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Case study 63: Italian stakeholder – request for supporting Italian delegates at two events in Vietnam

  1. Background 

A stakeholder in Vietnam representing and supporting Italian businesses in Vietnam contacted the SEA IP SME Helpdesk (SEA HD) multiple times via email, seeking detailed IP information to support two delegations of Italian companies participating in two separate events (one focused on the wine industry, i.e. Borsa Vini Vietnam 2024, and the other on the shoes and leather industry, i.e. Shoes & Leather Trade Fair Vietnam 2024).

This was not the first time this Italian stakeholder had reached out to the SEA HD for support: the SEA HD provided him with custom IP kits for the packaging industry in October 2023. Later, when the SEA HD was asked to prepare IP material for Italian companies in June 2024, two IP kits (comprising IP information, IP tips, and useful links relevant to each sector of industry) were drafted and shared. Additionally, the SEA HD representatives had the opportunity to engage onsite with several Italian companies at the Shoes & Leather Trade Fair in Vietnam, held from 9 to 11 July 2024. 

  1. IP issues raised

As agreed, the SEA HD prepared two IP kits for Italian delegates from two different sectors of industry.

Support and advice provided by the SEA HD

  • The SEA HD advised that SMEs should protect their intangible assets in Vietnam by conducting a thorough identification of their IP assets and understanding the territoriality principle inherent to IP rights. Besides this, developing a robust IP protection strategy is crucial, alongside prioritising an early registration of IP assets. Furthermore, the SMEs were reminded that contacting IP experts is highly recommended in order to navigate smoothly through the various local laws and rules, which are different from those existing in the EU.
  • Additionally, the IP kits and the onsite discussion at the trade fair between the SEA HD and the SMEs highlighted that, while traditional trademarks (such as word marks and logos) are the standard application filed, it is possible to consider protecting non-traditional trademarks (including sound marks and 3D signs), which may be relevant for the wine and shoes and leather industries. However, the SMEs were advised that these non-traditional trademarks are usually subject to a stricter examination process. Furthermore, the SEA HD reminded the SMEs that a trademark must avoid being generic, descriptive, or evocative of the goods or services protected to obtain registration. A trademark should neither consist of common terms or names, nor mislead, confuse, or deceive consumers regarding the products' origin, attributes, use, quality, value, or other characteristics. The concept of the ‘badge of origin’ of a trademark was highlighted during the onsite conversations.
  • The SEA HD emphasised that for each relevant sector of industry, the ornamental aspect of a product is important and could be protected by an industrial design. For example, the special appearance of a wine bottle or the design of a shoe could be protected if specific requirements are met.
  • Both the staff of the stakeholder and Italian SMEs were also reminded of the novelty requirement, which is key for industrial design protection. As a result, the IPBA underscored that any company should avoid disclosing a new design to the public in any way and anywhere in the world before filing an industrial design application. However, an applicant may benefit from a six-month grace period from the first date of publication of a design to safely file an industrial design application in Vietnam (the novelty requirement being preserved during such period).
  • Regarding the wine industry, the SEA HD also mentioned Geographical Indications (GIs), which play a crucial role in safeguarding the interests of the wine industry (particularly for some Italian wines that are protected within the EU). The SEA HD shared a comprehensive list of GIs that have been recognised and protected by Vietnam under the EU-Vietnam Free Trade Agreement (EVFTA). On the one hand, the SMEs were reminded of how to effectively use a protected GI and sell related products in a new market (applying labels and including mandatory information) and on the other hand SMEs were warned about common pitfalls to avoid in Vietnam (many trademarks and brands are simply evocating a protected GI, creating confusion for the consumers). The SEA HD also noted that the above-mentioned GI protection shall be provided even in situations where the true origin of the wine is indicated, or if the GI is represented in a translated form, or along with terms such as “kind”, “type”, “style”, or “imitation”.
  • The SEA HD also provided a practical list of actions that any SME should avoid (i.e. using protected GIs for products that do not satisfy the criteria of peculiar characteristics and quality of products bearing GIs; using any sign identical with, or similar to, protected GIs for products not originating from geographical areas bearing such GIs; using protected GIs for products similar to products bearing GIs to take advantage of their reputation and popularity; and using protected GIs of wines or spirits for wines or spirits not originating from geographical areas bearing such GI).
  • In addition, the SEA HD gave some practical advice to the SMEs when a third party is trying to take advantage of a wine’s reputation that is not protected via a GI, i.e. by using a confusingly similar indication of origin / name for their products or registering a Vietnamese trademark identical or confusingly similar to the companies’ designation of origin. For such cases, the SEA HD recommended two avenues: filing a complaint to the National Competition Commission or filing a trademark opposition before the IP office of Vietnam.
  • Last but not least, the SEA HD mentioned local copyright registration, which is a non-mandatory but highly recommended option to easily protect an original work or creation with the Copyright office of Vietnam. At the trade fair, the IPBA also mentioned the importance of trade secrets (to protect know-how and specific processes of a company). He shared information on the specificities of protection (unlike copyright, there is no registration system for trade secrets), the duration of protection (protection is active as long as the piece of information remains secret), and the necessary steps to maintain secrecy no matter the circumstances and situation. The IPBA finally stressed that both IP rights (copyright and trade secrets) are easy to manage but require a company to structure and organise the way they store and protect valuable information. 

 

  1. Result: 
  • After receiving the IP kits ahead of Borsa Vini Vietnam 2024 (a cultural wine promotion event) and Shoes & Leather – Vietnam 2024 (a trade fair), the Italian SMEs acknowledged the importance of IP for their business and which IP rights they should consider for protection in Vietnam. Additionally, they would be able to establish an IP portfolio with a practical strategy in line with their MarCom plans. 
  • Besides this, the Italian stakeholder locally based in Vietnam is now equipped with comprehensive IP knowledge for several Italian key industries (wine, shoes and leather) and would be able to share such knowledge with future Italian SMEs and entrepreneurs planning to visit Vietnam as well as those requesting basic IP-related questions.
  • Furthermore, Italian companies also learned about the role of GIs in their business and how to effectively protect and enforce these rights in Vietnam. They should also now know how to react in specific cases of infringement (as mentioned earlier). As a result, SMEs are aware that they should proactively monitor and take action against infringement and unfair competition specifically for the Vietnamese market.

 

  1. Lessons Learnt: 
  • A stakeholder can serve as a crucial link and messenger in reaching out to a broader number of EU SMEs needing IP advice for a specific market.
  • A proactive and strategic approach to IP protection is essential for SMEs, especially as Vietnam’s regulatory framework differs from the EU environment. SMEs that are equipped with the necessary IP knowledge in due time are more resilient and will make IP-informed decisions when entering a new market. Protecting various IP rights (trademarks, industrial designs, and GIs) ensures enhanced protection for the F&B industry (wine) as well as the fashion industry (shoes and leather).
  • Early engagement in raising IP awareness and sharing IP knowledge helps mitigate risks and enhances the market positioning of SMEs in their internationalisation process.