Basis for opposition to industrial design registration in Vietnam

Industrial design is the external appearance of a product or component to be assembled into a complex product, expressed in shape, lines, colors, or a combination of these elements, and visible during the exploitation of the product or complex product. The grounds for opposing an application for industrial design registration in Vietnam are stipulated in the Law on Intellectual Property. Accordingly, any third party has the right to oppose granting a protection certificate within a certain time from the date the application for industrial design registration is published. The following article will provide clients with the Basis for opposition to industrial design registration in Vietnam for clients reference.

Basis for opposition to industrial design registration in Vietnam

Objecting to an industrial design application is an important legal procedure to protect intellectual property rights and prevent the registration of industrial designs that infringe the rights of others. Below are some grounds for objecting to an industrial design application, specifically:

• Previously registered industrial design: If the design registered by another party has already been registered by clients or a third party, clients are fully entitled to file an opposition.
• Lack of novelty: An industrial design must be novel, meaning it has not been disclosed or widely used before the filing. If the registered design bears substantial similarity to existing designs, clients may file an opposition.
• Lack of individual character: An industrial design must possess distinctive features and individual character to differentiate it from other products. If the registered design is overly simple or generic, clients may file an opposition.
• Non-compliance with protection requirements: An industrial design must satisfy formal, functional, and technical requirements. If the registered design fails to meet these criteria, clients may file an opposition.
• Infringement of other intellectual property rights: An industrial design may infringe upon other intellectual property rights such as copyright, trademark, or trade secrets. Upon identifying such infringement, clients have the right to file an opposition.

Procedures for opposition to industrial design registration

According to Article 11 of Circular 23/2023/TT-BKHCN, the procedure for handling objections to industrial design registration applications is carried out at the National Office of Intellectual Property in the following order:

Step 1: Prepare and submit a dossier to oppose industrial design registration

• Organizations and individuals submit 01 set of dossiers to oppose an industrial design application to the National Office of Intellectual Property, either online or in person, or via postal service. The dossier includes:
• Document expressing the opposition;
• Documents or citations of information sources to prove the opposition;
• Power of attorney (if applying for a representative);
• Copy of the state fees receipt (in case of state fees via postal service or directly to the account of the National Office of Intellectual Property).

Step 2: Examination of the opposition

• The National Office of Intellectual Property will examine the validity of the application form requirements and the time limit for the opposition. In case the opposition is submitted beyond the prescribed opposition time limit, the National Office of Intellectual Property will refuse to accept the application immediately upon receipt of the application.
• After meeting the requirements, The National Office of Intellectual will receive and notify the applicant of the opinion, setting a time limit of 02 months from the date of issuance of the notice for the applicant to respond in writing, except in cases where the opposition’s opinion is related to the right to registration, The National Office of Intellectual will issue a notice for the opposition to file a lawsuit with a competent Court.

Step 3: Notification of feedback to the objector

• After receiving the applicant’s feedback within the prescribed time limit, if deemed necessary, the National Office of Intellectual Property will notify the objector of the feedback and set a deadline of 02 months from the date of notification for the objector to respond in writing to that feedback.

Step 4: Organizing a dialogue

• The National Office of Intellectual Property organizes a direct dialogue between the objector and the applicant to clarify the objected issue if deemed necessary or requested by both parties.

Step 5: Returning results

• Based on the information, evidence, and arguments provided by the parties (if any) and/or the results of the dialogue between the parties, The National Office of Intellectual processes the objection and notifies the objector of the result of the handling of the objection together with the results of the examination of the content of the application and sets a deadline of 02 months for the objector to respond.

Time limit for opposition to industrial design registration in Vietnam

• According to Article 111 of the Law on Intellectual Property 2005, as amended and supplemented in 2009, 2019, and 2022, from the date on which the industrial property registration application is published in the Industrial Property Gazette until before the issuance date of the decision to grant a protection title, any third party will have the right to submit opinions to the state management authority on industrial property regarding the granting or refusal to grant a protection title for such application. The opinion must be made in writing and accompanied by documents or citations of information sources for substantiation.
• Before the issuance of the decision on the grant of the protection title, within four months from the date on which the industrial design application is published, any third party will have the right to oppose the granting of the protection title.
• The right to oppose industrial property registration applications, especially for industrial design applications, is a new provision under the amended Law on Intellectual Property 2022. Accordingly, any third party will be entitled to exercise this right, provided that the industrial design application has been published in the Industrial Property Gazette, and the opposition is filed within four months from the publication date of the application.

Consequences of opposition to industrial design registration

Opposition to industrial design registration is an important legal action to protect intellectual property rights. However, initiating such action entails certain risks and potential consequences that should be carefully considered before proceeding.

Positive aspects:

• If the opposition is upheld, the design that clients allege infringes upon clients’ rights will not be granted protection. This enables clients to enforce clients intellectual property rights and prevents competitors from unlawfully exploiting the contested design.
• The opposition mechanism serves to ensure fairness in the process of registration and granting of industrial design protection. It contributes to the elimination of designs that fail to meet the statutory requirements for protection, thereby safeguarding the interests of genuine and innovative designers.

Negative aspects:

• Initiating opposition proceedings incurs certain expenses, including filing fees, legal service fees, and costs related to the collection of supporting evidence.
• The examination and resolution of an opposition may be protracted, potentially disrupting or delaying clients’ business operations.
• The act of opposition may strain or damage the client’s relationship with the applicant or competing entities.
• In the event the client’s opposition is rejected, the client may be subject to litigation initiated by the applicant of the industrial design.

Above is the consulting content of Viet An Law on basis for opposition to industrial design registration in Vietnam. If clients have any legal problems, please contact us for timely support.