Thi Thu Ha Le (1)
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 geographicalindication, consumer knows that a product comes from a particular area and possesses certain characteristics that are essentially attributable to that origin(2). 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 agreement(3) on intellectual property in which geographical indication and trademark are considered as two independent objects, and this is the first time aresolution 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-The protection of Trademarks and Geographical indications
iiPresentation. 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 trademark (4) 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. (5)
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...(6)) or any combination of thesensigns, capable of distinguishing, can be registered as trademark. This is an importantncondition, which reflects the main function of trademarks: distinctiveness(7). 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 loyalty(8). The holder of a trademark hasthe exclusive right to use, to exploit and prevent others from using it without itsPermission(9).
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 consumers(10), for example, signs indicating geographical origins(11). 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 use(12). 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 use(13).
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.
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 renewable(14).
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, indicationswhich 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.(15)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 ageographical name16. 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 longstanding usage by the locals such as "Alphonso" mangoes grown in Maharashtra state, India, "Feta" cheese from Greece or "Khadi" hand-made fabrics from South India.(17)
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 consumers18.
Goods must have the “quality”, “reputation” or “other characteristics” brought by geographical origins. (19)
The link between products and geographical area. This link differenciates geographical indications from previous relating concepts as Appellations of origin and Indications of source20. Geographical indications show not only the goods’ place of origin but also their quality, reputation or distinctive charaters due to geographical 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 initiatives(21) like for handicraft goods or industrial goods(22). "Sheffield", "Swiss watches" and "Swiss knives" are geographical indications used for industrial products(23).
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. (24)
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 at(25).
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 way26. 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 nondescriptive 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 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 area(27).
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 origin(28).
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.
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 » (29).
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 cookies are from Bordeaux, a region of France. The same decision is given in the case of the "Touraine" for tea, coffee products. 30
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. (31)
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 origin(32).
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; 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 "(33).
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 ageographical 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 parties(34). This is the case of "Bordeaux" for wine and "Roquefort" for cheese (France), "Rioja" for wine (Spain), "Madère" for wine (Portugal)35. However, the protection is impossible if the relevant name is considered generic(36).
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 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
identical trademark was early registered and well known37, and that the use of the geographical indication could induce the public in error as to the origin of products(38).
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 prestige39. 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 preregistered trademark still will be used but it loses its monopoly when a geographical indication identical or similar to a product trademark is protected40. 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 trademarks(41).
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 provisions(42). The Regulation [of the 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 200543 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 treaties44, 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 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 trademarks45, due to lack of distinctiveness(46).
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 (47).
As a trademark. Where signs indicating geographical origins have been used and widely recognized as trademarks48, 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”.
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 disputes49. 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 trademarks(50).
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 locality(51), then the right to use collective trademarks is not transferred to organizations and individuals who are not to be found in those collective trademarks owners(52).
A number of signs identifying the geographical origin in Vietnam are registered as collective marks.53 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 registration(54).
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 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 name(55). 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 indication(56).
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 service57. 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);
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. (58)
§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. (59)
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.
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.
(20)
ANNEXE 1
Dispute resolution of trademark and geographical protection under Vietnamese law.
1 Ph.D, Lecturer of Intellectual Property, Foreign Trade University, Vietnam
2 Refer to: http://www.wipo.int/about-ip/fr/geographical_ind.htm
3 Refer to: http://www.wto.org/french/tratop_f/trips_f/intel2_f.htm
4 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.
5 TRIPs, Article 15.1a.
6 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.
7 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.
8 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.
9 TRIPs, art. 16.1.
10 Gever F., “Geographical name and signs used as tradermark”, 8EIPR, 1990, p285.
11 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.
12 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).
13 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.
14 TRIPs, art 18.
15 TRIPs, art 22.1.
16 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: http://www.ictsd.org/iprsonline/unctadictsd/docs/rangnekar_may2003_final.pdf, p. 22.
17 Latha R. Nair & Rajendra Kumar, “Geographical Indications: a search for identity”, 2005, LexisNexis Butterworths, p95.
18 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.
19 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.
20 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 andhuman 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.
21 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.
22 Maskus, Keith E. (2003), “Observations on the Development Potential of Geographical Indications.”, 2003.
23 Quoted by Latha R. Nair & Rajendra Kumar op.cit., p99.
24 Rangnekar, Dwijen (2003), op.cit.
25 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, "Chantaburi" for sapphire, “Sukhotai” for gold. See O’Connor B., p307.
26 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/
27 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.
28 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.
29 The TRIPS agreement – Article 16.1.
30 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.pdf
31 TRIPs, Art. 22.3.
32 TRIPs, Art. 23.2.
33 TRIPs, Art. 24.5.
34 Grevers F., “Topical issues of the protection of geographical indication”, 1999.
35 Refer to: http://www.uspto.gov
36 Refer to: Wineworths Group Ltd vs Comite Interprofessionnel du vin de Champagne (1992), Consorzio del
Prosciutto di Parma vs Maple Leaf Meats Inc (2001).
37 For instance "Tabasco", which is the name of a province in Mexico but which is also registered as a trademark
for a gravy product.
38 Council Regulation (EC) No 510/2006 on the protection of Geographical Indications and Designations of
Origin for Agricultural products and Foodstuffs, Article 14.
39 For instance, Tabasco, a province name in Mexico is registered as the trademark of a sauce product.
40 Regulation No 510/2006 of the European Union – Article 14.
41 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.
42 Decision No WT/DS/174/R, available at the following link:
http://www.uspto.gov/web/offices/dcom/olia/globalip/pdf/case_summary.pdf
43 The English version of the Vietnamese intellectual property law is available at:
http://www.wipo.int/wipolex/en/details.jsp?id=5005.
44 Tran Viet Hung, Report on Geographical indications and Trademarks, Conference entitled “Geographical
indications, the road to access the market”, Hanoi, 2003.
45 Intellectual Property Law, art 73.5 et 74.2.c.
46 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…
47 LPI, art 74.2.e.
48 LPI, art 74.2.a.
49 Refer to the dispute between the “Vang Đà lạt” (Dalat wine) trademark and the “Vang đỏ Đà lạt” (Dalat red
wine) trademark.
50 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.
51 Intellectual Property Law, Article 87.3.
52 Intellectual Property Law, Article 142.2.
53 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.
54 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.
55 Art 37.7 01/2007/TT-BKHCN decree.
56 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/N
hanCN.pdf.
57 Intellectual Property Law, Article 42.2.l.
58 01/2007/TT-KHCN decree, art 39.12.ii.
59 Intellectual Property Law, Article 80.3.
