1. WORKSHOP PROTECTED DESIGNATION OF ORIGIN (PDO) “PHÚ QUỐC” FOR THE EXTRACT OF FISH AND LESSONS LEARNT FOR GI REGISTRATION IN THE EU Ha Noi, July 22 nd 2014 MINISTRY OF INDUSTRY AND TRADE KIEN GIANG PEOPLE’S COMMITTEE DEPT. OF SCIENCE AND TECHNOLOGY EU DELEGATION TO VIET NAM

2. GEOGRAPHICAL INICATION FROM INTELLECTUAL PROTERTY RIGHTS INFRINGEMENT PERPECTIVE Mr. Luu Duc Thanh Head of Geographical Indication and International Trademark Division, National Office of Intellectual Property Press Campaign for PDO “Phú Quốc” extract of fish 15-22/07/2014

3. CONTEXT Questions arisen in the process of geographical indication (GI) development in Viet Nam: 1. How is a GI protected, what is the difference between GI protection and trademark protection? 2. What kinds of labelling are considered infringement of GI protection rights? 3. To who the rights to request for sanction against GI infringement belong? 3

4. CONTENT 1. Legal basis for GI protection 2. Level of protection 3. How to define an infringement 4. The right to complain about GI infringements. 4

5. 1. LEGAL BASIS Question: On which legal basis should GI protection based? - GI registration in accordance with regulations of the applicant country. - For example: + In Viet Nam: GI is to protect the “SIGNS” to recognize a product. + In Europe: designation of origin/GI is to protect “THE NAME” of the product. - Level of protection in Viet Nam and Europe. 5

6. Which legal basis is GI “Phú Quốc” protection based on? Intellectual Property Law 2005 and other legal documents supporting the Law. Regulations promulgated by the provincial People’s Committee for the use and management of the GI. 1. LEGAL BASIS Which legal basis is GI “Phú Quốc” protection based on? Intellectual Property Law 2005 and other legal documents supporting the Law. The EU’s rules of GI protection. 6

7. FeatureGITrademark Function- Differentiate products of the same kind but coming from different geographical areas: + Geographical origin + Typical quality -Differentiate product/service of different individuals or organizations Level of protection HighStandard OwnerState/state mandated organizations organizations/individuals possessing the trademark User- Organizations and individuals authorized by the State -Owner -Those who are permitted by the owner Property rightStateOrganizations/individuals 2. LEVEL OF PROTECTION The difference between GI and trademark: 7

8. 3. HOW TO DEFINE A GI INFRINGEMENT 8

9. What is considered an infringement of GI protection rights? 3. HOW TO DEFINE A GI INFRINGEMENT 9

10. 1. Use of GI for products produced in the GI area but failing to meet the standard of typical quality; 2. Use of GI for products which are similar to the genuine GI product. 1. Use of GI for products produced in the GI area but failing to meet the standard of typical quality; 2. Use of GI for products which are similar to the genuine GI product. 3.1 KINDS OF INFRINGEMENT 10

11. 3. Use of any sign which is the same or similar to a GI for products which are not originated in the GI area, misleading consumers. 3.1 KINDS OF INFRINGEMENT 11

12. 4. Use of GI for wine or brandy which are not originated from the area corresponding to GI area, including indicating the origin or geographical indication by translating the meaning, transcription or adding words or phrases which are similar to the GI name,… 3.1 KINDS OF INFRINGEMENT 12

13. 3.2 USES OF GI WHICH ARE NOT CONSIDERED INFRINGEMENT 1. For personal purpose or need or any non-commercial purpose, for example, for assessing, analysing, research, training, testing, sample production or collecting information in order for production, import and product circulation licensing 2. For circulating, importing and making use of products which are placed in the market. 1. For personal purpose or need or any non-commercial purpose, for example, for assessing, analysing, research, training, testing, sample production or collecting information in order for production, import and product circulation licensing 2. For circulating, importing and making use of products which are placed in the market. 13

14. 3. Use of trademark which is the same or similar to a GI if the trademark obtained protection status in an honest manner before the application for GI registration is made 4. Honest indication of geographical origin. 3. Use of trademark which is the same or similar to a GI if the trademark obtained protection status in an honest manner before the application for GI registration is made 4. Honest indication of geographical origin. 3.2 USES OF GI WHICH ARE NOT CONSIDERED INFRINGEMENT 14

15. 1. Elements of infringement against a GI may be found in: - The signs attached to goods, goods packaging, means of service or transaction receipt - Demonstration, means of advertisement and other means of businesses SIMILAR OR THE SAME TO THE EXTENT THAT MISLEADS CONSUMERS ABOUT THE PROTECTED GI 3.3 ELEMENTS OF INFRINGEMENT AGAINST A GI 15

16. 2. The basis to define if there is any infringement is the scope of protection specified in the GI Certificate. 3.3 ELEMENTS OF INFRINGEMENT AGAINST A GI 3. How to define if a suspected sign is an element of GI infringement: - The suspected sign is the same or similar to the extent that it misleads to the GI: by word of phrase structure, pronunciation, transcription or images or symbols which belong to the protection scope; - The suspected sign is the same or similar to GI product: if they are the same or similar product in terms of nature, function, use and distribution channel. 16

17. 3.3 ISSUES OF INTEREST

18. In case a trademark is exclusively protected by a company, does this company have the right to use the trademark and what kind of use is considered an infringement against a GI? 3.3 ISSUES OF INTEREST - -Difference between trademark and label: 18

19. Some examples of trademarks related to the name “Phú Quốc”: 3.3 ISSUES OF INTEREST Individual label 19

20. Individual label 3.3 ISSUES OF INTEREST 20

21. 1. Example 1: Labelling FISH SAUCE OF MR. A Product which is bottled using inputs of Phu Quoc origin 2. Example 2: Labelling “FISH SAUCE OF MRS. B” Phu Quoc trandition FISH SAUCE OF SENIOR PERSON D Phu Quoc specialty 3. Example 3: IS INDICATING THE ADDRESS A MUST, HOW TO INDICATE? 3.3 ISSUES OF INTEREST 21

22. The right to prohibit the use of A GI by the others The state, an organization/individual awarded the use of a GI have the right to prohibit the use of this GI by the others if such use does not fall under provisions g and h of Article 125, Intellectual Property Law (including trademark which obtained, in an honest manner, protection before the application for related GI registration is made, honest indication of people’s name, signs to indicate type, quantity, quality, use, value, geographical origin and other characteristics of the product/service…) 4. THE RIGHT TO COMPLAIN ABOUT INTELLECTUAL PROPERTY INFRINGEMENT AGAINST GIs 22

23. Responsibility to protect against GI infringements: -The State; -Collective bodies; -Users – organization/individual; -Distributors – organization/individual; -Consumers. 4. THE RIGHT TO COMPLAIN ABOUT INTELLECTUAL PROPERTY INFRINGEMENT AGAINST GIs 23

24. Thank you for your attention! Luu Đuc Thanh Division of Geographical Indication and International Trademark Division National Office of Intellectual Property, 386 Nguyen Trai,Thanh Xuan, Hà Nội 24

25. 25 Contact : EU-MUTRAP Project Management Unit 1203, 12 th Floor, Office Building, Hanoi Tower, 49 Hai Ba Trung, Hoan Kiem, Ha Noi Tel: (84 - 4) 3937 8472 Fax: (84 - 4) 3937 8476 Email: mutrap@mutrap.org.vn Website: www.mutrap.org.vnwww.mutrap.org.vn (Workshop materials are available on this Website)