Out of the five applications for “ST25” submitted to the United States Patent and Trademark Office (USPTO) so far, the one made by I&T Enterprise Inc. has crossed the first stage.
The U.S firms had begun registering the trademarks “ST25” and “World’s Best Rice” since last June, seeking to profit from the brand’s prestige.
ST25 rice is the result of 25 years of work by farmer-scientist Ho Quang Cua and his colleagues who cross-bred the premium fragrant rice of the Mekong Delta province of Soc Trang, described as having a sweet taste and a hint of pineapple flavor.
In 2019, ST25 rice was named the winner of the World’s Best Rice Contest in the Philippines, marking the first time a Vietnamese rice variety had won the title in the contest’s 11-year history.
The latest development means that only one of the applications met the USPTO’s minimum filing requirements and was accepted. The other applications have been asked to provide additional information or been rejected.
Nguyen Van Bay, Deputy Director General of the Intellectual Property Office under the Ministry of Science and Technology, told VnExpress Saturday that the USPTO’s publication of I&T Enterprise’s trademark on May 4 was in accordance with procedures for trademark registration.
“This activity is to help related parties have a chance to file complaints or opposition to the trademark being registered. That is the purpose of the publication,” Bay said, adding that complaints could be filed within 30 days from the date of the publication.
However, Le Quang Vinh, a lawyer with BROSS & Partners, said this issue was more serious and urged Vietnamese firms to file complaints early. Otherwise, “there will be no next step” and I&T Enterprise would officially own the trademark ST25 in the U.S., he warned.
According to experts, Vietnamese firms must first file a complaint with the USPTO, asking it to reject I&T Enterprise’s application. The basis for this complaint, Vinh said, would be that under the U.S. Trademark Law, in order to be registered, a trademark must have the function of distinguishing one’s goods or services from the goods or services of others, and must not be confusingly similar to other trademarks registered earlier. He did not elaborate on how these conditions specifically apply to this case.
Another possible argument suggested by Nguyen Tien Lap, a senior lawyer with NHQuang & Associates, is that the laws of all member nations of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), including the U.S., have regulations regarding “bad faith” in filing trademark applications. This includes the acts of registering a trademark to profit from well-known brands, registering early to profit from reselling the trademark, registering for inappropriate purposes or registering without any intention to use the trademark.
While noting that anyone has the right to file a request to nullify a registered trademark with agencies like the USPTO or a court, Vinh cautioned that procedures to oppose or nullify a trademark registration in the U.S. were different from the rest of the world and very complicated.
Given that it will be civil lawsuit, it has to be borne in mind that litigation costs in the U.S. are so high that even large, financially well off companies rarely pursue the cases to the final proceedings reached through resolutions by the USPTO’s Trademark Trial and Appeal Board (TTAB).
According to Vinh, the TTAB’s statistics show that 95 percent of trademark opposition cases end in the early or middle stages of legal proceedings to significantly reduce the actual litigation costs.
“The parties often find solutions to end the cases early through trademark transfer agreements, coexistence agreements, the withdrawal or cancellation of trademark applications,” he said.
Another option for the Vietnamese ST25 rice is to export the product under a different brand, or change the trademark to avoid violating U.S. Trademark Law, but these are both undesirable, Vinh said.
Vietnamese firms can consider using a different trademark that still includes the term “ST25” since it is a generic variety of rice and not a brand, Bay proposed.
“Obviously, the U.S. system does not completely correspond with Vietnam’s,” he said, adding that phrases desired by the Vietnamese side, like “world’s best rice,” are unlikely to be accepted by the U.S. side.
Currently no U.S. firm has successfully registered a trademark for ST25, so Vietnam’s export of that rice variety is yet to be affected, according to a senior official with the Ministry of Industry and Trade’s Agency of Foreign Trade who did not want to be named.
Furthermore, the U.S. is not a major rice export market for Vietnam like China or Indonesia, with low export value and proportion at present, he added.
However, if the “ST25” brand is lost, the export of this brand to the U.S. will be suspended. Therefore, the official recommended that companies should proactively register domestically well-known brands in foreign markets to avoid “closing the stable door after the horse has bolted.”