Waiting for the Organiser… - IPR-Helpdesk...•Handicraft & industrial products can be protected as GIs in Vietnam! •Type of GI products: wines, spirits, agricultural products

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Ester Olivas Cáceres

Geographical Indications as a Tool for

the Protection of EU Food, Beverages

and Handicraft Products in Vietnam

South-East Asia IPR SME Helpdesk

12 April 2018

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12 April 2018Copyright © 2018 South-East Asia IPR SME Helpdesk.

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Snapshot: EuroCham

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1. Established in 1998 >>> celebrating 20th anniversary in 2018

2. Started with 60 members >>> nearly 1,000 members

3. The 4th largest European Chambers world-wide

4. Winner of Best Large Chamber Award in Asia-Pacific 2017

5. 2 Offices in Hanoi & Ho Chi Minh City

6. 2 Chapters in Danang, Hai Phong, Binh Duong (regionalrepresentation started in 2017)

7. Secretariat: 16 EuroCham + 3 SEA IPR SME Helpdesk team

8. “Hybrid”: Direct membership AND indirect membership as umbrellaorganization based on affiliation partnership with 8 BusinessAssociations

Introduction about EuroCham FAABS

• Founded in April 2013

Objectives:• Improving the competitiveness of the Food, Agri and Aqua Business Sector in Vietnam;• Improving food safety for humans and animals through a supply chain approach;• Creating a level playing field for small, large, local and international companies regardless of legal

entity, size and nationality; and• Creating a sustainable Food, Agri and Aqua Business Sector in Vietnam in the long term or

improving the sustainability of the sector where it is already sustainable.

Ways to reach objectives• Organise meetings and send letters with the Government and other stakeholders • Write a chapter for the Whitebook of the European Chamber of Commerce in Vietnam• Contribute to the Agribusiness Working Group of Vietnamese Business Forum • Participate in the Food Safety Working Group (ADB, World Bank, FAO, WHO)• Provide input to review of Food Safety Law• Organise events to share and discuss relevant issues• Circulate information on the Food, Agri and Aqua Business among the members

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Speaker’s bio

Name: Ms. Ester Olivas CáceresFirm: Lawyer Senior Consultant on EU Policies, International Trade

& Intellectual Property - Expert on Geographical Indications (GIs)Location: SpainEmail: [email protected]

With almost 20 years of professional experience, Ester is a Spanish Lawyer with an LLM in EuropeanPolicies and Institutions, specialized in all aspects related to Geographical Indications (GIs) from atechnical, legal and political point of view.

Bearing over 14 years of experience in strategic counseling, legal advising and representation of GIproducers of agricultural products, wines, spirits and handicrafts, Ester has worked on the directionand management of key international organizations, as Secretary General of ORIGEN ESPAÑA -theSpanish Association of Designations of Origin- and as Secretary General of oriGIn - the firstInternational Network of Geographical Indications -, where she represented and defended the interestsof GI products from all over the world.

For the past 8 years, Ester works as Lawyer Senior Consultant to international organizations for theimplementation of technical assistance and international cooperation projects, providing legal andtechnical assistance on GI-related matters to government authorities and local stakeholdersthroughout the world, with a role increasingly linked to the countries of the ASEAN region.

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Vietnam at a glance

Vietnam Trade Relations: Worldwide & with the EU

Geographical Indication (GI):What it is and what for? General overview

GIs in Vietnam: Overall context

Protection of EU Food, Beverages and Handicrafts products inVietnam:Options, Experiences, Registration procedure & Protection

Take – Away Messages & Conclusions



Outline of the presentation

The Socialist Republic of Vietnam

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• Total area: 331,210 km2 approx.• Length: 1,650 km from N to S• Border countries:

- N: China- NW: Laos- SW: Cambodia & Thailand- E & SE: Philippines, Malaysia & Indonesia

• Land:- ¾ mountains, hills & forest- ¼ deltas

• Climate: Tropical with different climate by regions

• Population: 95.5 mill. as of 2017 (estimate)

- World's 14th most populous country- 9th most populous Asian country

• Multi-ethnic: 54 ethnic groups

• Religion: many permitted & 6 mainly practiced

• Official language: VietnameseAlso spoken also French, English, Japanese & Korean



G E N E R A L D A T A :

Source: http://www.vietnam-guide.com/maps/

Economic context in Vietnam 2016

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• 1986 One of the world’s poorest nations – 2016 A lower middle-income country!

• 1990 GDP = USD 6.47 bn 2016 GPD: USD 205.28bn (6.2% GDP annual growth)• Export growth: 8.6% (machines, equipment, electronics, etc. but also coffee, peppercorn, cashew,

tea & rubber)

• Import growth: 4.6% (electric products, computers, cellphones, equipment & spare parts,chemistry substances, medicines, paper, gas or steel)

• Foreign Direct Investment (FDI) increase in 2016: 7% = One of the most attractive destinationsin South East Asia for foreign investors



Source: World Development Indicators database (Extract)

VIETNAM

S T R O N G E C O N O M I C G R O W T H

Employment in Vietnam 2016

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Source: World Development Indicators database (Extract)

VIETNAM

T H R O U G H A G R E A T P E R I O D O F C H A N G E

Breakdown of Economic Activity By Sector Agriculture Industry Services

Employment By Sector (in % of Total Employment) 41.8 22.9 35.2

Value Added (in % of GDP) 18.1 36.4 45.5

Value Added (Annual % Change) 1.4 7.6 7.0

Source: World Bank, Latest Available Data. Because of rounding, the sum of the percentages may be smaller/greater than 100%.

Services sector • 32% of workforce (39.7% of the GDP)• Mainly tourism & telecommunications

• Standard of living:Poverty rate from almost 50% in 1990 to 3% in 2016

• Unemployment rate: 2.3% in 2016

• 60% of total population under 35 years old =

young, abundant and quality workforce at competitive cost

Agriculture sector• 46.8% of workforce (17% of the GDP)• Increasing domestic demand• Exports of rice, coffee, rubber, cashew

aquaculture & fruits• Import of meat, meat products, rubber,

animal feed, feed grain, sugar & cotton

Industry sector • 21.2% of workforce (33.3% of the GDP)• Mainly textiles, food industry, furniture,

plastics and paper. Also energy, oil, cars,electronics & computer technologies(software)

0

10

20

30

40

50

60

Poverty headcount ratio at US1.90 a day (2011 PPP)(% of population)

1990

2000

2010

2016

Vietnam International Trade relations

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• UN Member since 1950:- UN Security Council- Executive Council of ECOSOC - UN Economic and Social Council- Executive Council of UNDP - UN Development Programme- Executive Council of UNFPA - UN Population Fund- Executive Council of UPU - Universal Postal Union

• Member of the Organisation Internationale de la Francophonie since1970

• WIPO Member since 1976

• ASEAN Member since 1995

• APEC Member since 1998

• WTO Member since 2007

• Others…



M U L T I L A T E R A L D I P L O M A C Y

UN Members FlagsSource: www.usflags.com

EU – Vietnam Trade relations

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Source: Directorate – General for Trade of the European Commission

TRADE IN GOODS 2016

Total Trade in goods: €42.2 bn

• Vietnam imports to EU: €33.1 bn• EU exports to Vietnam: €9.3 bn• EU 7th biggest FDI partner of

Vietnam (US$478.4 mill in 162projects in Vietnam)

• EU 3rd Top Trading Partner ofVietnam

L O N G S T A N D I N G A N D S T R O N G P A R T N E R S H I P

Formal diplomatic relations between EU and Vietnam from 1990

What a GI is? Reminder…

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Product withspecial quality, characteristicsand reputation

Geographicalorigin with

specialresources:

natural factors + traditional

practices of production

GINAME OF

A SPECIFIC

PLACE

GI definition in Vietnam: “Geographical indication is a sign used to indicate a product originatingfrom a specific area, locality, region or country”



What are the purposes of a GI?

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Legal tool: IP rightDifferentiation & development tool

Economic & marketing tool

Political tool

GI AS A MULTIPLE TOOL FOR STAKEHOLDERS

Poll I:

Is your product protected as a Geographical Indication (GI)?

1) Yes, it is protected as a GI in Europe

2) Yes, it is protected as a GI in Europe and in other countries

3) No, it is protected as a trademark instead

4) No, no IPR rights are protected for my product

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GIs worldwide scenario

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I N C R E A S I N G I N T E R E S T

Worldwide: Approx. 42,527 protectedGIs (Data from 54 IP national &regional offices) Sources: WIPO Indicators 2017 & EU Databases by

March 2018 (DOOR, E-Bacchus and E-Spirits)

Source: Wikimedia Commons



Source: WIPO Statistics Database September 2017

EU 28: 4,914 protected GIs (wines,spirits, agricultural products &foodstuffs)Source: WIPO Indicators 2017

GI Scenario in Vietnam

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• Protection of GIs since 1996• Strongly committed to the

development of their GI system• Legal framework:

- Intellectual Property Law 2005- Amending laws- Further implementing regulationsConsult WIPO website for further legal info:http://www.wipo.int/wipolex/en/profile.jsp?code=VN

• By March 2018: 66 productsbearing GIs registered by theNational Office of IntellectualProperty of Viet Nam (NOIP)



Source: National Office of Intellectual Property of Vietnam (NOIP)

http://www.wipo.int/wipolex/en/profile.jsp?code=VN

What can be protected as GIs inVietnam?

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Tea

Natural products, agricultural, food, drinks, but also handicraft & industrial products orany other sign indicating the origin of a good

Rice

Fruits

Coffee Spices

Handicrafts



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What can be protected as GIs?:Difference between EU and Vietnam



• Type of GI products: Natural products,agricultural, food, drinks, but also handicraft &industrial products

• Vietnamese law: “Foreign individuals andorganizations that are holders of rights togeographical indications under laws of countriesof origin are entitled to register suchgeographical indications in Vietnam”.

• Handicraft & industrial products can beprotected as GIs in Vietnam!

• Type of GI products: wines, spirits,agricultural products (for human and non-human consumption, such as leather or someothers) as well as foodstuffs

• NO legal framework for protectinghandicraft & industrial products as GIs –under discussion

• Vietnamese handicraft & industrialproducts cannot be protected as GIs inthe EU

V I E T N A M E S E G I S Y S T E M E U G I S Y S T E M

• Protection of handicraft & industrial products as GIs in some EU MS• Could these products be registered as GIs in Vietnam? UNCLEAR

N A T I O N A L G I S Y S T E M S O F S O M E E U M E M B E R S T A T E S

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What subject matters cannot beprotected as GIs in Vietnam?



• Generic names of goods in Vietnam

• GIs of a foreign country no longer protected or no longer used

• GIs identical with or similar to a TM if their use can cause confusion as to theorigin of products

• GIs misleading consumers as to the true geographical origin of products

E X C L U D E D F R O M P R O T E C T I O N :

Poll II:

Do you think your product can be protected as a GI in Vietnam?

1) Yes, it is one of the allowed types (food, drinks or handicrafts)

2) I am not sure if it is included in the allowed types (food, drinks or handicrafts)

3) No, because it is one of the allowed types (food, drinks or handicrafts) but it is not protected as a GI in its country of origin yet

4) It will depend if it is possible and accessible for foreign GIs

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Can foreign GIs be protected inVietnam?

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Protecting your GI in Vietnam may be an important strategy!

PISCO

Registered in 2002 Registered in 2010

EU GIs



YES! Foreign GIs are also protected in Vietnam

ISAN SILK

Non EU-GIs

By March 2018: 66 protected GIs in Vietnam (60 Vietnamese GIs and 6 foreign GIs)

Can foreign GIs be protected inVietnam? NEW SCENARIO

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• At present - Finalization of legaltexts & definition of a roadmap forimplementation

• GI framework: Article 6 of Chapter12 on IPR

• List of 169 European GIs to berecognized & protected in Vietnam

• List of 39 Vietnamese GIs to berecognized & protected in the EU

• Lists can be amended in thefuture!



F R E E T R A D E A G R E E M E N T B E T W E E N T H E E U R O P E A N U N I O N A N D V I E T N A M

Case study – SCOTCH WHISKY

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• Spirits drink made only in Scotland• Protected GI in the EU since 1989• Scotch Whisky Association (SWA) - Key priority: Safeguard the SW category, prevent unfair

competition & secure a quality definition of 'whisky' in their main export markets• Vietnam an increasingly important market for Scotch Whisky• ‘Scotch Whisky’ - 1st foreign GI to be registered under Vietnam’s IP Law of 2005 in November 2010• SW included in the list of 169 EU GIs to be protected in Vietnam under the EVFTA• GI “Scotch Whisky” also registered in many other countries



A B O U T G I “ S C O T C H W H I S K Y ”

• SW accounts for over 1/5 of all UK food & drink exports• SW Scotland's leading single product export – 9 out of

every 10 bottles sold overseas• SW directly exported from the UK to 182 countries

worldwide• SW sales globally 2.5 times its nearest rival whisky• Almost 39 bottles of SW shipped overseas every sec.• SW exports earn £127 per sec.

K E Y E C O N O M I C F I G U R E S

Protecting EU GIs in Vietnam

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• No one can use the GI name for:- Products that are not from the country of origin for

that GI; or- Products that come from the country of origin but

are not produced respecting the provisions of theorigin country.

Not even if the true origin of the product is indicated,or translated or accompanied by "kind", "type","style", "imitation" or the like

• Designation/presentation that may mislead the publicabout the true origin/nature of the good

• Use for an act of unfair competition



E V F T A : W H A T P R O T E C T I O N W I L L B E G R A N T E D ?

Elaborated by Ester Olivas Cáceres using data from sourceSource: {ANNEX GI – I} Part A, EVFTA Chapter 12 on IP

Possible to amend the lists by the Working Group on IPR of the EVFTA: Case-by-case basis

W h a t i f m y G I i s n o t o n t h e l i s t ?

EV FTA – To be implemented hopefully from Autumn 2018


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• Linked to the owner of the mark• Right of protection by the registered proprietor

of the mark• Transferable right• No need to prove the relation between the

quality of the product and its geographicalorigin

• Renewable protection



D I R E C T A P P L I C A T I O N

R E G I S T R A T I O N O P T I O N S :

• As a Geographical Indication• As a Collective Mark• As a Certification Mark

S O M E K E Y D I F F E R E N C E S …

G I s C E R T I F I C A T I O N / C O L L E C T I V E M A R K

• Linked to the product’s characteristics due to itsgeographical origin

• Right of protection by all traders from thegeographical location

• Non-transferable right• Need to prove the link between the quality of

the product and its geographical origin• Indefinite protection

SMEs can look for advice to choose the best tool to protect their product


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D I R E C T A P P L I C A T I O NW H O ?

• Organizations/individuals of Vietnam• Foreign individuals permanently residing in Vietnam• Foreign organizations/individuals having a production or trading

establishment in Vietnam

• Phú Quốc Fish Sauce Producing Association (PhúQuốc Fish Sauce GI)

• People’s Committee of Dak Lak Province (BuônMa Thuột coffee GI)

• Foreign individuals not permanently residing in Vietnam• Foreign organizations / individuals not having a production or

trading establishment in Vietnam

H O W ?

Directly or through a lawful representative in Viet Nam

Always through a lawful representative in Viet Nam

• The Bureau National Interprofessionel duCognac (Cognac GI)

• Scotch Whisky Association (Scotch Whisky GI)Both through lawful representatives in Vietnam

E X A M P L E S O F G I A P P L I C A N T S

V i e t n a m e s e F o r e i g n

List of IP Agents by NOIP:http://noip.gov.vn/web/noip/home/en?proxyUrl=/noip/cms_en.nsf/vwDisplayContentNews/6C92DD6B11F4107247257

6A10029BFED?OpenDocument

http://noip.gov.vn/web/noip/home/en?proxyUrl=/noip/cms_en.nsf/vwDisplayContentNews/6C92DD6B11F41072472576A10029BFED?OpenDocument


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• MUST be submitted by the applicants through a lawful representative in Vietnam• MUST already be registered in the EU! – PROOF• Advisable to apply as soon as possible! - “FIRST TO FILE” principle applies for GI

registration in Vietnam



R E Q U I R E M E N T S F O R E U G I A P P L I C A N T S :

H O W & W H E R E ?

• Directly or by mail to NOIP or its brand offices in Ho Chi Minh City or Da NangAddress:National Office of Intellectual Property of Viet Nam (NOIP) Ministry of Science and Technology384-386, Nguyen Trai Street Thanh Xuan District - Ha Noi

• GI application & communication documents in Vietnamese, except:- Power of attorney- Docs on right to registration- Docs on priority right- Other supporting docs

In another language but translated into Vietnamese at the request of NOIP


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1. Request – OFFICIAL FORM2. Power of Attorney3. Docs on right to registration4. Doc on priority right5. Receipt of fees & charges6. Docs, specimen & info on the GI, including:

a. Nameb. Productc. Map of the GI aread. Proof of protection in the EUe. “Description of peculiar characteristics” or quality or reputation of the GI product:

- Descriptions of the relevant product (raw materials, etc.)- Methods of determination of the GI area- Evidence that the product originates from such area- Description of production & processing methods- Relationship between the characteristics/quality/reputation of the product & the GI area- Information on the self-control mechanism



D O C U M E N T S O F T H E G I A P P L I C A T I O N :

Official GI Application Form

http://noip.gov.vn/web/noip/home/en?proxyUrl=/web/noip/home/en?proxyUrl=/noip/cms_en.nsf/(agntDisplayContent)?OpenAgent&UNID=CA3DC30AAB15BC

894725767F003BB571

http://noip.gov.vn/web/noip/home/en?proxyUrl=/web/noip/home/en?proxyUrl=/noip/cms_en.nsf/(agntDisplayContent)?OpenAgent&UNID=CA3DC30AAB15BC894725767F003BB571


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1. Reception of GI application – Minimum docs 1, 5, 6

2. Formality examination:• Purpose: Correcting & supplementing application• Duration: 1 month• Cost: 150.000 VND +/- 5,3€ (Filing fee)

OR

3. Publication:• Purpose: Publication of the GI application for oppositions & comments of third parties• Duration: Within 2 months from application acceptance• Cost: 120.000 VND +/- 4,3€ (Publication fee)



R E G I S T R A T I O N P R O C E D U R E

Notice of refusalRefund of fees if requested

Possible complaint to the DG of NOIP orlawsuit at court

Notice on intended refusal – 1 month to correct

Notice on acceptance


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4. Substantive Examination:• Purpose: Assess the eligibility of the GI under the requirements & corresponding

protection scope• Duration: Within 6 months from publication

• Cost:- 1.200.000 VND +/- 42,7€ (Substantive examination fee)- 180.000 VND +/- 6,4€ (Fee for searching information for substantive examination)

5. Opposition:• Purpose: Send written opinions to the NOIP on rights of registration, priority rights,

protection criteria & others• Duration: Depends on the opponents• Cost: By the opponent

6. Re-examination of the GI application (if applicable):• Purpose: Review on the matters being protested against, following the substantive

examination on everything related to contents & procedure• Duration: 2/3 of substantive examination (more on complicated cases)





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7. Notification:

OR

8. Issue the GI Registration Certificate• Duration: Within 10 days from payment of fee• Cost: 200.000 VND +/- 7,1€ (Fee for issuance of GI certificate)

9. Entry into the National Register of IP & Publication of the GI Certificate• Duration: Within 2 months from date of issuance• Cost:

- 120.000 VND +/- 4,27210€ (Fee for GI registration)- 120.000 VND +/- 4,3€ (Fee for publication in the Industrial Property Official Gazette)




Duration: 2 months or more Purpose: Give opinions, justify or correct errors

Notice of refusalPossible complaint to the DG of NOIP or lawsuit at court

Notification of refusal

Notification of intention to grant GI


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• Other additional costs:- For other services By NOIP- For services of IP Agent in Vietnam

O V E R A L L D U R A T I O N :

• GI registration procedure: Around 9 months (12 months due to current backlog)• Collective and certification marks registration procedure: Around 12 months (15 months

due to current overload)

O V E R A L L C O S T :

CONCEPT (FESS) AMOUNT (VND) AMOUNT (€)

GI application 150.000 VND +/- 5,33980€

GI application publication: 120.000 VND +/- 4,27210€

Searching information for substantive examination 180.000 VND +/- 6,40451€

Substantive examination 1.200.000 VND +/- 42,69675€

Issuance of GI certificate: 200.000 VND +/- 7,11613€

Publication of Decision on granting a Certificate for GI registration 120.000 VND +/- 4,27210€

Register of GI Certificate 120.000 VND +/- 4,27210€

Total: 2.090.000 VND +/- 74,35981€

IMPORTANT NOTICE: Average calculation based on change by March 2018

Circular No. 263/2016/TT-BTC on Fees and Charges for IPR


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A D V A N T A G E S O F P R O T E C T I O N

• Indefinite protection• Cannot become generic• Same level of protection that Vietnamese GIs enjoy!

M A R K E T S U R V E I L L A N C E

• Wide range of legal provisions for protecting IPR• What are the remedies available?:

- Civil- Administrative- Criminal

• Who can request action against infringements?:- IPR holders- Organizations or individuals that suffer from the damage caused- Organizations or individuals that detect infringements- When detected by competent bodies

Poll III

After learning about the registration procedure that European GIs must follow to gain protection in Vietnam, do you think it is an interesting option for European GIs?

1. Definitely yes, affordable and manageable by GI stakeholders

2. Yes, but it may be long and expensive for GI stakeholders

3. Yes, but being my product included on the list of GIs to be mutually protected under the EVFTA, I will wait until the agreement is implemented

4. I still have doubts about it

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Watch outs and tips

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• To be already registered in the EU - Certificate• To apply for GI registration to NOIP • To seek for advice from a local IP Agent to choose

the best tool to protect your product in Vietnam • To submit the GI application through a lawful

representative of GI stakeholders in Vietnam• To prepare carefully the application• To undergo the registration procedure - Between 9

to 12 months• To pay the related fees (around 75€)• To address to the SEA IPR SME Helpdesk for

clarifications if needed

I F P L A N N I N G T O P R O T E C TY O U R G I I N V I E T N A MD O N ’ T F O R G E T :

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Conclusions

CONCLUSIONS



• GI registration procedure - Not particularly complex for EU GI stakeholders• Protecting your GI in Vietnam - Always an important step to prevent abuses:

- For those present in the Vietnamese market- For those interesting in accessing the Vietnamese market

• Professional support from a local IP agent is highly advisable.• Recognition & protection for those included in the list of 169 EU GIs under the

EVFTA – once it is implemented

V I E T N A M

• Enormous potential for trade• One of the most attractive destinations

in South East Asia for foreign investors

G I R E G I S T R A T I O N

Name: Ms. Ester Olivas Cáceres

Firm: Lawyer Senior Consultant on EU Policies, International

Trade and Intellectual Property – GI Expert

Location: Spain

Email: [email protected]

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To learn about any aspect of intellectual property rights in Vietnam or elsewhere in South East Asia, including Local partners Due diligence IP audits Or to simply learn about the local landscape and adapt your IP plan accordingly –

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Documents

Waiting for the Organiser… - IPR-Helpdesk...•Handicraft & industrial products can be protected as GIs in Vietnam! •Type of GI products: wines, spirits, agricultural products