Industrial design registration in Vietnam

According to the latest definition in the amended Law on Intellectual Property 2022, effective January 1, 2023, industrial design is the external appearance of a product or part to be assembled into a complex product, represented by shapes, lines, colors or combinations of these elements and visible in the process of exploiting the use of the product or complex products. Industrial design registration is the establishment of rights by the owner of the creation of an industrial design at the National Office of Intellectual Property to claim protection for his/her creative achievements. At the same time, it is a procedure to avoid losing the novelty of industrial designs before bringing products with new industrial designs to the market.

With the desire to support businesses and individuals wishing to carry out industrial design registration procedures as well as find out the overall conditions and methods of industrial design registration in Vietnam, Viet An Law provides detailed instructions on conditions and procedures as follows:

Reasons to register an industrial design through a law firm with the status of an Intellectual Property Representative

• Law firms that are Intellectual Property Representatives are specialized and experienced units to advise and best assess the possibility of successful industrial designs when registering. To obtain a practicing certificate of an Intellectual Property Representative is not simple, the practitioner must study and take the certification exam independently of the lawyer’s certificate.
• The Intellectual Property Representative units will assist in solving arising problems related to the objection and rejection of the client’s application during the process of filing an industrial design registration application in Vietnam.
• The Intellectual Property Representative Organization has the function of signing applications on behalf of the application owner and representing the application owner to work with the NOIP to ensure maximum benefits for clients.
• Clients should note the distinction between a law firm with the function of an Intellectual Property Representative and a law firm without a representative function in that: If it is a company with the function of representing industrial property, it will represent clients sign all industrial design registration dossiers submitted at the National Office of Intellectual Property, represent clients to exchange and respond to all procedures related to industrial design registration applications. Accordingly, the client through a law firm as a representative only needs to sign the authorization for the law firm, then the law firm will represent the client to carry out relevant procedures.
• Currently, there are several law firms, and consulting firms that do not have the function of Intellectual Property Representative but still receive services. There has been a situation that requires clients to sign applications and dossiers for industrial design registration and submit them on behalf of clients. As a result, if the client has a change of address, the NOIP will send a notice of related procedures according to the registration information, but the client does not receive or respond in time, leading to the application being rejected.
• Viet An Law Firm is an Intellectual Property Representative organization. Clients can be guaranteed all benefits when using our industrial design registration service.

Conditions for the protection of industrial designs in Vietnam

The industrial design must have novelty

• Must be new to the world: an industrial design is considered novel if it is significantly different from industrial designs that have been publicly disclosed in the form of use, description by documents, or any other form in the country or abroad before the filing date or before the priority date if the industrial design registration application enjoys the right of priority.
• The industrial design must be novel in its own right. Accordingly, before an industrial design is filed for registration, the applicant should not publish the design because it will lose its novelty.

An industrial design must have a creative nature

An industrial design is considered to be creative if it is based on industrial designs that have been publicly disclosed in the form of use, written description, or any other form in the country or abroad. other than before the filing date or before the priority date of the industrial design registration application in the case of a priority right, the industrial design cannot be easily created by the average person in the respective field.

An industrial design must have industrial applicability

That is, an industrial design capable of being used as a model for manufacturing, industrial, or mass production by industrial or handicraft methods.

Notes on conditions for industrial design registration

• Industrial designs can only establish rights based on decisions on granting protection titles of the National Office of Intellectual Property. Persons who want to enjoy exclusive rights to industrial designs must directly file an application for a protection title at the National Office of Intellectual Property of Vietnam or authorize an intellectual property representative organization that has been granted a practicing certificate such as Viet An Law to perform related works.
• In case there are many applications for registration of industrial designs that are identical or not significantly different from each other, a protection title may only be granted for the industrial design in a valid application with the earliest filing date or priority date of applications that meet the conditions to be granted a protection title.
• In case there are many applications for registration of industrial designs that are identical or not significantly different from each other, satisfy the same conditions for being granted a protection title, and have the same priority or earliest filing date, a protection certificate is only granted to the subject matter of a single application among those applications by agreement of all the applicants; if no agreement is reached, the respective objects of those applications will be refused to grant protection titles.

In practice and experience in consulting for clients wishing to register an industrial design, we have encountered many cases with the same common point of having used the industrial design and then seeking advice on registration procedures. It’s too late for such an industrial design. Because an industrial design can only be granted a protection title when it meets the novelty requirement (compared to the world and to itself), i.e. an enterprise that wants to be granted an exclusive protection title must register an industrial design before putting the design into use or has not yet sold products containing the design on the market.

Right to register an industrial design

• The right to register an industrial design is the right of all individuals and organizations having an industrial design that want to register it in Vietnam.
• Vietnamese individuals, organizations, foreign individuals, and organizations can register industrial designs in Vietnam.
• Foreign individuals and organizations applying for registration of industrial designs in Vietnam must be submitted through an intellectual property representative organization.

Why is it necessary to protect industrial designs?

Industrial design increases the attractiveness of a product or goods to consumers. Even a product that sells well is only because of its unique design. Therefore, product design protection is an important strategy of any enterprise’s product. The benefits that industrial design protection brings include:

• To have exclusive rights to use the product, avoid imitation and similarity of competitors to the product, and improve the business position of the unit in the market;
• Peace of mind to promote the product to recover capital for the unit, and recover the cost of creating products;
• Exclusive design helps to increase the commercial value of the product, positioning the product’s image in the minds of consumers;
• In the light of exclusive rights, the owner of the industrial design can carry out franchising and licensing to benefit the investment process in product design;
• The monopoly of designs helps increase healthy competition and encourages businesses to invest in creative activities to create many unique products, allowing businesses to develop, and diversify product designs and access to a wide range of consumer needs and tastes.

Types of industrial designs protected in Vietnam

• Industrial design is the external appearance of a product expressed through shapes, lines, or a combination of these elements.

Example of a protection title of bottle design number: 3-00006505-000 in 2001.

• Industrial design is a trademark, a set of product labels, including elements of shapes and lines shown or combined on the product’s label.

For example, a design is granted a protection title for exclusive protection of a trademark: Industrial design for a set of trademarks is granted a protection title for industrial design No: 3-0026147-000 in 2018.

Objects that are not protected by industrial designs in Vietnam

According to the provisions of the Law on Intellectual Property of Vietnam, several objects are not protected as industrial designs such as:

• The appearance is determined entirely by the function of the product;
• External appearance of civil or industrial constructions;
• The shape of the product is not visible during the use of the product.
• Objects contrary to social ethics and public order, harmful to national defense and security.

Industrial design registration procedures in Vietnam

Step 1: Prepare industrial designs and classify industrial designs

• When an enterprise has an industrial design that wants to register, it is important to note that it must not be used or publicly announced on any medium to ensure the novelty of the design when registering.
• Registered designs can be registered with 1 plan, or multiple options, and can register 1 photo or many photos of the design under different photography angles.
• The more registration options, the more registration photos and drawings, the higher the application fee.
• Classification of industrial designs. Industrial design registration applications need to be classified internationally on industrial designs, in case the Applicant does not classify or classify them incorrectly, the NOIP will conduct the classification and the applicant needs to submit a classification fee according to regulations (100,000 VND / 1 classification).

Step 2: Research industrial designs

To evaluate the possibility of successful registration of an industrial design in Vietnam as well as to save costs and time for the applicant, the applicant should conduct an industrial design search to assess the possibility of protection before applying for registration of an industrial design.

Advantages of research industrial designs:

• Accurately assess about 80% of the protectionability of an industrial design before proceeding with the filing of the application. This helps clients as well as Viet An Law Firm to estimate the possibility of successful registration of the industrial design before applying for registration.
• Assuming that the search results show that the probability of success is not high, Viet An Law Firm will provide you with consulting services to improve the likelihood of successful registration. In case the search results show a high probability of success, it is very safe to apply at that time and actively submit the application.

Step 3: Apply for registration of an industrial design

An application for registration of an industrial design includes documents defining an industrial design including a set of photographs, industrial design drawings, and an industrial design description (as shown in the set of photographs and drawings). The dossier for application include the documents as follows:

• The declaration of registration of industrial design is made according to the form issued by the National Office of Intellectual Property (printed in 03 sets). Please contact Viet An Law directly to be provided with the prescribed declaration form.
• Power of attorney (according to the form of Viet An Law Firm);
• The set of photographs and drawings of industrial designs must fully show the styling characteristics of industrial designs requiring protection to such an extent that based on which persons with average knowledge of the respective fields can determine the industrial design.
• The description of the industrial design shown in the set of photographs and drawings must list the order of photographs, drawings in the set of photographs, drawings, and design features of the industrial design (printed in 03 sets);
• In the case that the design contains element of a trademark, the applicant needs to submit documents confirming the ownership of the trademark, including documents confirming the legitimate right if the applicant has assigned by another (Certificate of inheritance; Certificate or Agreement to transfer the right to file a trademark application; Job assignment contract or labor contract) (01 copy);
• In case an application for registration of an industrial design claims for priority rights, it is necessary to provide a copy of the first application or certificate document displayed at the exhibition, if there is a request for priority rights under international treaties (01 copy). The right of priority only applies to applications for registration of industrial designs of foreign organizations and individuals in Vietnam;
• Proof of payment of industrial design registration fee.

At the time of filing the industrial design registration application, if the application owner does not have enough original documents to get the early priority date, the applicant may submit the original papers within the following time limit:

• The original power of attorney can be submitted within 1 month from the date of application. However, when applying, you still need to submit a photocopy of the power of attorney;
• Some documents can be submitted within 03 months from the filing date, such as the Vietnamese version of the industrial design description, if there is an English/French/Russian version of that document in the application; Proof of payment of the application fee, and application publication fee.

Step 4: Formality examination of the industrial design registration application

• Formality examination time limit: 01 month from the date of application submission.
• The NOIP will consider the application for eligibility in terms of form, photograph, application owner, filing rights, classification, etc.
• If the enterprise’s application meets the conditions, the NOIP will notify the acceptance of the valid application and publish the application.
• If an enterprise’s industrial design registration application does not meet the conditions, the National Office of Intellectual Property will issue a Notice not to accept the application and request the enterprise to amend. Enterprises make amendments as required and submit amendments to the National Office of Intellectual Property.

Step 5: Publication of industrial design registration application

• Time limit for publication of industrial design registration applications: 02 months from the date of notification of acceptance of valid applications.
• Contents of publication of industrial design registration applications are information related to valid applications recorded in notices of acceptance of valid applications, photos and classification of industrial designs.

Step 6: Substantive examination of the contents of the industrial design registration application

• Time limit for substantive examination: 09 -12 months from the date of application publication.
• The National Office of Intellectual Property considers the conditions for industrial design registration, thereby assessing the possibility of granting a diploma for an industrial design to the applicant. If the industrial design registration application satisfies all conditions, the National Office of Intellectual Property shall issue a Notice of intention to grant a diploma for the registered industrial design.
• If the industrial design registration application does not satisfy the conditions, the National Office of Intellectual Property shall issue a Notice not to grant a diploma for the industrial design that the enterprise has registered. In this case, the applicant may consider and send a written response to appeal against the NOIP’s decision, and at the same time provide grounds for granting an industrial design protection title to the industrial design. enterprise of the enterprise.

Step 7: Granting industrial design protection title

• Time limit for grant of diplomas: 02-03 months from the date of payment of diploma fees.
• After the decision on granting a diploma is issued, the applicant or the applicant’s representative shall pay the diploma stamping fee and receive the certificate of industrial design registration.

Industrial design application fee in Vietnam

• Application fee: 150,000 VND;
• Industrial design classification fee: 100,000/01 classification;
• Application examination fee: 700,000 VND / 01 object;
• Application publication fee: 120,000 VND;
• Publication fee from the 2nd image onwards: 60,000 VND / 01 image;
• Fee for searching information to serve the examination process: 480,000 VND / 01 subject;
• Fee for assessment of priority right (if any): 600,000 VND / 01 priority application.
• Fee for grant of protection title: 660,000 VND/1 object with 06 photos.
• Intellectual property representative fee: according to the fee rate specified by each party.

Term of industrial design protection

In Vietnam, industrial designs are protected for 5 years from the filing date. And can be extended up to 2 times. Accordingly, up to a protected industrial design will be exclusive for 15 years (if consecutively renewed upon expiration). After that, the industrial design will cease to be exclusive and others can use it without the consent of the owner.

Classification of industrial designs

In the industrial design registration declaration, it is necessary to classify the industrial design according to the international classification table Locarno 13th edition to classify products serving the filing of industrial design registration applications. Accordingly, clients should ask intellectual property representative to assist in the filing and classification of industrial designs so that the industrial design application is formally accepted.

Some related questions

What is an industrial design?

Industrial design is the external appearance of a product expressed by shapes, lines, colors, or a combination of these elements and visible in the process of exploiting the use of the product or complex product. This is one of the new provisions of the amended Law on Intellectual Property 2022.

Products are understood as objects, tools, equipment, vehicles, or parts used to assemble or combine such products, manufactured by industrial or manual methods, with structure and function. clear, independent circulation.

Can a used industrial design be registered for protection?

If your industrial design is new compared to other designs in the world, but your unit has used or published the image of the design, it will lose its novelty compared to itself, so when registering it will refuse to grant a patent.

How many times can an industrial design be extended?

An industrial design is protected for 5 years, then it can be extended for up to 2 more times, after which the design belongs to the public and is no longer protected exclusively by the application owner.

How many years is an industrial design protected in total?

The total period of registration and consecutive renewal of each industrial design will be protected for a maximum of 15 years.

Is an industrial design protected internationally or nationally?

Industrial designs in particular, intellectual property rights in general are only protected within the national territory, so industrial designs registered and protected in any country are only valid in that country.

Services of industrial design registration in Vietnam of Viet An Law

• Research information on the use and registration of industrial design protection in Vietnam and abroad;
• Consulting, assessing the usability, registration of protection of industrial designs in Vietnam and abroad;
• Completing the application for a protection title (translating documents or writing a description of the industrial design, claiming protection, preparing drawings, making declarations, representing) for the client in applying for grant of protection titles, extension of industrial design protection titles in Vietnam and abroad;
• Research and evaluate the possibility of infringement of industrial design rights being protected;
• Exercising protected industrial design rights: investigating, monitoring, negotiating/ mediation, taking legal action to court or requesting other competent authorities to handle infringement in Vietnam and abroad;
• Negotiate, draft, appraise and register contracts for the transfer of the right to use or ownership of industrial designs in Vietnam and abroad.

New points of the Intellectual Property Law amended in 2022, effective January 1, 2023 related to industrial design registration

Revision of the definition of industrial design (Article 4)

Industrial design is the external appearance of a product or part to be assembled into a composite product, represented by shapes, lines, colors or combinations of these elements and visible in the process of exploiting the use of a product or complex product.

Requirements for industrial design registration applications (Article 103)

The IP Law 2022 is amended in the direction of specific simplification:

• Industrial design determination documents include photographs, industrial design drawings and industrial design descriptions shown in photographs and drawings.
• The set of photographs and drawings of industrial designs must fully show the styling characteristics of industrial designs requiring protection to such an extent that based on which persons with average knowledge of the respective fields can determine industrial designs.
• The description of the industrial design is shown in the set of photographs, the drawing must list the order of photographs, drawings in the set of photographs, drawings and styling features of the industrial design.

Late publication of an application for registration of industrial designs (Article 110)

Supplementing regulations to allow late publication of industrial design applications. Accordingly, at the request of the applicant at the time of application but not older than 07 months from the date of application.

Right to register industrial designs (Article 86a)

The part of the right to register corresponds to the proportion of the state budget assigned to the presiding organization automatically and without compensation. In the field of national defense and security, the right to register belongs to the State.

Clients wishing to consult, research industrial designs, industrial design registration in Vietnam and abroad, please contact Viet An Law Firm for the best support!