Industrial design registration procedures using the Hague application

The registration of international industrial designs using the Hague application is increasingly being used by many people, so the number of subjects wondering about international industrial design registration procedures using the Hague application is also increasing, which leads to the issuance of Decree 65/2023/ND-CP. To provide more information to clients on this issue, Viet An Law Firm will publish the article below.

Legal basis

• The Hague Agreement on the International Registration of Industrial Designs;
• Decree 65/2023/ND-CP detailing a number of articles and measures to enforce intellectual property laws on industrial property, protection of industrial property rights, rights to plant varieties, and housing management intellectual property country.

How to apply for Lahay?

Filing a Lahay application is also divided into filing a Lahay application with Vietnamese designation and filing a Lahay application with Vietnamese origin. In particular, the issue of filing a Lahay application with Vietnamese origin has also been detailed by law in Clauses 2 and 3, Article 22 of Decree 65/2023/ND-CP. Accordingly, the method of filing a Hague Application with Vietnamese origin is prescribed as follows:

• Hague applicants of Vietnamese origin can apply through the state management agency on industrial property rights or submit directly to the International Office.
• For Hague applications of Vietnamese origin submitted to the state management agency on industrial property rights, they must be presented in English, each application must be prepared in 02 copies and must meet the requirements. form and content as stipulated in the Hague Agreement.
• For a Hague application of Vietnamese origin submitted directly to the International Bureau, this application must be completed in the language specified in the Hague Agreement. Besides, this application also needs to pay attention to the content and form according to the provisions of the Hague Agreement.
• At the same time, when filing a Lahay application with Vietnamese origin at the state management agency on industrial property rights, you must also pay all kinds of fees (including international application transfer fees, etc.), and fees as prescribed in Clause 1 of this Article. The Hague Agreement or the law of the member state in which the request for protection of the industrial design is received.

As for filing a Hague application with Vietnam designation, it depends on the national law of each member requesting industrial design protection. This means that the laws of each different country have certain differences, so when filing a Hague application that designates Vietnam, it must comply with the provisions of the Hague Agreement or the law of the country as required.

How are Hague applications processed?

The process of handling a Hague application when a Hague application is filed through the state management agency on industrial property rights

Regarding the handling of Lahay applications of Vietnamese origin filed through the state management agency on industrial property rights, it is prescribed by Vietnamese law in Article 23 of Decree 65/2023/ND-CP. Specifically, according to Clause 1 of this Article, upon receiving a Hague application originating in Vietnam, the state management agency on industrial property rights will be responsible for implementing the procedures listed below:

• Collect international application transfer fees;
• Within 20 days from the date of receipt of a Lahay application originating in Vietnam, the state management agency in charge of industrial property rights must notify the applicant of the need to pay directly to the International Office the necessary fees as regulated by the Hague Agreement;
• Within 15 days from the date of receipt of a Lahay application originating from Vietnam, the preliminary examination of the form of the application will be undertaken by the state management agency on industrial property rights when submitted through this agency;
• In case the application has any shortcomings, the state management agency in charge of industrial property rights must send a notice to the applicant about the shortcomings of the Hague application and set a deadline for the applicant to respond. Rectification is within 12 days from the date of notification;
• Within 1 month from the date of receipt of the application, the state management agency on industrial property rights is responsible for transferring the Hague application with Vietnamese origin to the International Bureau.

Procedures for handling Hague applications with Vietnam designation

Regarding the processing of Hague applications designating Vietnam, this issue has been stipulated in Article 24 of Decree 65/2023/ND-CP. Accordingly, since receiving the notice from the International Bureau, except for the cases specified in Clauses 2, 3, 4, 5, 6, 7, and 9, Article 24 of Decree 65/2023/ND-CP, the state management agency on industrial property rights will conduct a substantive examination of the application with the industrial design registration application submitted according to the national format. Specifically, excepted cases include the following cases:

• In case the industrial design in the Hague application designates Vietnam and meets the conditions for protection under Vietnamese law and the application has no shortcomings;
• In case the industrial design does not meet the protection conditions or the application has some shortcomings;
• In case some registered industrial designs do not meet the protection conditions or the application has shortcomings for some industrial designs;
• In case a Hague application designating Vietnam is intended to be rejected because it does not meet the requirements for uniformity of the application specified in Article 101 of the Intellectual Property Law;
• In case the applicant corrects the shortcomings satisfactorily and/or submits an objection within 03 months from the date the state management agency on industrial property rights issues a refusal notice;
• At the end of the 3-month period mentioned above, the applicant has not corrected or supplemented any unsatisfactory shortcomings, and has not expressed any objections or made objections. This is not considered valid.
• In case of a complaint, after the result of the complaint, one or all of the industrial designs are rejected in the refusal decisions made by the state management agency on industrial rights and will still be accepted. receive protection.

Within 6 months from the date the International Bureau issues the notice, the state management agency on industrial property rights must draw a conclusion on the possibility of protecting industrial designs in a Hague application that designates Vietnam.

Some notes on international industrial design registration procedures using the Hague application

For Hague applications originating from Vietnam

• The date considered to be the filing date of an international industrial design registration application is the date on which the state management agency in charge of property rights receives a Hague application of Vietnamese origin. This is meant to arrange the order of filing, to see which party will receive protection when the same industrial design is internationally registered but in two different countries.
• Based on Clause 3, Article 23 of Decree 65/2023/ND-CP, after a Hague application of Vietnamese origin has been submitted to the International Bureau, all transactions related to this application, the submitter The applicant shall take this matter directly with the International Bureau or the designated competent authority of the country party to the Hague Agreement.

For Hague applications, Vietnam is designated

• Procedures related to the cases specified in Clauses 2, 3, 4, 5, 6, 7, and 9, Article 24 of Decree 65/2023/ND-CP have been specifically stipulated by Vietnamese law in these terms;
• In filing a Hague application for international industrial design registration, some parties may have priority. However, the parties must prepare supporting documents, submit them to the state management agency on industrial property rights, and receive approval from this agency to be able to enjoy priority rights.
• The time limit for the above issue is 03 months from the date the International Bureau announces the Hague application based on the time limit specified in Clause 8, Article 24 of Decree 65/2023/ND-CP;
• If, before the date of issuance of the decision to accept protection, a third person gives an opinion related to the Hague application designating Vietnam, then this person’s opinion will become a source of information for reference. for the processing of a Hague Application that designates Vietnam (Clause 10, Article 24 of Decree 65/2023/ND-CP).

Thus, it can be seen that registering an international industrial design with a Hague application is not an easy matter. Therefore, when subjects have this intention, they should seek the support of reputable, experienced, and highly specialized experts in this issue such as the company’s team of lawyers and consultants. Viet An Law.

If you have any questions about international industrial design registration procedures using the Hague application, please contact Viet An Law for our best support!