On July 13th, Thua Thien Hue Provincial People’s Committee issued the regulation on management and use of the mark “Hue Beef Noodle Soup” (Bun bo Hue) and applied for registration of mark protection title.
Many people assume that when Hue promulgated the regulation on management and use of the mark Bun Bo Hue, anyone who wants to sell bun bo Hue must go to Hue for permission. Others opine that only restaurants and food stalls operating under such brand name can serve the best Hue Beef Noodle Soup. In addition, there are many different opinions and understandings of this information. Thus, we need to understand provisions of the intellectual property law in order to properly apprehend this issue.
According to Article 4 of the Intellectual Property Law 2005 (amended and supplemented in 2009), a mark is used to distinguish goods and/or services of different organizations or individuals. There are three types of marks, i.e. collective mark, certification mark, and integrated mark, and each kind of mark has its own functions and characteristics. Each product or service bearing certification mark meets a common standard of origin, raw materials, methods of producing goods, methods of supplying services, quality, accuracy, safety, or other characteristics specified in the rules on the use of the certification mark. In order to be granted certification mark, the mark must first guarantee the protection conditions of an integrated mark, which includes visible and distinguishable signs.
However, if the indication of the geographical origin of the unprotected goods or services is an normal mark, the mark may still be registered as a certification mark under Clause 2 of Article 74 of Intellectual Property Law 2005 (amended and supplemented in 2009).
Currently in Vietnam, some certification marks have been granted certificates, including Ba Vi Dairy, Binh Thuan Dragon Fruit, Ba Vi Tea, Dalat Vegetables, etc. Being entitled to mark protection is a matter; however, it is important to understand the level of protection for each sign of the mark. Not all signs of the mark are equally protected.
Regarding the regulations on the distinctiveness of marks under Article 74 of the Law on Intellectual Property 2005 (amended and supplemented in 2009) and the certification marks granted in Vietnam, the signs of shapes and words that do not meet the requirement of distinctiveness shall not be entitled to separate protection but shall be entitled to overall protection. In the case of overall protection, if the sign is attached to the form of expression and integrates with other signs of the mark, it is protected. Meanwhile, if the sign is separated from the mark and expressed in other forms, the mark will not be protected.
This means that other subjects and individuals have the right to use the signs which are not protected independently and are expressed in other forms. For example, regarding certification marks such as “Ba Vi Tea”, “Binh Thuan DRAGON FRUIT”, the signs “tea”, “DRAGON FRUIT” or the images of tea buds and dragon fruits are entitled to overall protection, not separate protection.
Consequently, the owners of the above-mentioned marks may only exclusively use these signs with the form of expression, in the whole of the mark as registered. Back to the issue of “Bun bo Hue” mark of Thua Thien Hue Provincial People’s Committee, bun bo Hue is a popular dish which has long been widely used and is famous in many places in and outside the country thanks to its unique way of cooking and typical ingredients of Hue.
Thus, the mark “Bun bo Hue” is registered with the place of origin of the product, service, so it will not be protected as a normal mark but can be protected as a certification mark. And, if granted certificate, as analyzed above, the sign “Bun bo Hue” can only be entitled to overall protection, not separate protection.
It means that other individuals and organizations are entitled to use the phrase “Bun bo Hue” independently with their own forms of expression which must not be confused with the mark registered by the Thua Thien Hue Provincial People’s Committee. Only when individuals and organizations want to use the phrase “Bun bo Hue” as registered by the Thua Thien Hue Provincial People’s Committee must they apply for permission and comply with the provisions of the Regulation on the use of certification mark “Bun bo Hue”. Hopefully, the above analyses will partly solve the questions that have arisen recently and help business owners have a proper understanding of the protection of marks.
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