Vietnam’s battle to market its prized rice
The case of ST25 drives home how important it is for countries, particularly developing countries, to develop strong intellectual property protection schemes.
Rice has been the staple food in Southeast Asia for millennia because the warm, wet climate of the region is optimal for growing the crop in paddy fields. In Vietnam, rice is at the core of the nation’s culinary identity, being served alongside all sorts of sides, as well as being made into noodles, wraps, and dumplings.
Vietnamese farmers and consumers have been particularly proud of a strain of Vietnamese rice called ST25, which is sometimes locally known as Gao Ong Cua (Mr. Cua’s Rice). In 2019, ST25 was the first variety of Vietnamese rice to win the World’s Best Rice title. Since then, ST25 has become a cause célèbre in Vietnam, especially as an international battle to trademark it has heated up.
The Development of ST25 Rice
ST25 was developed over a 25-year period, beginning in 1991, by Ho Quang Cua, an agricultural engineer who “spent half of his life researching, breeding, and developing” ST25 rice and other related varieties. While other agricultural engineers focused on aquaculture and trees, Ho spent many years researching rice, at times almost going bankrupt.
According to Cua, the development of ST25 was motivated by several factors including taste, nutrition, and national pride: to give Vietnam a brand of internationally famous rice to mirror the popularity of Thai jasmine rice and Indian basmati rice, among others (many companies have unsuccessfully attempted to trademark basmati rice, but numerous jurisdictions have ruled that it is too generic to be granted those rights). Moreover, many Vietnamese consumers previously preferred imported Thai rice over Vietnamese rice.
ST25 began as an attempt to recreate a famous variety of Vietnamese rice from Soc Trang province, which is located near the Mekong Delta in southern Vietnam. This variety was widespread until the French colonial period, during which time it fell out of use. Cua cross-bred multiple types of rice before arriving at the ST25 strain. The ultimate product is “a long grain rice, clear, not silver. It has a sweet, aromatic, hint of pineapple flavor and absorbs less water than other rice varieties.” Additionally, it is resistant to diseases, salt-tolerant, and most importantly, it can be planted throughout the year, yielding two or three crops annually.
The Fight to Trademark ST25 Rice
According to the U.S. Patent and Trademark Office (USPTO), a trademark is “a word, phrase, design, or a combination that identifies…goods or services [and] distinguishes them from the goods or services of others,” while also indicating the source of the said goods and services. Trademark protection is important because it allows individuals, companies, and societies to profit off of their brands. Therefore, trademark protection is not only important for corporations, but for farmers, local producers, and in this case, potentially for the Vietnamese government as the representative of Vietnamese farmers.
In order for these actors to reap the benefits of ST25 in local and international markets, branding the rice is important. Due to the rice’s fame and popularity, “there are now rampant counterfeit goods, spurious goods, imitative products impersonating the genuine rice ST25” in the Vietnamese and United States markets. Proper branding would protect the quality and reputation of genuine ST25 rice.
However, complicating matters is the fact that multiple U.S. companies and one Australian company have all registered to trademark ST25 rice, which would deprive Vietnamese interests of the ability to sell their ST25 rice under that name in foreign markets. Additionally, the rice has not yet been trademarked in Vietnam itself, where it is only registered as a new crop variety by the Department of Crop Production at the Ministry of Agriculture and Rural Development, despite 10 local trademark applications, none of which come from Cua himself. The Vietnamese government’s position, at least domestically, has been that ST25 rice is the common name of the strain, akin to terms like “sticky rice,” or “jasmine rice,” and can therefore not be trademarked.
However, Cut has filed for trademark protection in the United States in order to protect his rights overseas, particularly in light of the fact that one of the ST25 trademark applications in the United States was approved and published by the USPTO on May 4, 2021. (The other trademark applications were not approved, despite them all similarly attempting to trademark the ST25 mark.)
If this is not challenged by August 4, 2021, a particular American company, I&T Enterprise, Inc. would gain the exclusive right to “use the word ST25 for rice products” in the United States. A challenge could be sustained on the basis of an alternative, stronger claim to trademark protection by Cua. In an interview with Vietnamese reporter Anh Ngoc, Christopher Bennett, an attorney, consultant, and founder of Technology-Innovation-Law (T-I-L) – an organization dedicated to spreading awareness of the benefits of intellectual property rights to underserved and marginalized groups – said that while “all sides have a chance because it’s a global market, Vietnam’s ST25 rice has… been recognized as the best rice in the world in 2019 [which] is an advantage. Vietnamese companies should follow this process closely.”
The cause of ST25 protection could potentially be strengthened if Cua sells his rights to the Vietnamese government, which would be in a stronger position – through its ability to marshal more resources and its connections to the international community – to fight for the rice’s trademark rights. The Vietnamese government would also be able to protect and liaison between domestic farmers and the international community, and also use its control over the trademark to make the ST25 rice brand available to millions of Vietnamese farmers, a more decentralized option than if the trademark rested exclusively with Cua. Bennett believes that regardless of whether Cua or the Vietnamese government obtains a trademark, the same outcome would be achieved: the brand value of ST25 would be protected (buyers would be assured that the ST25 that they buy is actually real ST25 grown in Vietnam), and economic benefit would accrue to Vietnamese farmers.
According to Vietnamese attorneys Vinh Le Quang, senior partner at Bross & Partners and Phuc “Peter” Le, a patent, design, trademark and copyright agent at T-I-L, the Vietnamese government could invoke the principle of comity – the principle that governments respect the decisions of other governments; in this case, it would entail that the U.S. respect the Vietnamese government’s classification of ST25 as generic (or alternatively the Vietnamese government’s potential grant of a domestic trademark to ST25 rice). Citing additional research, they believe that the USPTO “and the courts should translate foreign terms that are generic or merely descriptive in their home country, because allowing such marks would cause unexpected harms for competition.” Ultimately, they argue that each application should be considered on its merits and via an analysis that balances the needs of the various parties involved, along with the interests of USPTO and U.S. trade policy.
The failure of a challenge to the trademark application pending in the United States would lead to two negative consequences. The first would be the inability of Vietnamese individuals, particularly Cua and his distribution enterprise (Ho Quang Tri), to export ST25 labeled rice to the United States. Second, I&T Enterprise, Inc. could sell any other rice as ST25 rice, thus impersonating and devaluing the ST25 rice brand. While Cua and Vietnamese farmers have several options should a challenge fail – for example, choosing a different trademark (which could potentially incorporate the words “ST25” along with a further qualifying adjective like Cua’s name) – this situation drives home how important it is for countries, particularly developing countries in Africa, Asia, and Latin America to develop strong intellectual property protection schemes, lest poorer countries and individuals lose their rights to larger companies in the developed world.
If Cua is successful in protecting his intellectual property rights, it would be a victory for millions of Vietnamese farmers, who would get a chance to profit off of growing ST25 rice. A victory for the Vietnamese position would strengthen intellectual property protection for groups and countries that have traditionally had less clout in shaping international norms on intellectual property.
This battle often takes the form of developed countries pushing for more intellectual property protection for their corporations against the wishes of developing countries. For example, India and South Africa have been pushing the European Union – unsuccessfully – for a waiver of patent rights for COVID-19 vaccines. In protecting intellectual property rights, it is extremely important for the interests of local and underprivileged communities to be taken into account.
By Akhilesh Pillalamarri – The Diplomat – July 16, 2021