[Vietnam Update] Register or Risk Losing Your IP Assets

By Linh Nguyen

Recently, the registrations of the mark “ST25” for rice and rice-related products by four US companies in California before the United States Patent and Trademark Office (USPTO) made headlines in Vietnamese media attracting the attention and concern of a large number of Vietnamese.

“ST25” is Vietnamese rice strain which was awarded and recognized as “World’s Best Rice” in 2019. This strain was developed and named by Ho Quang Cua – an agricultural engineer based in the Soc Trang province in the Mekong Delta Region in the South of Vietnam. Despite the reputation and sales in both domestic and oversea markets using the below packaging, especially in the US, Ho Quang Tri Company Limited (“HQT”) had not yet registered its trademark for rice and related products originated from ST25 strain in Vietnam and US.

The sole IP protection sought by co-creators Ho Quang Cua, Tran Tan Phuong and Nguyen Thi Thu Huong and HQT for the ST25 rice strain that has been granted in Vietnam is New Plant Variety rights under the Certificate of Plant Variety Protection No. 21.VN.2020 in March 2020 issued by the Department of Crop Production under the Ministry of Agriculture and Rural Development.

From the legal perspective, “ST25” itself cannot be protected as a trademark since it is a common descriptive name of a kind of rice strain, and any enterprise trading ST25 rice and related products may use the word “ST25” as a product indication in their brand. However, legal protection as a plant variety in this circumstance is insufficient and not strong enough to protect products relating to ST25, especially when the rice products are also branded and marketed internationally. In other words, HQT has put itself at risk of being copied by dishonest parties or exploited by competitors by launching its products abroad without first seeking to register its brand/trademark in these countries.

Several other Vietnamese enterprises that do not produce rice but export rice have registered brands including the “ST25” mark before the Intellectual Property Office of Vietnam (IP Viet Nam) and their main overseas markets. These four trademark registrations were filed since March 2020 under the name of Vietnamese distributing agents with ST25 as a component of their marks for rice and related products and services:

With the recent trademark applications in the US, HQT faces high risks there as it has not yet registered any IP rights in US. Below are the controversial trademarks that were filed:

Although the chances of these trademark applications being granted are low on the basis of the evaluation of USPTO that “ST25” is a descriptive name of a rice variety, this should be a wake-up call to HQT to quickly pursue adequate legal protection for their IP assets in Vietnam, the US and other oversea markets where they intend to export their products. Failing to do so could result in the pain of needing to spend time, effort and costs in rebranding, re-educating the public and re-establishing its reputation.

Each business may have their own marketing strategies and may rely on various tools to effectively communicate their message and brand promise to intended targets to generate interest, build recognition and create a loyal client base. But how do we differentiate ourselves and stand out among competitors? That is exactly how IP rights help. The protection of IP rights, especially trademarks, is crucial for protecting products launched in domestic or overseas markets. Think of the legal protection afforded by IP rights as an intangible barricade to protect businesses’ products when exploiting markets.

Venturing from local to global does take courage but businesses can be strengthened with sufficient research and advice from experts in the IP field. Don’t hesitate to reach out to us at kass@kass.asia – we are ready to help!

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