VCN – According to lawyer Tran Duc Son, Director of Sipco Law Firm, in the case of ST25 rice, the individual or organization that owns the trademark needs to apply for registration in the US. If in the case of a claim by the US registrar that a trademark has been pre-registered by another entity, the individual or organization can make a complaint and justify that it was the original user of the mark of that brand. However, this is difficult and expensive.
|Picture for illustration. Source: Internet|
Regarding ST25 rice, which was registered by four US enterprises for trademark protection, speaking with the press on April 23, Mr. Nguyen Quoc Toan, Director of Department of Agricultural Product Processing and Market Development (Ministry of Agriculture and Rural Development), said that this is a lesson for any enterprise in the process of producing and trading agricultural products, especially in the process of world economic integration.
According to regulations, protection of trademarks and geographical indications are areas managed by the Ministry of Science and Technology, specifically, the National Office of Intellectual Property. The National Office of Intellectual Property has the function of granting trademark protection certificates, protecting geographical indications for industry associations, localities, organizations and individuals when the application meets all conditions.
When there are issues related to trademark disputes, the NOIP is also the information verification unit through international cooperation to support businesses.
With the responsibility of the Ministry of Agriculture and Rural Development, after receiving the information that ST25 rice was registered for trademark protection by US enterprises, Minister of Agriculture and Rural Development Le Minh Hoan assigned the Department of Agricultural Product Processing and Market Development to actively coordinate. The Department of Intellectual Property and the enterprise that owns ST25 rice has consulted with the Ministry of Science and Technology to support enterprises to register for protection of ST25 rice products in the domestic market.
The National Office of Intellectual Property is also actively involved in supporting businesses to soon protect the ST25 rice brand in Vietnam.
Mr. Toan stated that participating in any market must comply with the law of that market. In the US, disputes will be taken up by lawyers in the local attorney’s office to fight for the rights of the subject through the authorities in the United States.
Citing that ST25 rice being registered for trademark protection by four US enterprises is not uncommon, Lawyer Tran Duc Son, Director of Sipco Law Firm said that many Vietnamese agricultural products have faced a similar situation.
“Vietnam is famous for its agricultural exports. The loss of trademarks and geographical indications is a common occurrence. Therefore, businesses should apply for trademark protection as soon as possible,” said lawyer Tran Duc Son.
For ST25 rice, this lawyer said: “In Vietnam, whoever submits the application first has priority, while in the US it is a little different.”
In the US, a registration is granted on the principle that whoever uses it first will be given priority to grant a registration. In that case, to apply for trademark protection in the US, the individual or organization must prove that they are the user, the inventor of the trademark, even the inventor of the branded product.
In the particular case of the ST25 rice brand, the individual or organization that owns the trademark needs to apply for registration in the US. If in the case of a claim by the US registrar that the brand has been pre-registered by another entity, the individual or organization can make a complaint and justify that it is the first user of the brand.
For example, if an entity in the United States has known the trademark of this individual or organization and still submits a pre-registration application, this is a dishonest act of usurpation. Businesses complain on such a basis.
However, lawyer Tran Duc Son said this is very difficult and expensive. Sometimes the results are not as expected for many reasons.
When a trademark is infringed, the individual or organization may not necessarily travel to the United States. They can hire a unit with experience in intellectual property protection in Vietnam that has many partners in the US as well as other countries. When there is a problem, the unit in Vietnam will inform the partner about the case and that partner will set the price for handling the case.
In some cases, the settlement of these cases requires both initiation and negotiation with the registered trademark owner for acquisition. However, sometimes the acquisition negotiation is delayed because the brand owner demands very high prices.
By Thanh Nguyen/Kieu Oanh