The National Office of Intellectual Property (NOIP) says the ST25 rice variety has been granted a Protective Certificate No 21.VN.2020 under Decision No 45/QD-TT-VPBH dated March 6, 2020 by the director of the Department of Crop Production.
Ho Quang Cua and ST25
The holders of this protection certificate are the private enterprise Ho Quang Tri and the creators of the rice variety – Ho Quang Cua, Tran Tan Phuong and Nguyen Thi Thu Huong.
Under the Intellectual Property Law (IP Law), in order to register for plant variety protection, registrants need to propose an appropriate name for the plant variety to the state management agency for rights over plant varieties, and that name must coincide with the name registered for protection in any country that has signed agreements on plant variety protection with the Socialist Republic of Vietnam.
In this case, when applying for registration, the registrants proposed the name ‘ST25’.
Clause 4 Article 163 of the IP Law stipulates that organizations and individuals that offer for sale or market reproductive materials of plant varieties will have to use the denominations of such plant varieties as stated in their protection titles even after the
term of protection expires.
Article 186 of the law says protection certificate holders have the right to exercise or authorize others to exercise the following rights to reproductive materials of a protected plant variety: 1/ To conduct production or propagation; 2/ To process them for the purpose of propagation; 3/ To offer them for sale; 4/ To sell them or conduct other marketing activities; 5/ To export them; 6/ To import them; and 7/ To store them.
Protection certificate holders have the right to prevent acts that are considered as infringing on the rights of the protection certificate holders, including the exploitation and use of the rights of the protection certificate holders without the holders’ permission.
Citing articles of the IP Law, NOIP pointed out that the State’s protection when granting plant variety protection certificate covers the protection of seed rice.
|Protection certificate holders have the right to prevent acts that are considered as infringing on the rights of the protection certificate holders, including the exploitation and use of the rights of the protection certificate holders without the holders’ permission.|
Certificate holders have the right to conduct these above-mentioned behaviors themselves, or allow others to conduct this with reproductive materials (in this case, rice seed), not rice (post-harvesting processed product).
The rights granted to the holders of Certificate No 21.VN.2020 are only valid in Vietnam.
As for the regulation stipulated in the Clause 4 Article 163 of the IP Law, the use of the denominations of plant varieties as stated in their protection titles is a compulsory obligation for certificate holders and those authorized by certificate holders even after the expiration of the protective term.
‘ST25 sign’ won’t get exclusive protection
Regarding trademark protection for rice products in general and ST25 rice in particular, NOIP said rice is a processed product from a post-harvesting product (paddy) from rice plants. If Ho Quang Tri Private Enterprise sells ST25 rice seeds to farmers for cultivation, they will have to use the name ‘gao ST25’ (ST25 rice) after they harvest, unhusk and create commercial rice.
The enterprises collecting unhusked rice that is the product from paddy harvested from ST25 rice seeds, and who mill and sell it in the market must also call it ST25 rice.
This means that ST25 is the name of the rice processed from unhusked rice harvested from ST25 rice variety.
Since this is the common name of a type of product, and everyone who trades in this product must use this name, Point b, Clause 2 of Article 74 of the IP Law stipulates that the common name of the goods in any language which is widely and regularly used and known to many people will be considered indistinguishable and won’t be registered as a trademark.
Therefore, according to NOIP, in this case, no one, including the private enterprise Ho Quang Tri, will receive exclusive protection over the ST25 sign for rice products.
Consumers can differentiate the commercial origins of rice products because enterprises must launch ST25 rice products under their specific brands.
“That is why we can buy ST25 rice with Bao Minh brand or ST25 rice products bearing other brand names,” a representative of NOIP explained.
What about the US?
As for the protection of ST25 rice in foreign markets and in the US, NOIP believes that under the laws of other countries, including the US, the common names of the products and services will not be protected as a trademark.
If referring to the USPTO (United States Patent and Trademark Office) guidance, appraisers will reject the trademark registration application for the names of plant varieties.
This can be seen in USPTO’s announcement (dated November 20, 2020) about its intention to refuse the trademark registration for “VIETNAM'S ST25 RICE, DAC SAN SOC TRANG” filed in the US on September 1, 2020, according to registration application number 90151727 of Transworld Foods, Inc.
Support to be provided to SMEs in intellectual property
Support is to be provided to small and medium–sized enterprises (SMEs), enabling them to use intellectual property (IP) rights to build stronger, more competitive and resilient businesses, said Dinh Huu Phi, Director of the Intellectual Property Office of Vietnam.
SMEs took centre stage at this year’s celebration of World Intellectual Property Day (April 26) with the World Intellectual Property Organisation (Wipo) Director General Daren Tang describing them as an engine for growth in a post-pandemic world.
Phi said that SMEs played a significant role in global economies, citing statistics that SMEs accounted for 90 percent of all companies worldwide and contributed 40 percent of gross domestic product (GDP). In Vietnam, the figures were 97 percent and 47 percent, respectively.
Commercialising IP and using it for business growth was critical for SMEs in a post-pandemic world, he said.
Phi said that efforts were being made to improve the mechanisms and policies to create favourable conditions for enterprises in creating, forming, exploiting and protecting their intellectual property rights.
Specially, the national IP strategy by 2020 put SMEs as a focus, which aimed to encourage innovation and cooperation between enterprises and research institutes and universities to develop IP assets for socio-economic development goals.
He said that support would be provided to IP development and protection for key products of Vietnam and products of the “One Commune, One Product” programme.
Accordingly, the focus would be placed on building and implementing a management system for geographical indication, certification marks, collective mark associated with the registration of cultivation area code, food safety, quality certification and traceability as well as developing the value chain for protected products.
It was also important to enhance trade promotion activities to promote the commercialisation of IP assets, he said.
During the past five years, more than 500 key agricultural products received support from the IP asset development programme. The IP Office of Vietnam was also providing support in terms of geographical indication protection in Japan for Luc Ngan lychee, Binh Thuan dragon fruit and Buon Ma Thuot coffee.
Support in terms of trademark protection were also provided to Thai Nguyen tea and Chu noodles.
Phi said that many protected products were recognised widely with increased added value, such as Cao Phong orange, Phu Quoc fish sauce, Luc Ngan lychee, Ha Giang orange and Ben Tre green-skin pomelo. VNS
If certain legal entities in the US successfully register the ST25 rice brand, Ho Quang Cua, the real owner of the brand, will lose ownership and it will be very difficult to claim it back.
Four foreign companies have registered trademark protection for Vietnam’s ST25 rice in the U.S., which may choke off Vietnamese food exporters tapping the market later,