Inspection of industrial design infringement

Industrial designs are one of the forms of registration for intellectual property rights to prevent competitors from copying and using your intellectual products. However, in case of infringement, not every individual/organization knows how it will be inspected and handled. Therefore, Viet An Law will present the current regime on inspection of industrial design infringement in Vietnam.

Legal basis

• Law on Intellectual Property 2005, as amended and supplemented in 2009, 2019, 2022
• Decree No. 65/2023/ND-CP provides detailed regulations on industrial property, protection of industrial property rights, and management of plant varieties.

Some concepts related to the inspection of industrial design infringement

What is an industrial design?

According to Clause 13, Article 4 of the Intellectual Property Law 2005 (amended 2022), industrial design is defined as the external shape of a product or part to be assembled into a complex product. The expression of industrial design can be described by many means such as shapes, lines, colors, or combinations thereof. This design must be visible during the use and exploitation of the product or complex product. This emphasizes the importance of the practicality and observability of the design in the context of the product’s actual use.

What is industrial design infringement inspection?

Industrial design infringement inspection is a process of analyzing and assessing the use, copying, or imitation of a registered industrial design by another party without permission.

Characteristics of industrial design in Vietnam

Industrial design includes the following features:

• Industrial design must be clearly expressed through visible features, although definitions of industrial design do not mention this. However, it can be affirmed that this is a natural sign because the appearance and color can only be recognized by sight. This is considered the most important factor when assessing the suitability of the object registered to request an industrial design patent: the external appearance of the product must be visible and recognizable to the normal eye.
• Industrial designs are expressed in shapes, lines, or other words, and can exist in three-dimensional space or a plane. Lines include borders, lines, folds, and decorative patterns shown in two or three dimensions on the outer surface of the product for decoration.
• Industrial designs are expressed through color, in which color elements are understood from two aspects: natural colors created by materials (materials used to make products) and artificial colors are the colors applied by the manufacturer to the surface of the product.
• An industrial design must be applied to a specific product, and a set of design features that are not directly related to the product will not be protected as an industrial design. Products with industrial designs are understood as all objects, tools, equipment, vehicles… in all fields that are produced industrially or manually, with clear structures and functions.
• Industrial designs must be capable of independent circulation. At that time, it must be a complete product (for example, a motorbike design) or a part or detail assembled to form a complete and detachable product (for example, motorbike light box design, motorbike cover design).

The Vietnamese agency has the function of inspecting industrial designs

In Vietnam today, there is only one public agency qualified to assess industrial designs according to the provisions of law: Vietnam Intellectual Property Research Institute (VIPRI) under the Ministry of Science and Technology.

The subject has the right to request an infringement inspection

According to the provisions of Article 116, Decree 65/2023/ND-CP, the following entities have the right to request an assessment of industrial design infringement:

• The subject has ownership rights to the registered industrial design;
• Organizations and individuals are required to handle industrial design infringements or receive complaints or denunciations related to industrial designs;
• Other organizations and individuals with rights and interests related to disputes, complaints, denunciations, and infringements of industrial designs;
• Organizations and individuals have the right to personally or authorize other organizations and individuals to request industrial property appraisal organizations or industrial property appraisers to perform appraisals.

Dossier of inspection of industrial design infringement in Vietnam

To submit an infringement assessment dossier, individuals/organizations need to prepare the following documents:

In addition to the required documents mentioned above, individuals/organizations can submit additional documents to make the assessment easier. For example, documents describing the arguments of the parties involved, the decision to resolve a similar case by the competent authority, evaluation during inspection, testing, and measurement results.

Process of inspection of industrial design infringement in Vietnam

Step 1: The person with the right to request industrial design inspection selects the form and inspection organization.

Step 2: The person with the right to request inspection prepares and submits documents to the inspection organization.

Step 3: The industrial design inspection organization receives the dossier

• Checking and classifying industrial designs/Documents;
• Mark as is;
• Basic fee charged for applications submitted in person;
• Notification of receipt/ Issuance of receipt;
• Prepare inspection documents;
• Go to the receipt book;
• Hand over inspection documents to the inspection department.

Step 4: Accept inspection documents

When the agency hands over the appraisal dossier to the specialized department, the following activities will be carried out here:

• Check the format of the inspection dossier;
• Check the field, object, purpose, and content of the inspection;
• Evaluate the validity and appropriateness of the inspection request;
• Conclusion accepting or refusing the inspection;
• Notice of conclusion: Conclusion of inspection contract.

It must contain the following content:

• Name and address of the organization or individual requesting the inspection;
• Name and address of the inspection organization or assessor;
• Content of request for inspection;
• Relevant evidence, documents, and artifacts;
• Time limit for returning inspection conclusions;
• Rights and obligations of the parties;
• Location and time of conducting the inspection;
• Cost of appraisal and payment method;
• Acceptance and liquidation of contracts;
• Liability to compensate for damage; dispute resolution.

Step 5: Carry out the inspection content

During this appraisal phase, individuals/organizations will perform information research and measurement activities; Tests; and consultation;

• Check the basis for arising/establishing industrial designs related to the content of inspection;
• Research original information about related industrial designs;
• Check the effectiveness and determine the scope of protection;
• Position the object under consideration;
• Set up a formula to determine the object under consideration;
• Compare and evaluate the objects under consideration according to the inspection content;
• Summary of results.

Step 6: Process the inspection results and finish.

• Build inspection products;
• Finalization of inspection fees;
• Handing over products, liquidating contracts;
• Process inspection records, specimens, and set up archived data.

Customers with needs related to intellectual property law, and inspection of industrial design infringement, please contact Viet An Law for the best support!