IMPORTANCE OF THE ESTABLISHMENT OF INDUSTRIAL DESIGN RIGHTS

Under Vietnam IP Law, rights over an industrial design are established on the basis of registration. Vietnam adopts the first-to-file principle for the registration system. The law determines priority based on the date of the first application and gives the rights to the party who is the first to file an industrial design application. Multiple designs with a single inventive concept may be filed in a single application as multiple embodiments.

Vietnam Intellectual Property Office (VNIPO) performs a two-stage examination procedure for an industrial design application including formality examination, publication, substantive examination before deciding to grant patent for industrial design.

OUR SERVICES

D&N International is capable of assisting clients in establishing, maintaining, and enforcing their industrial property rights over industrial designs. We provide clients with comprehensive guidance as well as strategic counseling in order to achieve the most effective protection for their industrial designs. Our practice for industrial designs covers the following legal services, but not limited to:

• Conducting industrial design searches;
• Providing legal opinion on the registrability of industrial designs;
• Filing and prosecution of industrial design applications;
• Recordation of change of name and/or address;
• Representation in dealing with industrial design infringement;
• Renewal of patent for industrial design;
• Recordation of assignment/license agreements relating to industrial design;
• Representation in opposition, cancellation and invalidation proceedings.

GENERAL INFORMATION ON INDUSTRIAL DESIGN PROTECTION IN VIETNAM

Subject Matters are not Protected as Industrial Designs

An industrial design is the outward appearance of a product or part of it, resulting from the lines, contours, colours, shape, texture, materials and/or its ornamentation. An undustrial design in Vietnam is protected in a whole form, not individually protected the parts, shaping characteristics, trademarks, geographical indications, commercial indications and other features existing on the industrial design.

The following subject matters shall not be protected as industrial designs:

• Appearance of a product, which is dictated by the technical features of the product;
• Appearance of a civil or an industrial construction work;
• Shape of a product, which is invisible during the use of the product.

Partial design

An eligible industrial design should be a product or part thereof which is capable of independently circulating. Partial design is not protected in Vietnam unless it is capable of independently circulating in itself and the design may be eligible by being represented as a normal design of part.

Under the Regulations for Design Examination, “independently circulating” means that the part of the product can be separated from the whole product without destroying the product and it is separately manufactured and can be changed by another one.

Multiple designs

Multiple designs are acceptable in a single application in the following cases:

– The application requests protection of industrial designs of more than one product in a set of products, of which each product has its own industrial design; or

– The application requests protection of an industrial design of a product accompanied with one or several variant embodiments of that industrial design. The first embodiment should be the principal embodiment.

Grace Period for Novelty

An industrial design shall not be considered having lost its novelty if it is published in the following cases, provided that the industrial design registration application is filed within 6 months from the date of publication:

a/ It is published by another person without permission of the person having the right to register it defined in Article 86 of this Law;

b/ It is published in the form of a scientific presentation by the person having the right to register it defined in Article 86 of this Law;

c/ It is displayed at a national exhibition of Vietnam or at an official or officially recognized international exhibition by the person having the right to register it defined in Article 86 of this Law.

Hague System

The Government of Vietnam deposited its instrument of accession to the Geneva Act (1999) of the Hague Agreement on September 30, 2019. This makes Vietnam the 61^st member of the Geneva Act and 71^st member of the Hague Union. The Geneva Act (1999) entered into force in Vietnam on December 30, 2019. From December 30, 2019 businesses and designers in Vietnam can use the Hague System to seek protection for their industrial designs in Contracting Parties to the Geneva Act of the Hague Agreement with more than 80 countries. Foreign companies and designers can also protect their industrial designs in Vietnam through the Hague System as of December 30, 2019.

Right of Prior Users of Industrial Design

With regard to the right of prior user, where a person has, before the filing date or priority date of an industrial design application, used or prepared necessary conditions for use of an industrial design identical with the industrial design in such application but created independently (hereinafter referred to as the prior use right holder), then after patent for industrial design is granted, such person shall be entitled to continue using such industrial design within the scope and volume of use or use preparations without having to obtain permission of or paying compensations to the owner of the design. The exercise of the right of prior users of industrial designs shall not be regarded as an infringement of the right of design owners. The prior use right cannot be expanded or assigned, excepting being assigned together with the transfer of business or production establishments.

Validity term and Renewal

Term of a patent for an industrial design is five (5) years from the accepted filing date and can be extended twice for five (5) years each subject to payment of renewal fee.

Request for renewal may be filed with VNIPO within six (06) months prior to its expiry date. A late request for renewal is available within a grace period of six months counted from the due date of renewal, subject to an extra  fee  amounting  to  10%  of  said  renewal  for  each  month  overdue.

In order to obtain the design right in Viet Nam, Applicant can consider:

(1) filing a direct design application for granting a Patent for industrial design with VNIPO or its brand offices in Ho Chi Minh City or Da Nang (National route). The application may be filed with or without claiming priority under Paris Convention; or

(2) filing an international design application under Hague System designating Vietnam for obtaining a International Design Registration (International route).

1. NATIONAL ROUTE:

Flow Chart of Patent Prosecution Procedure

Time frame from filing to grant of an industrial design application

It normally takes one year from the date of filing to obtain a patent for industrial design. Industrial design applications filed under national route are subject to an examination procedure conducted by the Industrial Design Examination Center of the VNIPO. The procedure includes the following basic steps:

• Formality examination

Once the application is filed, it is first examined by the VNIPO as to formality to ensure that it is complete and the information provided is accurate. The result thereof is expected available within 01 month from the filing date. If the application is rejected due to its incompliance with the formal requirements, the applicant will have 02 months for amendments or corrections. 

Upon completion of the formality examination, if all formal requirements are met, or the amendments or corrections mentioned above are accepted by the VNIPO, a Notification of Acceptance of Application shall be issued to confirm the accepted filing date, the filing number and other details of the application.

• Publication of Application

Within 2 months from the date on which the Decision of Acceptance of Application is issued, the application shall be published in the Industrial Property Gazette for opposition purpose. During the period from the publication date to the date on which a decision to grant a patent for industrial design is issued by the VNIPO, any third party may file an opposition against the pending application.

• Substantive examination

Upon publication in the Industrial Property Gazette, the application shall undergo substantive examination to evaluate whether the industrial design meets substantive requirements such as novelty, creativeness and industrial applicability. The result thereof is expected available within 7 months from the publication date.

If the industrial design is considered unqualified for protection, or if it is qualified but the application  still contains defects, a Notification of Intention to Refuse to Grant Patent for Industrial Design is issued by the VNIPO and the Applicant then will have 03 months for responding to the Notification and amending or correcting the application.

Upon completion of the substantive examination, if all substantive requirements are met, or if the amendments or corrections mentioned above are accepted by the VNIPO, a Notification of Intention to Grant Patent for Industrial Design shall be issued.

• Grant of Patent for Industrial design

Within 03 months from the date of Notification of Intention to Grant Patent for Industrial Design, the applicant shall have to pay the registration and publication fees. The patent for industrial design shall then be granted within 15 days from date the applicant pays the grant fees and then published in the Industrial Property Gazette.

The term of validity of a patent for industrial design begins on the date of issuance and ends 5 years counted from the filing date. The validity of the patent for industrial design can be renewed two consecutive times, for a term of five (5) years each.

Filing requirements

• Full name, address and nationality of the Applicant(s) and Creators(s);
• Country, Application Number and Filing Date of the basic application(s), if a Paris Convention Priority is claimed;
• Four (4) sets of photographs or drawings of the Design which comprise perspective, front, back, left, right, top and bottom views (Dimension of representation should not be more than 210 x 297 mm and not less than 90 x 120 mm);
• A specification of the industrial design;
• A Power of Attorneywhich is simply signed by the Applicant, neither notarization nor legalization is required, the original is required within one (01) month from the filing date;
• A certified copy of priority application where priority is claimed, the document is required within three (03) months from the filing date;
• A  Deed of Assignment of the Priority Rights, where the Applicant is different from the Applicant having filed the Priority Application, the document is required within 3 months from the filing date;
• A copy of document certifying the ownership or the right of use of trademarks/geographical indcations/trade names, if the industrial design contains any of such distinctive signs (required upon the VNIPO’s request).

INTERNATIONA ROUTE (HAGUE SYSTEM)

International design application designating Vietnam are examined as to substance by the Industrial Design Examination Center of VNIPO within a prescribed 06 months from the date of publication of the international application in the International Design Bulletin.

At the end of the 6-month examination period, if VNIPO does not notify a refusal of protection, the VNIPO shall send a statement to the effect that protection is granted to the industrial design(s) and the international design registration becomes effective in the territory of Vietnam.

In case the VNIPO notifies to WIPO a provisional refusal of protection, the time limit for the applicant to file a response to such a provisional refusal is 03 months, and in order to do this, a foreign applicant is required by law to appoint a local registered IP agent to represent and pursue the case before the VNIPO.

1. Opposition proceedings

Under the current IP law of Vietnam, any opposition to a pending industrial design application can be filed by a third party before an official decision on refusal or grant of registration being issued.

Opposition is not considered as a separate proceeding, it is only considered as a reference for the examination of industrial design applications. In other words, opposition is not examined independently, i.e. it is examined concurrently with the substantive examination of the opposed industrial design application.

The grounds for opposition may include, but not limited to, the application does not meet protection criteria, the applicant does not has the right to register the industrial design, etc.

2. Invalidation Proceedings

Any third party shall have the right to file with the VNIPO a request of invalidation against a patent for industrial design. The request of invalidation of the patent for industrial design can be filed within the whole term of protection.

Grounds for invalidation include:

• The applicant has neither had nor been assigned the right to register an industrial design;
• The industrial design fails to satisfy the protection conditions at the time the industrial design patent is granted.

* Termination proceedings: In addition to invalidation proceedings, any third party shall also have the right to file with the VNIPO a request to terminate the validity of an industrial design patent in case that the owner has ceased to exist without any lawful heir.

For other contentious works, please see “IP enforcement and litigation”.