KENFOX IP & Law Office > IP Practice in Vietnam > IP Practice – Industrial Design in Vietnam

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Industrial Design Related Matters

Industrial Design Related Matters in Vietnam

 

Copyright © 2018 KF

 

All other rights are reserved. This document and its contents are made available on an “as is” basis, and all implied warranties are disclaimed. The contents of this document do not constitute, and should not be relied on as, legal advice. You should approach a legal professional if you require legal advice.

 

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KENFOX design team has a keen appreciation for product and packaging design. Our attorneys understand the importance of visual appearance in marketing and branding. Our design law professionals work with clients to ensure they understand the advantages and limitations of all forms of legal protection for designs, including when to turn to copyright and trademark rights in addition to pursuing design registrations and design patents.

 

Our team includes professionals with a wide range of educational and industry experience and a thorough understanding of the protection that the design regulations offers our clients. Professionals have multi-disciplinary technical experience that enables them to effectively protect designs for goods as diverse as electronics, clothing and fashion accessories, automobiles, home furnishings and housewares, as well as various forms of product packaging. KENFOX design team is devoted to helping clients build, protect and enforce their design rights.

 

Our services concerning industrial design

• Drafting and prosecuting design applications in Vietnam, Laos and Cambodia, including preparing written descriptions, and drawings or photographs

• Providing opinions on registrability, validity and infringement

• Performing prior art searches

• Enforcing intellectual property rights

 

Industrial design protection in Vietnam

Per Article 4.13 of the IP Law of Vietnam, industrial design means the outward appearance of a product embodied in three dimensional configuration, lines, colours or a combination of such elements. It is focused on protecting the visual features of an article, namely its design, shape, pattern or ornament. For example, an industrial design could protect an original design or shape of shoes. In contrast, a change in the functionality of an article or in the materials used to manufacture an article are not aspects which are eligible for industrial design protection.

 

What benefits does an industrial design registration provide for the owner in Vietnam?

An industrial design registration may be one of the most valuable asset for business owners. The success of a product is usually influenced by its appearance; in an aesthetic-driven consumer base, the looks of a fashionable product looks can often be equally or more important than its functionality. A product with nice designs attracts more consumers nowadays, not only in Vietnam, but also other in other countries worldwide.

 

Obtaining exclusive rights to a product with a particular appearance may result in a substantial return on the investment because the owner of a protected industrial design has the exclusive right to use, licence or assign the right to use such industrial design to other persons (Article 123 of the 2005 Intellectual Property Law), the right to request the competent Vietnamese enforcement authorities to compel/force other persons to stop infringements, and the right to claim compensation for damages caused by such acts of infringement (Civil Code No. 91/2015/QH13 and Article 198 of the 2005 Intellectual Property Law)

 

An industrial design registration in Vietnam provide the owner exclusive rights to the commercial production, marketing and sale of your product for a maximum period of 15 years ( A registered industrial design is given an initial protection period of 5 years from the date of filing and is extended for two further consecutive terms of 5 years each. The maximum protection period is 15 years ). Under Article 93.4 of the IP Law of Vietnam, an industrial design patent shall be valid from the grant date until the end of five (5) years after the filing date and may be renewed for two consecutive terms, each of five (5) years.

 

If the owner’s industrial design is trespassed on, they may bring their case to a Vietnamese competent court and be awarded damages for the lost sales the plaintiff has incurred as a result of the infringement of their design registration. This allows the patent holder to focus on establishing products on the basis of superior industrial design without worrying about knock-offs from competitors who can produce items cheaper or who can scale their manufacturing quicker.

 

An industrial design registration can also be sold or licensed to others. If you do not want or do not have the capability to produce the product protected by your industrial design, you may be able to sell or license your design to another and earn a royalty on their sales.

 

Further, your industrial design registration can help you establish goodwill in the trademark sense in particular shape and appearance of the article, which is referred to as its get-up in trademark law. Having sufficient reputation in the get-up of a product becomes a separate ground for excluding others from copying your design.

 

The period of exclusivity provided by an industrial design registration allows your reputation in the design to build and then potentially provide those protectable trademark rights that can extend indefinitely as long as sufficient reputation in the get-up is maintained.

 

Authors who have created industrial designs by their own labour and at their own expense and/or organizations or individuals who have supplied funds and material facilities to authors in the form of job assignment or hiring are entitled to register industrial designs for protection under Article 86.1(a,b) of the IP Law of Vietnam. In a broader sense, owning a permanent production or trading establishment in Vietnam is not a prerequisite condition to register an industrial design in Vietnam.

 

All documents submitted to the National Office of Intellectual Property of Vietnam (NOIP) must be in Vietnamese, with the exception or power of attorney and evidence documents for right to register and priority right where appropriate. Other supporting documents may be submitted in other languages, but translations must be provided if requested.

 

As a party to the Paris Convention for the Protection of Industrial Property, Vietnam offers the ‘right of priority’ to applicants where the same filing has been made within the last 6 months in any other member state. Once registered, the patent protection will be calculated from this priority date, rather than the actual filing date in Vietnam.

 

Registering your industrial design in Vietnam

Just like other types of intellectual property, industrial designs are only valid Vietnam in which the owner has obtained a registration. Article 6.3(a) of the IP Law of Vietnam concerning “grounds for the generation and establishment of intellectual property rights” provides that: [ Industrial property rights shall be established as follows: (a) Industrial property rights to … industrial design…shall be established on the basis of a decision of the competent State body to grant a protection title in accordance with the registration procedures stipulated in this Law or the recognition of international registration pursuant to an international treaty of which the Socialist Republic of Vietnam is a member ]. If you are looking to get protection outside of Vietnam, you will need to register separately with that country’s or region’s intellectual property office.

 

As Vietnam is a signatory to the Paris Convention, Vietnamese applicants are entitled to a six-month convention priority period to file a corresponding application in other jurisdictions. What that means in practice is that, when you file in other countries within six months of your original filing date, the filing date of that application will be deemed to be the same as your filing date in Vietnam, putting you ahead of similar applications from others in that jurisdiction who may have filed in the intervening period.

 

A search of existing industrial designs may be conducted prior to filing an industrial design application through the online industrial design database on the National Office of Intellectual Property of Vietnam (NOIP) website. This can help you determine if your design has already been registered by another.

 

Although NOIP makes this database available online, they will not help you determine whether your design is registrable in advance of filing an application. As such, you may consider entrusting KENFOX, an IP agent licensed to practice before the NOIP to determine if your design is registrable before filing an industrial design application.

 

If your design has already been publicly disclosed, you must file an application within six months of the earliest disclosure date to potentially obtain design protection in Vietnam. KF notes that under Article 65.4 of the IP Law of Vietnam, an industrial design shall be deemed not to have lost its novelty if it is published in the following cases, provided that the application for registration of the industrial design is filed within six (6) months from the date of publication: (a) It is published by another person without permission from the person having the right to register it as defined in article 86 of this Law; (b) It is published in the form of a scientific presentation by the person having the right to register it as defined in article 86 of this Law; (c) It is displayed at a national exhibition of Vietnam or at an official or officially recognized international exhibition by the person having the right to register it as defined in article 86 of this Law.

 

As part of your application, you will be expected to provide clear and detailed drawings or photographs of your design and a description of what constitutes the design as part of the application. The title of the application must also identify the article to which the industrial design is applied.

 

Once issued, KENFOX notes that under Article 93.4 of the IP Law of Vietnam, an industrial design patent shall be valid from the grant date until the end of five (5) years after the filing date and may be renewed for two consecutive terms, each of five (5) years.

 

Applications must be filed with the National Office of Intellectual Property of Vietnam (NOIP). Upon receipt, the NOIP will stamps its seal (with application number and filing date) on the application. For industrial design filing, the following documents must be provided:

 

• Name, address and nationality of applicant and designer;

• Photographs/drawings of front, rear, left, right, top, bottom and perspective views of industrial design (electronic format);

• Certified priority document, if claimed. Priority data (application number, filing date, country) is required at filing;

• Signed Power of Attorney from applicant appointing KF as his/her patent agent in Vietnam;

• Signed Deed of Assignment, requested only if:

 

     (i) Applicant is individual not the designer; or

     (ii) Applicant is organization not the applicant stated in priority application.

 

KENFOX draws your attention to the following points: (i) Original document (Certified priority document) is required within 03 months from filing date; (ii) Original document (Signed Power of Attorney) is required within 01 month from filing date; and (iii) Original document ( Signed Deed of Assignment) is preferably submitted within 01 month from filing date.

 

Enforcement of design rights in Vietnam

Should your industrial design be infringed in Vietnam, there are two main avenues of enforcement which can be pursued, namely, administrative actions and/or civil litigation. This being said however, private mediation via legal professionals is often effective and should be considered as a viable first action in the event of an infringement.

 

Administrative actions

Administrative actions are both cost-effective and time-efficient, and this is usually the most common route for patent holder to take upon detecting infringement. It is a good way to deal with small-scale infringers and to gather evidence for larger scale infringements. Due to the nature of the remedies available and speed of case handling, administrative actions are an especially effective method of putting an immediate stop to on-going IPR infringement.

 

In the case of industrial design infringement, administrative measures are also widely taken given their effectiveness, especially, when the industrial design infringement cases are handled by Inspectorate of Ministry of Science & Technology, who are proven to be quite efficient and quick in taking actions.

 

Civil litigation

Civil litigation is usually only used in the event of larger scale infringements and, as we know, until now, very few cases are brought before Vietnamese civil courts. This is partially due to the lack of proper IP training and human resources within the judicial system, resulting in somewhat unpredictable case outcomes. Vietnamese authorities are working to improve the civil system however, working in cooperation with international organisations and government agencies.

 

The civil courts remains relatively inexperienced at dealing with industrial design patent cases by international standards and have only dealt with a limited number of cases to date. In civil actions, right holders can request provisional measures such as preliminary injunctions, as well as claim actual damages or loss of earnings. Where actual loss cannot be determined however, the maximum award is currently set at approximately US$ 25,000.

 

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