Opposition time limit for industrial design application in Vietnam

With current developments, improving product designs and appearances and creating new designs is an inevitable trend. To protect industrial designs in particular and intellectual property rights in general, industrial design registration is very important. However, many owners do not care about the issue of this industrial design registration, leading to a third party applying for protection of that industrial design registration before the owner does. In the article below, Viet An Law will analyze the relevant legal regulations on the opposition time limit for industrial design application in Vietnam.

Legal basis

• Law on Intellectual Property 2005, as amended and supplemented in 2009, 2019, 2022.
• Decree 65/2023/ND-CP has detailed several articles and measures to implement the Intellectual Property Law on industrial property, protection of industrial property rights, rights to plant varieties, and state management of intellectual property.
• Circular 236/2016/TT-BTC regulates industrial property fees and charges.
• Decision 3038/QD-BKHCN of the Ministry of Science and Technology regulating the announcement of newly issued administrative procedures and abolished administrative procedures in the field of intellectual property within the scope of management functions of the Ministry of Science and Technology.

What is industrial design?

According to the provisions of Clause 13, Article 4, industrial design means the outward appearance of a product embodied in three-dimensional configuration, lines, colors, or a combination of such elements visible in the process of exploiting the uses of products or complex products.

Industrial design registration

Industrial design registration is an administrative procedure carried out by the National Office of Intellectual Property, in other words, the owner applies to the National Office of Intellectual Property to be granted an exclusive protection certificate for industrial designs.

Industrial design registration applications must meet the general requirements specified in Articles 100 and 103 of the Intellectual Property Law, Appendix I of Decree 65/2023/ND-CP, and instructions in Article 21 of Circular 23/2023/TT-BKHCN.

Opposition time limit for industrial design application in Vietnam

According to Article 112 of Intellectual Property Law in 2005, as amended and supplemented in 2009, 2019,2022, as from the date an application for registration of industrial property is published in the Official Gazette of Industrial Property up until before the date of issuance of a decision on grant of a protection title, any third party shall have the right to express an opinion to the competent State administrative body for industrial property rights on the grant or refusal to grant a protection title for such application. Such opinions must be made in writing and be accompanied by documents or must quote the source of information.

Before the decision to grant a protection title, within 4 months from the date the industrial design registration application is published, any third person has the right to oppose a protection title grant.

The right to opposition to industrial property registration applications, especially for industrial design applications, is a new feature in the Intellectual Property Law that has been amended in 2022. Accordingly, any third party also has this right provided that the industrial design registration application has been published in the Industrial Property Official Gazette and the opposition must be within 4 months from the date the industrial design registration application is published.

Formal opposition to industrial design registration application in Vietnam

When realizing that an industrial design registration application submitted to the National Office of Intellectual Property shows signs of infringement, any third party has the right to send its opposition to the National Office of Intellectual Property regarding the granting of the application or not issued in respect of that application. Oppositions must be made in writing, accompanied by documents or citing sources of information to prove them, and fees and charges must be paid.

According to the provisions of Circular 263/2016/TT-BTC, the fee for resolving a request to opposition to the grant of a protection title by a third party (for industrial designs for each option of each good) is 550,000 VND.

Documents required to opposition to an industrial design registration application in Vietnam

Documents as prescribed in Clause 1, Article 112a of the Law on Intellectual Property and Article 11 of Circular 23/2023/TT-BKHCN include:

• Document expressing oppositions;
• Documents or citation of information sources to prove oppositions;
• Power of Attorney for Viet An Intellectual Property Representative (if applying through a representative);
• Copy of fee payment (in case of payment of fees and charges via postal service or direct payment to the Intellectual Property Department’s account).

Number of documents: 01

Procedures for opposition to industrial design registration applications in Vietnam

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

Step 1: Submit an opposition

Organizations and individuals submit one (01) set of documents of opposition to the industrial design registration application to the National Office of Intellectual Property in the form of:

• Online through the Administrative Procedures Processing System of the Ministry of Science and Technology;
• Directly or via postal service to the General Office of the National Office of Intellectual Property in Hanoi or the Representative Office in Ho Chi Minh City and Da Nang.

Step 2: Examination of an opposition

The National Office of Intellectual Property checks the validity of the requirements of the application form and the deadline for the opposition. In case the opposition is filed beyond the prescribed opposition deadline, the National Office of Intellectual Property refuses to accept the application right at the time of receipt.

After meeting the requirements, the National Office of Intellectual Property receives and notifies that opinion to the applicant, setting 02 months from the date of notification for the applicant to respond in writing, except in the case of the opinion related to the right to registration, the National Office of Intellectual Property will issue a notice for the opponent to file a lawsuit with the competent Court under the law.

Step 3: Notify the opposition claim

After receiving feedback from the applicant within the prescribed time limit, if deemed necessary, the National Office of Intellectual Property shall notify the opponent of the feedback and issue a determination within 02 months from the date of notification for the opponent to respond in writing to that feedback.

Step 4: Direct conversation

The National Office of Intellectual Property organizes direct dialogue between opponents and the person in charge of the unit to clearly define the issue that requires the Office’s review if necessary or required by both parties.

Step 5: Handle oppositions

Based on the information, evidence, and arguments provided by the parties (if any) and/or the results of dialogue between the parties, the National Office of Intellectual Property will handle the oppositions and notify the results of handling the oppositions. The opposition claim along with the results of the substantive examination of the corresponding application to the opponents set a time limit of 02 months for the opponents to respond.

Note:

• The time limit for the applicant to respond to opponents’ oppositions and the time limit for opponents to respond to the applicant’s comments are not included in the time limit for the National Office of Intellectual Property to carry out related procedures according to regulations.
• The time limit for resolving opposition to requests depends on the time limit for issuing the results of the substantive examination of the respective application.
• Opposition to industrial design registration applications must be made in Vietnamese. Documents accompanying oppositions may be made in another language but must be translated into Vietnamese when requested by the National Office of Intellectual Property.
• State fee: The fee for resolving requests for opposition to industrial property registration applications for industrial designs for each option of each good is 550,000 VND (Circular 263/2016/TT-BTC).

Industrial property representation services of Viet An Law

• The representative of the application owner registers the geographical indication at the National Office of Intellectual Property.
• Monitor registration progress, and respond when necessary.
• Client representative opposes a third party’s geographical indication registration application when there is sufficient basis to determine rights infringement.
• Consulting and supporting customers in discussing and resolving opposition to procedures at the National Office of Intellectual Property.
• Representing customers to sue in court related to the right to geographical indications registration.

If you have any questions or need advice on legal services related to the time limit for opposition to geographical indication applications in Vietnam, please contact Viet An Law for the best support!