New points in Decree 65/2023/ND-CP on industrial designs

On August 23, 2023, the Government issued Decree No. 65/2023/ND-CP detailing industrial property, industrial property protection, and plant variety management. Decree 65/2023/ND-CP replaces Decree No. 103/2006/ND-CP and a number of articles of Decree 105/2006/ND-CP, including amendments and additions of some new points on the design industry. The promulgation of Decree No. 65/2023/ND-CP marks an important step forward in strengthening IP protection in Vietnam, in accordance with higher standards and requirements from CPTPP, EVFTA, RCEP, and Hague Convention. In the article below Here, Viet An Law will analyze new points in Decree 65/2023/ND-CP on industrial designs.

Legal basis

• Law on Intellectual Property 2005, as amended and supplemented in 2022.
• Decree No. 65/2023/ND-CP provides detailed regulations on industrial property, protection of industrial property rights, and management of plant varieties.
• Circular 16/2016/TT–BKHCN amending Circular 01/2007/TT-BKHCN guiding the implementation of Decree 103/2006/ND-CP guiding the Intellectual Property Law on industrial property.

What is an industrial design?

According to Clause 13, Article 4 of the Intellectual Property Law 2005 (amended 2022), an industrial design is the external shape of a product or part to be assembled into a complex product, expressed in three-dimensional form, such as the contours of an object by shape, color or combination of these elements and are visible in the process of exploiting the uses of the product or complex product.

Industrial design is shown in many types of products. Products are understood as objects, tools, equipment, means, or parts used to assemble or compose those products, produced by industrial or handicraft methods, with clear structure and functions, and circulated independently.

Industrial design is also the main factor that helps a product attract clients’ attention and plays an important role in production and business because it has the ability to help personalize goods with industrial designs. This industry with other similar goods on the market, thereby helping owners (individuals, businesses…) of industrial designs gain a business advantage over other competitors.

What objects are not protected as industrial designs?

Article 64 of the Intellectual Property Law 2005 stipulates that objects are not protected as industrial designs, including:

• The product’s external appearance is required by the product’s technical characteristics;
• External appearance of civil or industrial construction works;
• The shape of the product is not visible during product use.

New points in Decree 65/2023/ND-CP on industrial designs

First, change the protection registration declaration form

The declaration forms, protection certificate forms, and declaration instructions specified in Appendix I of the Decree have replaced the industrial design declaration forms according to Circular No. 01/2007/TT-BKHCN.

Second, industrial design registration application under the Hague Agreement

On September 30, 2019, Vietnam officially submitted a request to join the Hague Agreement and on December 30, 2019, this Agreement officially took effect in Vietnam. Therefore, Decree 65/2023/ND-CP was born, guiding the updated industrial design registration process according to Vietnam’s new commitments when joining this Agreement.

The Hague System, governed by the Hague Agreement relating to the international registration of industrial designs, simplifies the process of protecting industrial designs in different countries. The Hague Agreement allows applicants to file a single international application and select multiple member states where they wish to protect their industrial design to designate for registration, saving time, money and costs and resources for industrial design owners.

Procedures related to international registration applications of industrial designs under the Hague Agreement that have Vietnamese origin and have Vietnamese designation are regulated in quite detail from Article 22 to Article 24 of the Decree. These laws have provided a clear roadmap for applicants to protect industrial designs internationally or from internationally to Vietnam.

Accordingly, individuals and organizations have the right to apply for international registration of industrial designs under the Hague Agreement if that individual or organization satisfies one of the following conditions:

• Be a national of a country party to the Hague Agreement.
• Permanent residence in a country that is a member of the Hague Agreement.
• Have residence in a state party to the Hague Agreement.
• Have a real and effective commercial/industrial establishment in a state party to the Hague Agreement.

Third, add regulations on the withdrawal of industrial design registration applications

Pursuant to Point b, Clause 2, Article 17 of Decree 65/2023/ND-CP, the provision has been added that the National Office of Intellectual Property must issue a notice of intention to refuse to accept the withdrawal of the application in case the request to withdraw the application does not meet the conditions so that the applicant can correct the shortcomings.

Fourth, regulations separate industrial design registration applications

According to Point a, Clause 1, Article 17 of Decree 65/2023/ND-CP, the applicant has the right to request to separate the industrial property registration application before there is a decision on the formality or substantial examination. However, splitting an order to create one or more new orders (split orders) is only acceptable in the following cases:

• Separate one or several industrial designs in an industrial design registration application,
• When carrying out the procedure for splitting an industrial property registration application, the applicant must submit a written explanation of the object of protection requested and the content of changes compared to the original application according to Point c, Clause 1, Article 17 of the Decree.

Fifth, issue electronic protection certificates

Supplementing regulations on granting protection certificates in electronic form or protection certificates in paper form. For registration applications submitted from August 23, 2023, the effective date of this Decree, onwards, paper protection titles will only be issued in cases where the applicant expresses the request in the Declaration (Article 29.1).

Sixth, more information about the state’s right to register industrial designs

In case an invention is the result of a scientific and technological task using the state budget, the information that needs to be declared includes:

• Name of the agency managing science and technology tasks.
• Name of science and technology mission.
• Science and technology task code.

Saturday, late publication of the industrial design registration application in the new registration declaration

According to the new application form, an industrial design registration application can be published later than the current time limit (02 months from the date of the Notice of Acceptance of a valid application). However, this extension period must not exceed 7 months from the date of application. Therefore, if the applicant requests, he or she should mark this section in the application and clearly state which month the late announcement is (from the date of application).

Eighth, industrial design description

The industrial design description is a mandatory document that must be submitted along with the industrial design registration application. The industrial design description is a document that helps the applicant state detailed information about the industrial design. When submitting an industrial design registration application, the applicant must also submit a description of the industrial design.

If you need to register an industrial design, please contact Viet An Law Firm for the best support!