Table Of Contents

1. Grounds for Cancellation and Invalidation

The validity of a GI protection title shall be terminated in the case where geographical conditions decisive to the reputation, quality, or special characteristics of products bearing a geographical indication have changed resulting in the loss of such reputation, quality, or characteristics of products.
(Article 95.1g of the IP Law)
A GI protection title shall be entirely invalidated in the following cases:
a. The registration applicant has neither been assigned the right to register a geographical indication; 
b. The geographical indication fails to satisfy the protection conditions at the time the protection title is granted.
(Article 96.1 of the IP Law)

Beyond the wording of the law, there are also other grounds for invalidation and cancelation of Geographical Indication, such as

1.1. Loss of Distinctive Characteristics:

The dynamic nature of geographical conditions and production practices can occasionally alter the very essence of a protected product. In such cases, cancellation may be pursued if:
Changes in the geographical environment: Significant climatic alterations, soil degradation, or natural disasters affecting the designated region may lead to the product losing its unique qualities, rendering the GI registration no longer representative of its intended purpose.
Substantial deviations in production methods: Technological advancements or shifts in traditional practices might inadvertently or deliberately alter the product's characteristics, necessitating potential cancellation to protect consumer expectations and the integrity of the GI system.

1.2. Misrepresentation or Misuse:

A fundamental tenet of the GI system is maintaining consumer trust and fair market competition. Cancellation can be initiated if:
Use with products originating outside the designated region: Unauthorized application of the GI to products not produced within the specific geographical boundaries constitutes deceptive labeling and undermines the value of the protected indication.
Significant decline in quality: If the product bearing the GI consistently falls below expected standards, consumers are misled and the reputation of the region is tarnished. This warrants cancellation to preserve the credibility of the system.

1.3. Priority Rights:

The first-to-use principle governs intellectual property rights, and GIs are no exception. Cancellation can be sought if:
Prior use of the name or specific characteristics: Another party can demonstrate bona fide and established use of the protected name or characteristics within the designated region before the GI application was filed. Such prior use takes precedence and necessitates cancellation of the conflicting registration.

1.4. Public Interest:

While rare, in exceptional circumstances, public interest can supersede individual rights. Cancellation may be authorized if:
Harm to public health or safety: Continued use of the GI poses a demonstrable risk to the health or safety of consumers. For instance, if a food product label with a GI is consistently found to contain contaminants, public health concerns dictate cancellation of the registration.
Violation of public morality: If the GI name or characteristics are deemed offensive or contrary to prevailing societal norms, it may be canceled to uphold public decency and ethical standards.

 

2. Cancellation vs. Invalidation

Within the intricate tapestry of Vietnam's legal framework protecting Geographical Indications (GIs), the distinctions between cancellation and invalidation procedures often evoke confusion. While both mechanisms aim to rectify erroneous or harmful GI registrations, their underlying concepts and legal consequences diverge significantly. This paper delves into the contrasting nature of these processes, elucidating their distinct roles in safeguarding the integrity and efficacy of Vietnam's GI system.
 

2.1. Cancellation: A Voluntary Relinquishment

Cancellation arises primarily from the GI holder's initiative, signifying a voluntary relinquishment of their intellectual property right. This process serves the following purposes:
Change of heart: The GI holder may no longer wish to maintain the registration, perhaps due to ceasing production, shifting focus, or encountering financial difficulties.
Non-commercial use: If the product protected by the GI is not commercially exploited within the designated region, prolonged non-use might warrant cancellation to prevent the designation from becoming dormant or hindering genuine producers.
Failure to pay maintenance fees: Similar to other intellectual property rights, maintaining a GI registration requires periodic fee payments. Failure to fulfill this obligation necessitates cancellation to ensure fair administration of the system.
Cancellation proceedings are generally swift and straightforward, conducted primarily through administrative channels. The GI holder submits a formal request to the National Office of Intellectual Property (NOIP), outlining the justification for relinquishing the registration. Upon reviewing the request and confirming its validity, the NOIP issues a cancellation notice, effectively nullifying the GI protection.
 

2.2. Invalidation: Contesting the Legitimacy

Unlike cancellation, invalidation stems from a challenge to the legitimacy of the GI registration itself. This adversarial process allows any interested party, not just the holder, to petition the NOIP to revoke the designation on various grounds:
Legal flaws in the application: Incorrect information, failure to meet the designated region's geographical boundaries, or infringing upon existing intellectual property rights can undermine the legal basis of the registration, paving the way for invalidation.
Loss of distinctiveness: Significant changes in the geographical environment, production methods, or product characteristics that alter its unique qualities can render the GI inaccurate and misleading, necessitating invalidation to uphold consumer trust.
Misuse and deceptive practices: Unauthorized use of the GI on products originating outside the designated region, or a consistent decline in quality standards, constitutes deceitful practices that warrant invalidation to protect consumers and maintain the GI's value.
Prior rights: If another party demonstrates prior bona fide use of the name or specific characteristics within the designated region, their pre-existing right supersedes the later GI registration, triggering invalidation proceedings.
Invalidation proceedings are inherently more complex and prolonged than cancellation. The petitioner submits a formal request with detailed evidence justifying their claim. The NOIP meticulously investigates the petition, conducts hearings to consider arguments from both parties and ultimately issues a decision upholding or nullifying the GI registration.
 

2.3. Contrasting Consequences: Resolving Misalignments

The contrasting nature of cancellation and invalidation extends to their consequences:
Cancellation: Upon formal relinquishment, the GI name and characteristics instantly fall into the public domain, free for anyone to use without restriction. However, the former holder retains the right to re-apply for the same GI in the future if circumstances change.
Invalidation: If the NOIP upholds the petitioner's claim, the GI registration is revoked, rendering the name and characteristics unusable throughout Vietnam. Furthermore, the former holder faces potential legal repercussions for any infringements or misleading practices committed during the disputed registration period.
 

2.4. Navigating the Maze: Choosing the Right Path

Understanding the nuanced differences between cancellation and invalidation is crucial for stakeholders within the Vietnamese GI system. For GI holders, anticipating potential grounds for challenge and ensuring compliance with legal requirements helps mitigate the risk of involuntary invalidation.  Conversely, petitioners contemplating a challenge must carefully assess the specific circumstances and gather concrete evidence to support their claim before initiating complex invalidation proceedings.

 

3. Procedural Steps

 

3.1. Who can cancel or invalidate a GI?

Organizations and individuals shall have the right to request IP Viet  Nam to terminate/invalidate the validity of certificates of  GI registration provided that they have paid fees.
(Articles 95.4 and 96.3 of the IP Law)

 

3.2. What document needed to provide

a) An application may request for termination or invalidation of one or more than one protection title by invoking the same reasons, provided that the applicant shall pay prescribed fees for each protection title.
b) An application  for  termination  or invalidation  of  the  protection title must comprise the following:
(i) The request for termination or invalidation of the protection title (Form 04-CDHB);  
(ii) Proofs (if any);  
(iii) Power  of  attorney  ( if  the  request  is  filed  through  a representative);  
(iv) A written justification of  the request ( clearly stating the serial number  of  the  protection  title,  reasons,  legal  grounds,  contents requested  for  termination or invalidation of a part of or entire the protection title) and relevant documents as specified at Points 7. 2, 22.2 and 22.3 of  Circular No. 01/2007/TT-BKHCN;  
( v) Receipts of the prescribed fees (In case fees are paid via postal services or deposited directly to the IP Viet Nam bank account).
 

3.3. Procedure for Invalidation and Cancellation

1. When the opinion of the third party is considered grounded, IP Viet Nam shall notify such opinion applicants and set a time limit of one month from the notification date for them to respond in writing. After receiving the applicant’s response, IP Viet Nam shall notify the third party, if necessary, and set a time limit of one month from the notification date for them to have an opinion in writing on that response. After the provided time limit, IP Viet Nam shall handle the opinions of the applicant and the third parties based on proofs,  arguments furnished,  and documents in the applications. The third party shall be notified of the result of the substantive examination of those applications.
2. When the opinion of the third party is considered groundless, IP Viet Nam is not required to notify that opinion of the applicants but shall notify the third party of its refusal to consider his opinion, with clear reasons.
3. If the opinion of the third party is related to the rights of registration when finding it impossible to determine whether or not such pinion are grounded,  the  IP  Viet  Nam shall notify such to the third party so that the latter may file a petition with a court following the provisions of civil procedures. Within one month of the date the IP Viet Nam issues the notice, if the third party fails to submit to the  IP  Viet  Nam copy of the notification of admitting the case by the court, the opinion of the third party is considered withdrawn and the  IP  Viet Nam continues to process the application without the opinion of the third party. If the IP Viet Nam receives a copy of the notification of admitting the case by the court from the third party within the above time limit,  it shall suspend the application processing until final results of dispute settlement by the court are obtained. After the final results of the dispute settlement by the court are obtained,  the application processing shall be resumed by those results.
4. When necessary and upon the request of both parties, IP Viet Nam shall organize hearings between the third party and the applicant to further clarify matters challenged by opponents.
5. The time limit for the applicant to respond to oppositions submitted by the third party shall not be counted toward the time limit for the IP Viet Nam to carry out relevant procedures according to regulations
 

4. Challenges and Considerations

While the legal frameworks for cancellation and invalidation of Vietnamese Geographical Indications (GIs) offer necessary checks and balances, navigating these procedures presents various challenges and necessitates careful consideration. This paper delves into these crucial aspects, highlighting the hurdles that may arise and the key factors to ponder before initiating or engaging in such processes.

 

4.1. Challenges:

The burden of proof: In invalidation proceedings, the petitioner shoulders the significant burden of proving the grounds for revocation. This requires meticulous gathering of evidence, legal expertise, and potentially costly expert analysis, posing a significant challenge for individual producers or consumers.
Cost and duration: Both cancellation and invalidation involve administrative fees, legal representation, and potential court proceedings. These financial and time commitments can be daunting, particularly for small producers or organizations with limited resources.
Lack of awareness: Many, especially rural communities, lack sufficient knowledge about GI cancellation and invalidation procedures. This hinders their ability to challenge inaccurate or harmful registrations, potentially perpetuating unfair practices and misrepresentation.
Complex legal framework: The legal intricacies surrounding GIs, cancellation, and invalidation can be challenging to navigate. Lack of familiarity with legal procedures and nuances can inadvertently weaken claims or impede progress, highlighting the need for professional legal guidance.
 

4.2. Considerations:

The severity of the issue: Assessing the gravity of the situation is crucial. Minor inaccuracies or isolated instances of misuse may not warrant the complexities of an invalidation challenge. Conversely, substantial legal flaws, consistent deceptive practices, or significant harm to public interest necessitate immediate action.
Alternative dispute resolution: Exploring alternative mechanisms like mediation or negotiation can be quicker, less expensive, and potentially more amicable than formal legal proceedings. This is particularly relevant for disputes between neighboring producers or communities within the same designated region.
Impact on stakeholders: Consider the potential consequences of cancellation or invalidation on all parties involved. Producers, consumers, local communities, and the GI system as a whole can be affected, and a measured approach that minimizes detrimental impacts is essential.
Exhaustion of other avenues: Ensure that all internal complaint mechanisms or administrative review options within the NOIP have been exhausted before initiating formal legal proceedings. This demonstrates due diligence and minimizes unnecessary legal entanglement.

 

5. Conclusion

Understanding the challenges and considerations associated with Vietnamese GI cancellation and invalidation is paramount for safeguarding the integrity of the system, protecting legitimate interests, and promoting fair competition. While legal pathways exist to rectify inaccuracies and harmful practices, careful assessment, strategic approaches, and alternative dispute resolution methods should be explored before embarking on these complex and potentially resource-intensive procedures. By navigating these challenges and considerations with prudence and a balanced perspective, stakeholders can contribute to a robust and effective GI system that fosters sustainable development and upholds the value of Vietnam's unique agricultural products.

If you need further explanation on this subject, please don't hesitate to contact us through email at dung@luatminhkhue.vn or phone number: +84986 386 648. Lawyer To Thi Phuong Dzung.