The

acceptance of geographical indication registration in the form of collective trademarks

or certification trademarks is consistent with practices of the United States, Australia

and New Zealand. On the other hand, the coexistence of trademarks registered

previously in good faith and geographical indications later registered meets the

requirements of European Union countries.

Vietnamese regulations are quite general and comprehensive about the resolution of

conflicts between trademarks and geographical indications. However, solving this

issue is actually not easy. Currently, Vietnam has not yet found solutions for a specific

case where both the United States and the Czech Republic have applied to register the

name "Budweiser" for beer products in two different forms (as a trademark and as a

geographical indication).

Different viewpoints on the relationship between the protection of geographical

indications and trademarks in member countries are still the topic discussed in the

negotiations within the WTO framework on building an international communication

and registration system for geographical indications protection. The negotiations have

not come to an end so far.

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ANNEXE 1

Dispute resolution of trademark and geographical protection

under Vietnamese law.

NO YES (LPI, art 74.2.l,m)

YES (IPL, art 74.2.e) No

YES (IPL, art 80.3)ui

NO

No protected geographical origin

Existing protected geographical origin

Can the use of a geographical indication lead to a confusion over the

place of origin of the product?

Registered trademarkLater application for protection of

geographical indication

REFUSALCertification trademark

Trademark Collective trademark

Can the use of such signs mislead consumers on the geographical origin of

products?

Has the sign acquired distinctiveness through use (generally used and

recognised sign)

Sign containing geographical origin

Decision on a case by case

basis

CO-EXISTENCE

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