Lessons for individuals and businesses in registering and protecting intellectual property rights related to plant varieties
In recent times, “ST25” or “ST25 rice” is a very popular phrase in the market. This is the type of rice that has competed and won the world's best and second best rice award for two consecutive years 2019 and 2020. Those, who are interested in ST25, must have heard information like: “ST25 lost the right to post registered in the US” or “St25 rice is registered in Australia”.
To respond to this problem, a representative of the National Office of Intellectual Property affirmed that "it is impossible to protect the trademark for the ST25 mark for rice products". The reason is that ST25 is the common name for the product harvested from the ST25 rice variety, and most countries including the United States do not have trademark protection for the generic name of the product/service. According to information from the National Office of Intellectual Property of Vietnam, in fact, trademark applications for the ST25 rice products in the United States have been refused to register for this sign. Banca lawyers, with our professional knowledge, would like to analyze this incident from a legal perspective on intellectual property so that businesses and individuals can consider this a lesson learned in protecting intellectual property in general and plant varieties in particular.
1. A ST25 rice product currently on sale in Vietnam market includes what intellectual property that can be protected?
When a product is put on the market, businesses have to carry out a lot of necessary legal procedures to register with state agencies such as product quality registration, product circulation registration, product barcode, etc. Enterprises also have to design product packaging to contain products, but sometimes having their products circulating on the market for a while, they still do not understand clearly which of their intellectual property that can be protected, needs to be registered for protection, or which intellectual property requires permission from other IP right owners to avoid lawsuits or counterfeiting in the course of business. In terms of intellectual property property, an ST25 rice product as shown above can be protected with the following rights:
Right to plant varieties: As shown here, ST25 is understood as a rice variety to produce finished rice and this is also the rice variety that has been granted a plant variety protection certificate;
Rights to Trademarks: logos, names, images, combinations... are the creation or unique combination of those of ST25 rice production enterprises;
Right to Industrial Design: if the package, in which the colors show, the decorative layout of this package satisfies the criteria for being able to be protected exclusively by the industrial design in accordance with IP Law;
Rights to Patents/Utility Solutions: in the case of rice produced by a new process, having an improvement over known processes may be protected as patents/utility solutions.
Copyright: related to paterns, logos with artistic elements are shown on the package.
2. To produce ST25 rice, do brand owners (or investors, manufacturers) need to get permission from Mr. Ho Quang Cua and Ho Quang Tri Private Enterprise and what procedures must be followed?
For rice variety ST25, enterprise Ho Quang Tri, is the owner of the Protection Title No. 21.VN.2020 according to Decision No. 45/QD-TT-VPBH dated March 6, 2020 of the Director of the Department of Crop Production, Ministry of Agriculture and Rural Development.
According to Article 186 of the Intellectual Property Law, holders of plant variety protection titles have the following rights:
The registration owner has the right to use or permit others to use the following rights
The following concerns propagating materials of protected varieties:
a) Production or propagation;
b) Processing for the purpose of propagation;
d) Sell or perform other market access activities;
g) Retention to perform the acts specified at Points a, b, c, d, đ and e of this Clause.
Therefore, any individual or organization that wants to use rice varieties or propagation materials must obtain permission from Ho Quang Tri Private Enterprise who is the owner of this rice variety. However, if Ho Quang Tri enterprise has allowed a third party to produce or propagate this rice variety, the production facilities can buy directly from these third parties without having to ask for permission from the enterprise.
3. Mr. Ho Quang Cua and Ho Quang Tri Private Enterprise need to do what if they want to protect their plant varieties in the international market? What is UPOV?
In terms of being the owner and breeder of the plant variety, when choosing a target market to exploit, they should consider filing a new plant variety claim in these countries. Currently, Vietnam is a member of the International Association for the Protection of New Plant Varieties - UPOV. Therefore, protection in member countries is very favorable. Notably, this association has 72 member countries, including large countries, which are potential markets for agricultural products such as the United States, Europe, Australia, China, Japan, and South Korea.
Regarding UPOV, “UPOV” stands for the association French name: “Union internationale pour la Protection des Obtentions Végétales” with the operating criteria of "Provide and support the new plant variety protection system to work effectively, with the goal of encourage the development of new plant varieties in the public interest”. The UPOV establishes a general principle of testing guidelines, by which Members will apply these common principles as the evaluation criteria. In addition, when participating in the UPOV, the applicant can file an application in another country and claim the right of priority from the first application within 12 months from the date of this first application.
At the same time, when joining UPOV, Vietnam also signed a Memorandum of Understanding with a number of countries/regions such as the European Union, France, the Netherlands, Japan, Korea, and Singapore on the exchange of DUS survey result test. As a result, the applicant may not have to conduct DUS testing in these countries, and thus saves time and money to protect their new plant variety.
UPOV also assists Members in ensuring enhanced enforcement of breeders' rights by maintaining cooperative communication between Members and organizing seminars, activities to improve understanding of people about the rights of breeders.
4. If ST25 rice producers want to bring their products to the international market, what should they pay attention to regarding intellectual property?
Once individuals and businesses have determined which intellectual property assets need to be protected, first quickly seek legal advice on intellectual property agents, ask a lawyer for advice and register for protection in markets where they have key business establishment or a business registration (eg, a Vietnamese legal entity must register for intellectual property rights in Vietnam).
Although in Vietnam, businesses can, by themselves, register for protection of their rights at the National Office of Intellectual Property, they should still seek legal support from intellectual property lawyers because the right to register in Vietnam is linked with the right to register in some other countries in the world when Vietnam and the countries that the business is aiming for are members of international treaties, this could be very beneficial for Vietnamese individuals/legal entities.
After determining the international markets in which the enterprise intends to do business, because intellectual property rights are territorial, and rights also have a certain duration, individuals and businesses should also promptly request the lawyer for advice to proceed with the application for your intellectual property rights in these markets, avoiding unfortunate legal risks, causing enormous damage since the attorney's fees as well as litigation fees in most other countries are very high.
From the lesson of ST25, it can be realized that it is time for Vietnamese businesses to have a broader and more in-depth perspective at the registration and protection of their intellectual property rights. In the future, this will be a valuable asset, but because of its intangible nature, it can be very easily compromised. Therefore, as a business with intellectual property assets, we need to understand our rights and take measures to protect our assets. This is a must-dos from brainstorming stage, to avoid the situation of "losing cows before building a barn". However, it is also necessary to recognize the fact that despite being aware of the role of intellectual property assets, the ability to evaluate these assets is not high. Therefore, businesses, companies or individuals in need should look to professional consulting units for support.