Registration of industrial designs in foreign countries

The global economy is growing, accordingly, the demand for the expansion of intellectual products of Vietnamese enterprises has increased sharply. So, how can Vietnamese enterprises register their industrial designs abroad, what are the forms and procedures for registration of industrial designs in foreign countries? Viet An Law summarizes the basic contents for your reference.

Legal basis

• Law on Intellectual Property 2005, amended and supplemented in 2009, 2019, 2022 .
• International Treaties on Intellectual Property and Industrial Designs to which Vietnam is a member.

What is an industrial design?

An industrial design is the appearance of a product or part for assembly into a complex product, expressed in three dimensions, such as the contours of an object by shape, color or combination of these factors and can be seen in the process of exploiting the utility of the product or complex product (Article 4.13 of the Intellectual Property Law).

Industrial designs are shown on many types of products. Products are understood as objects, tools, equipment, vehicles, or parts used to assemble or combine such products, manufactured by industrial or manual methods, with clear structure and function, independent circulation.

Industrial design is also the main factor that helps a product attract the attention of customers and plays an important role in production and business because it has the ability to help personalize goods with industrial design with other similar goods on the market, thereby helping the owner (individual, business, etc.) of the industrial design to have a business advantage over other competitors.

What is registration of industrial designs in foreign countries?

When refering to industrial design registration in Vietnam, it is often to understand as registration at the National Office of Intellectual Property of Vietnam, which has the scope of protection in the territory of Vietnam. Accordingly, the registration of industrial designs in foreign countries is the registration of industrial designs in countries other than the territory of Vietnam. If the owner wants the design to be protected in any country, he/she shall register it in that country or only determine that country to secure its own interests.

Industrial design owners can register in one or more countries that need protection, without limitation on the number or scope of protection. Because intellectual property rights in general and industrial design registration rights in particular are territorial, the owner of an application for protection in any country will be entitled to protection of industrial design property rights in that country.

How to filing an industrial design registration application in a foreign country?

Registration of industrial designs in foreign countries is the implementation of protection in countries outside Vietnam, so the forms of protection are also quite diverse, depending on the needs of the owner, the owner can choose the following suitable forms.

Currently, there are 03 forms of industrial design registration abroad, including:

Form 1: Registration of industrial designs by country

Enterprises and individuals can register their industrial designs by submitting an application directly to the intellectual property offices of each country where the enterprise wants to protect the industria; design. However, there is a limitation that this form is only suitable for businesses with many branches in registered countries and can process applications directly and quickly.

Form 2: Registration of designs according to areas with common international treaties

If you want to register your industrial design in more than one country that is a member of a regional agreement, you may only have to file a single application with the intellectual property office of that region. . Regional intellectual property offices include the following:

• African Regional Industrial Property Office (ARIPO) to register industrial designs in English-speaking African countries;
• Benelux Design Office (BDO) for the protection of designs in Belgium, the Netherlands and Luxembourg;
• The Agency for Harmonization of the Domestic Market (OHIM) to protect Community designs in 15 countries of the European Union;
• Organization of African Intellectual Property (OAP) for protection in French-speaking African countries.

Form 3: Design registration under international treaties

The final form is registration of industrial designs under the Hague Agreement (Hague) with Vietnam as a member country. Enterprises wishing to register their designs internationally in several countries can use the procedures provided for in the Hague agreement on international registration of industrial designs managed by the World Intellectual Property Organization (WIPO).

Businesses can choose to register in one of two ways:

• Register directly at the International Office.
• Registration through the intermediary of the National Authority of the Member State, if permitted by its law.

Enterprises from a member country of the Hague Agreement need only submit a single application to WIPO in a single currency. The Hague Agreement helps owners to easily manage their own international registration of industrial designs as follows:

• Extension of validity
• Transfer of ownership
• Change the name, address of the owner through a simple procedure.

Thus, this form overcomes the limitation of the first form, the industrial design registration enterprise will not need to file many applications in many separate countries, but the industrial design is still protected in the member countries. member of the agreement desired by the applicant.

The Agreement provides applicants with a simpler and more economical mechanism for filing industrial design applications in different countries. The cost of registering an industrial design under the Hague Agreement varies depending on the number of designs and the number of countries in which an applicant applies for design protection.

For example: the cost of protecting 5 designs in 11 countries using the international channel under the Hague system is approximately 900 SFr (~1049 USD).

Procedures for registration of filing an industrial design registration application abroad

The subject of industrial design registration is not limited, so domestic or foreign Vietnamese individuals, organizations and enterprises residing in Vietnam can apply for protection registration directly to the International Office of the World Intellectual Property Organization (WIPO) or through the National Office of Intellectual Property.

Currently, international industrial design registration procedures will be carried out according to the following options:

Method 1: Apply directly to the International Office

• Option 1: The applicant uses WIPO’s online application system (eHague). Log in to the online application system, enter the information, pay the fee and submit the application (https://www.wipo.int/hague/en/e-filing.html) .
• Option 2: The applicant sends the application dossier directly to WIPO or sends it by post and fills in the available forms (downloaded from the WIPO website), submits the paper application in person or sends it by post.

Method 2: File an application indirectly through the National Office of Intellectual Property of Vietnam

• Step 1: Fill in the DM/1 form: The applicant goes to the WIPO website to download the DM/1 form or receive the DM/1 form at the NOIP and declare the information.
• Step 2: Submit an international registration application to the National Office of Intellectual Property with application transfer fee .
• Step 3: Receive fee notice from NOIP and proceed to pay fee to the International Office
• Step 4: NOIP completes the application and sends it to the International Office

It should be noted that the language used when submitting to the NOIP must be English.

Frequently asked question on registration of industrial designs in foreign countries

What is not protected in the name of an industrial design?

Article 64 of the Law on Intellectual Property stipulates that the objects are not protected in the name of industrial designs, including:

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

Can international industrial design registration application in Vietnam protect abroad?

When registering international industrial design, the applicant can submit an application at the National Office of Intellectual Property of Vietnam, the composition of the application and the application procedure will be in the form of international registration. At this time, it will avoid the need for businesses and individuals to file directly abroad or send by international post, avoid costly and lost documents, and create favorable conditions for the protection of industrial designs.

The scope of protection of an industrial design is on the territorial principle, which means that registration in any country will only be protected in that country.

What fees must be paid when registering an industrial design in a foreign country by multilateral method ?

(*) For the first industrial design

(**) For industrial designs from the second onwards

(a) The standard designation fee consists of 3 levels, depending on the designated country

(b) In the case of a designated country where a separate designation fee is declared in lieu of the standard designation fee

Who has the right to file an application for registration of an industrial design abroad under the Hague Agreement?

An individual or organization has the right to file an international application for an industrial design under the Hague Agreement if that individual or organization satisfies one of the following conditions:

• Be a citizen of a member state of the Hague Agreement.
• Permanent residence in a member state of the Hague Agreement.
• Have domicile in a member state of the Hague Agreement.
• Have a real and effective Commercial/Industrial base in a member country of the Hague Agreement.

How to register an industrial design in Europe?

Owners can register an industrial design in Europe in two ways:

• The first way is to file a separate application in each country through that country’s Intellectual Property Office. For each industrial design registration application in each country, the enterprise must use the mother tongue and the official currency of that country to conduct the registration application procedures. When an enterprise needs to amend or supplement one or more details in a registered industrial design, the enterprise needs to carry out amendment and supplement procedures at the Intellectual Property Office in all countries where the industrial design has been registered / protected. The order and procedures for registration and the scope and term of protection for industrial designs are different among member states.
• The second way is to apply for industrial design in Europe through the European Union Intellectual Property Office (“EUIPO”). Instead of filing separate applications in each European country, businesses can submit a single application to the EUIPO, listing specific countries that want to apply for industrial design protection. When applying, the applicant can speak one of the official languages of the European Union (24 languages). In case of objection, invalidation of industrial design protection title, the language used in the application will be one of the languages officially used at EUIPO (including English, French, German, Italian, Spanish), this language must be different from the language used when submitting the industrial registration application.

If you need advice on industrial design registration procedures abroad, please contact Viet An Law for the best support.