KENFOX: An industrial design shall be eligible for protection if it meets the following conditions: (i) To be new; (ii) To be creative and (iii) To be susceptible of industrial application.

KENFOX: The following items shall be ineligible for protection as industrial designs:

– Appearance of a product that is dictated by its technical features of the product;

– Appearance of a civil or an industrial construction work;

– Appearance of a product that is invisible during use of the product;

– Contrary to public order or morality.

KENFOX: No, interior design registrable is not eligible for design protection in Vietnam

KENFOX: Yes, it is statutorily possible for multiple design filing in Vietnam provided that applied designs in one application are NOT significantly different from each other. In other words, multiple designs in one application need to be embodiment of each other.

KENFOX: To claim priority for an industrial design application in Vietnam, such application must be filed with the National Office of Intellectual Property of Vietnam (NOIP) with  06 months from the priority application date. To this end, a certified true copy of the priority document (original required within 03 months from the filing date/scanned copy is sufficient at filing) must be submitted the NOIP.

KENFOX: In order to file an industrial design application with the National Office of Intellectual Property of Vietnam (NOIP), the following documents are required to provide us:

• 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 notes that:

• Original document (Certified priority document) is required within 03 months from filing date;
• Original document (Signed Power of Attorney ) is required within 01 month from filing date; and
• Original document (Signed Deed of Assignment) is preferably submitted within 01 month from filing date.

KENFOX: It takes around 10-12 months from filing to obtaining a Design Patent in Vietnam

Mr. Vu Anh Hue:

+ Formality examination: 1 month from filing date;

+ Publication of application: within 2 months from the date of acceptance as to form;

+ Substantive examination: 7 months from publication date of application;

KENFOX: In order to obtain right for industrial design in Vietnam, you must file the application for granting an industrial design patent, directly or by mail, to the National Office of Intellectual Property of Vietnam (NOIP) or its brand offices in Ho Chi Minh City or Da Nang.

KENFOX: Organizations, individuals of Vietnam, foreign individuals permanently residing in Vietnam and foreign organizations and individuals having a production or trading establishment in Vietnam may file applications for an industrial design patent either directly or through a lawful representative in Vietnam.

Foreign individuals not permanently residing in Vietnam, foreign organizations and individuals not having a production or trading establishment in Vietnam shall file applications for an industrial design patent through a lawful representative in Vietnam, like KENFOX.

KENFOX: Vietnam has adopted the first-to-file system, i.e. where two or more applications are filed by many different parties for protection of the same design, the patent may only be granted to the valid application with the earliest priority or filing date among applications that satisfy all required conditions; where there are two or more applications satisfying all the conditions and having the same earliest priority or filing date, the industrial design patent may only be granted to a single application out of these applications under an agreement by all applicants. Without such an agreement, all these applications shall be refused for the grant of the industrial design patent.

Accordingly, it is advisable to file an application for an industrial design patent as soon as possible after the design was invented and not to make the design public before filing the application.

KENFOX: An application for an industrial design patent filed with the NOIP shall be subject to formality examination for evaluating its validity.

The time limit for formality examination of an application is one (1) month from the filing date. In the course of formality examination, if the applicant corrects or supplements documents on his/her own initiative or upon the request of the NOIP, the time limit for formality examination may be prolonged for a period of time during which documents are corrected or supplemented.

Before the expiration of the time limit above, the NOIP shall complete the formality examination of applications and send notices on examination results to applicants.

• For a valid application, the NOIP shall send to the applicant a Notice on acceptance of valid application.
• For an application failing to meet formal requirements, the NOIP shall send to the applicant a Notice of intended refusal to accept valid applications, clearly stating reasons and setting a time limit for the applicant to correct errors or to object such intended refusal and set a time limit of one month from the date of notification for the applicant to give opinions or correct errors.

KENFOX: If the applicant to whom the NOIP has sent a Notice on its intended refusal of the application fails to correct errors or unsatisfactorily corrects errors or makes no opposition or makes unreasonable opposition to the intended rejection within the set time limit, the NOIP shall send a notice on its refusal of the application.

Applicants and all organizations and individuals having rights and interests directly related to the decision may lodge a complaint with the Director General of NOIP or initiate a lawsuit at court if they disagree with this decision within 90 days from the date the person having the right to complaint receives the notice of this decision.

Within 10 days from the date of receipt of a complaint about the decision of refusal,NOIP shall issue a notice of acceptance or rejection of such complaint,clearly stating the reason(s) for rejection.

Upon the expiration of the time limit for settlement of the complaint about decisions or notices concerning the application for an industrial design patent (the 1st complaints) by the NOIP such Decisions or Notices, if the complaint is not settled or the complainant disagree with complaint-settling decisions of the NOIP, the complainant or person having rights and interests directly related to the decision may further lodge their complaints (the 2nd complaints) to the Minister of Science and Technology or initiate a lawsuit at court within 30 days from the date of expiration of the time limit for settlement of the 1st complaint if by that date the 1st complaint is not settled,or from the date the person having the right to complaint receives or knows about the decision on settlement of the 1st complaint. Upon the expiration of the time limit for settlement of the 2nd complaint above or if the complainant disagree with complaint-settling decisions of the Minister of Science and Technology, such complainant or person may initiate a lawsuit at court.

Mr. Vu Anh Hue: Within 02 months as from the date the application is accepted as formally valid, it will be published in the Industrial Property Official Gazette for oppositions and comments of third parties. Applicant shall pay a fee for such publication.

KENFOX: The purpose of substantive examination of patent applications is to assess the patentability of objects claimed in the application under the requirements and corresponding protection scope. A substantive examination will be carried out by examiners of the NOIP within 18 months from the date of the request for substantive examination or the date of the application publication, depending on which comes later.

If the applicant, in the course of substantive examination, corrects or supplements documents or makes justifications on his/her own initiative or upon the request of the NOIP, the time limit for substantive examination may be prolonged for a period of time during which the applicant does so.

On the date of expiration of the time limit for substantive examination of an application at the latest, the NOIP shall send to the applicant one of the following notices:

• a Notice on its intended refusal to grant a patent, clearly stating the reason(s) for refusal, possibly guiding the change of the protection scope and setting a time limit of three (3) months from the date of issuance of the notice for the applicant to give opinions and satisfy the requirements (The applicant may request prolongation of the time limit), if the object claimed in the application fails to satisfy the protection conditions.
• a Notice on its intended refusal to grant a patent, clearly pointing out errors and setting a time limit of three (3) months from the date of issuance of the notice for the applicant to justify or correct errors. (The applicant may request prolongation of the time limit), if the object claimed in the application satisfies the protection conditions but the application still contains errors.
• or makes reasonable justifications within the time limit above a Notice on its intended grant of a patent and request the applicant to pay the granting fees, if the object claimed in the application satisfies the protection conditions or makes reasonable justifications within the time limit above.

If the applicant to whom the NOIP has sent a Notice on its intended refusal of the application fails to correct errors or unsatisfactorily corrects errors or makes no opposition or makes unreasonable opposition to the intended rejection within the set time limit, the NOIP shall send a Notice on its refusal of the application.

When dissatisfaction is in the decision of refusal of examiners, the applicant may appeal against the Decision of refusal with Director General of NOIP or initiate lawsuits at court.

KENFOX: Viet Nam adopts the first-to-file system, i.e. where two or more applications are filed by many different parties for protection of the same design, the patent may only be granted to the valid application with the earliest priority or filing date among applications that satisfy all required conditions; where there are two or more applications satisfying all the conditions and having the same earliest priority or filing date, the industrial design patent may only be granted to a single application out of these applications under an agreement by all applicants. Without such an agreement, all these applications shall be refused for the grant of the industrial design patent.

Accordingly, KENFOX advise that an application for an industrial design patent should be filed as soon as possible after the design was invented and not to make the design public before filing the application in Vietnam.

KENFOX: In respect of the system of invalidation trial, Law on Intellectual Property (No. 50/2005/QH11 of November 29, 2005) (“IP Law 2005”) has established legal grounds for invalidation of protection titles. More specifically, under Article 96.1 of IP Law 2005, it is construed that the Design Patent can be invalidated in the following cases:

 (a) The registration applicant has neither had nor been assigned the right to register an industrial design;

(b) The design fails to satisfy the protection conditions at the time the protection title is granted.

In respect of invalidation against an industrial design registration, the requester may file an invalidation request to the National Office of Intellectual Property of Vietnam (NOIP) which is the agency that granted the Design Patent. The Court may get involved in the design invalidation via an appeal procedure.

The NOIP, upon receipt of invalidation request, shall examine and may issue a Decision on invalidation settlement. If the parties to a design invalidation procedure are not satisfied with the NOIP’s Decision on invalidation settlement, they can, under Article 14.2 of Decree No. 103/2006/ND-CP, either further lodge their complaints (second-time complaint) with the Science and Technology Minister or initiate lawsuits at court. If a lawsuit is filed by the concerned party, the case shall be heard by an administrative court pursuant to administrative procedure. For more details, please refer to Article 14 of Decree No. 103/2006/ND-CP as follows:

[Article 14 of Decree No. 103/2006/ND-CP: Complaints about the registration of industrial property rights and settlement thereof

1. Applicants and all organizations and individuals with rights and interests directly related to decisions or notices concerning the processing of industrial property registration applications, which are issued by the state management agency in charge of industrial property, may lodge complaints with state management agency in charge of industrial property or initiate lawsuits at court according to the provisions of the Law on Intellectual Property and relevant laws. The time limit for settlement of complaints is specified in Clause 5 of this Article.
2. Upon the expiration of the time limit for settlement of complaints about decisions or notices concerning industrial property (first-time complaints) by agencies issuing such decisions or notices, if complaints are not settled or complainants disagree with complaint-settling decisions of these agencies, the complainants or persons with rights and interests directly related to those decisions may further lodge their complaints (second-time complaints) with the Science and Technology Minister or initiate lawsuits at court. Upon the expiration of the time limit for settlement of second-time complaints mentioned in Clause 5 of this Article, or if complainants disagree with complaint-settling decisions of the Science and Technology Minister, such complainants or persons with rights and interests directly related to those decisions may initiate lawsuits at court.
3. Contents of complaint must be presented in writing, clearly stating the full name and address of the complainant; serial number, signing date and contents of the complained notice or decision; contents of complaint, arguments and evidence on which the complaint is based; specific requests for the modification or annulment of the relevant notice or decision.
4. The right to complaint may only be exercised within the following time limit which does not include the period of time when the complainant cannot exercise his/her right to complaint due to any objective obstacle:

a/ The time limit for lodging a first-time complaint shall be 90 days from the date the person having the right to complaint receives or knows about the decision or notice on the processing of his/her industrial property registration application;

b/ The time limit for lodging a second-time complaint shall be 30 days from the date of expiration of the time limit for settlement of the first-time complaint specified in Clause 5 of this Article if by that date the first-time complaint is not settled, or from the date the person having the right to complaint receives or knows about the decision on settlement of the first-time complaint.

5. Within 10 days from the date of receipt of a complaint about the grant, amendment, invalidation, annulment or prolongation of validity of a protection title, the person competent to settle that complaint shall issue a notice of acceptance or rejection of such complaint, clearly stating the reason(s) for rejection.

The time limit for settlement of complaints complies with the provisions of law on complaints. The period of time for amending or supplementing complaint dossiers shall not be included in the time limit for settlement of complaints.

6. The complaint-settling order and procedures comply with the provisions of law on complaints]

KENFOX: under Article 63 of the IP Law 2005/2009, requirements for protection of an industrial design in Vietnam includes:

(a)        To be new;

(b)        To be creative;

(c)        To be susceptible of industrial application.

Under Article 96.1 of IP Law 2005/20092009, a patent for an industrial design may be invalidated at request of a third party in case:

(i) The registration applicant has neither entitled nor been assigned the right to register an industrial design;

(ii) The design fails to satisfy the protection requirements at the time the patent for such a design is granted.

In light of the above legislation, we can see that grounds for invalidation of a patent for an industrial design are mainly substantive grounds, not formality ones. As a result, as requirement relating drawings are formality requirements, failure to meet such requirements, may not be a ground for the invalidation of the design patent.

For your more reference, KENFOX advises that failure to requirements relating drawings may be a ground for rejection of a design application during the formality examination. However, once the design application has been granted with a patent, it is regarded that the design application has passed both the formality examination (where requirements for the drawings are also examined), and substantive examination. As such, predicating on the alleged failure to meet requirements relating drawings to invalidate the patent for design may not be feasible.

KENFOX: We note that in practice there is hardly any case of IP infringement in general and design infringement in particular are brought before a court in Vietnam. However, please be advised that in principle, if a case concerning industrial design rights is filed to the Court, the Court will seek for expert opinions / expert witness from the NOIP or the MOST, while suspending the court proceedings relating the infringement.

In light of the foregoing, we are actually not aware of the tendency of the courts in judging the identity/ similarity between a registered design and an allegedly infringing design.

For your information, in Vietnam, IP infringements in general and design infringements in particular are   handled through administrative enforcement bodies under administrative proceedings. In some cases, the opinions of these administrative enforcement bodies on the identity/ similarity between a registered design and an alleged infringing design may be different from that of the NOIP.

KENFOX: The scope of effect of design rights extends to not only the same design as a registered design, but also to designs for the same type of products with that of a registered design and have some identical substantial design features. (The scope of effect of design rights extend not only to identical design but also to similar design)

For your reference, KENFOX advises that you should refer to Article 35.1 (a, b) of Circular No. 01/2007/TT-BKHCN dated 14 February 2007, guiding the implementation of the Government’s Decree No. 103/2006/ND-CP, and Article 10 of Decree No. 105/2006/ND-CP dated 22 September 2006, detailing and guiding the implementation of a number of articles of the Law on IP on protection of IPR and on state management of IP as follows:

Article 35.1 of Circular No. 01/2007/TT-BKHCN which provides for “Assessment of similarity of industrial designs”:

a/ Two industrial designs are considered identical when they are used for the same type of product and have the same gathering of substantial and insubstantial design features;

b/ Two industrial designs are considered similar when they are used for the same type of product and have some identical substantial design features;

Article 10 of Decree No. 105/2006/ND-CP which provides for “Infringing elements of industrial designs”:

1. An infringing element of an industrial design is a product or part of a product of which the external appearance is insignificantly different from that of a protected industrial design.
2. The basis for determination of an infringing element of an industrial design is the scope of protection of the industrial design stated in the industrial design patent.
3. A product or part of a product shall be regarded as an infringing element of an industrial design in the following cases:

a/ The examined product or part of the examined product, even with an industrial design patent, contains a combination of design features that create an overall combination being a copy or in substance a copy (with virtually indistinguishable difference) of a protected industrial design of another owner with the permission of such owner;

b/ The examined product or part of the examined product contains a combination of design features that create an overall combination being a copy or in substance a copy of the protected industrial design or at least one product within a set of products of another person.

4. The industrial design of a product (part of a product) shall only be regarded as insignificantly different from a protected one defined in Clause 1 of this Article when it is a copy or in substance a copy of the protected one.

KENFOX: In order to determine the design classification in Vietnam, under Article 31.1 of Regulation on examination of Design Application, it is required to check the title of the design and field of use of the design through which determine the classification of the design. Besides, under Article 31.2 of Regulation on examination of Design Application, the classification of the design may be determined by identifying the nature of the design. Kenfox advises that the nature of the design may be determined by the group of essential features which are sufficiently indicated in the drawing and the description of the design.

KENFOX: KENFOX advises that graphic image is not registrable as an industrial design in Vietnam. Under Article 14.13 of Law on Intellectual Property (No. 50/2005/QH11 of November 29,2005) (“IP Law 2005”), “industrial design” means the appearance of a product embodying by shapes, lines, colours or combination thereof.

“Product”, in accordance with ID regulations and practice applying in Vietnam now, is an item which has a specific structure and function and can be independently circulated in the market.

Part(s) or component(s) of an article is also considered as a product if it is able to be mechanically disassembled from and re-assembled into a finished product and independently circulated in the market.

A graphic image or graphic symbol which is displayed on an article, such as on a liquid crystal display of mobile phone, MP3 player, on TV, or graphic design on computer monitor is not registrable as industiral design now in Vietnam, since it is considered as a part of design only, not an article or a portion of product which is disassembled/reassembled of a complex product

KENFOX: In order to enable the IPR holders to effectively enforce and protect their IPR in Vietnam, border measures (customs supervision) are specifically provided in Vietnamese laws and regulations. For your information, KENFOX is quite familiar with border measures and we often provide customs training to the customs officers every year.

According to IP Law of Vietnam, measures to control imported goods relating to intellectual property include (1) customs supervision and (2) temporary suspension of customs procedure. If the Vietnamese Customs detects a shipment of imports/exports being suspected of violating Intellectual Property Rights, the following steps will be taken:

Step 1: The Vietnamese Customs shall send a Notification to the applicant via fax;

Step 2: Under Article 219 of IP Law 2005, within 03 working days, the applicant is entitled to file an application for suspending customs procedures and obliged to advance a sum of money equal to 20% of the value of the goods consignment or at least 20 million Vietnam Dong where it is impossible to value such goods.

Step 3: Based on Article 218 of IP Law 2005, the Vietnamese Customs issues a Decision on suspension of customs procedures with regard to the goods consignment in question. Such Decision will be sent to the concerned parties. The term for such suspension is 10 working days, computed from the date when the applicant receives the suspension Decision. Under Article 10.2 of Circular No. 44/2011/TT-BTC, in case of request for IP assessment or expert opinion from the IP management authorities, the Customs shall continue suspending the customs procedures until receipt of the results relating thereto.

Under Article 10.3 of Circular No. 44/2011/TT-BTC, during the suspension period or the period when the preventive measure is applied, the Customs is obliged to execute the following work:

(a) Requesting the owner of the goods consignment, the IP right holders to furnish the documents relating the goods (catalogues, IP assessment conclusion, foreign documents, the results of handling similar cases etc.);

(b) Directly soliciting IP assessment at the IP assessment organizations or conferring with the IP management authorities for their expert opinion;

(c) Organizing the sampling to exercise the right to solicit IP assessment;

(d) Requesting additional assessment or re-assessment;

(e) Coordinating, discussing with the IP grassroot management authorities when disputes, appeals about the right holder, protectability, IP protection scope, competence of administrative violation handling.

Under Article 10.4 of Circular No. 44/2011/TT-BTC, upon expiration of suspension period or application of preventive measure, the Customs is obliged to execute one or all following pieces of work:

(a) Deciding to accept the case in accordance with administrative procedures upon confirming the suspended goods in question infringed upon IPR based on the IP assessment conclusion; expert opinion; documents, evidences provided by the IPR holder. Deciding to withhold the goods in case of grounds to affirm the goods in question is intellectual property counterfeit ones; infringing goods are foods, medicines, cosmetics, pet food, fertilizers, veterinary medicine, plant protection product, construction materials.

(b) Completing the customs procedures for the goods in question;

(c) Following the opinion from the court in case the applicant files a civil lawsuit;

(d) Handing over the case to other IP enforcement authorities if the infringement is not within the competence of the Customs;

(e) Temporarily withholding the settlement after receiving the written documents from the IP state management authorities, informing of disputes, appeals about the right holder, protectability, IP protection scope.

Enforcement authorities/bodies in Vietnam:

・Customs officer

・Police

・IP Office

・Design right holder

Method of disposal

・Destruction

・Forfeiture

KENFOX: If the goods are finally determined to actually infringe the design right, depending the nature of the case and the requests of the design holder, different actions can be taken.

Customs authority may proceed with the following piece of work:

– Following the opinion from the court in case the applicant files a civil lawsuit;

– Handing over the case to other IP enforcement authorities if the infringement is not within the competence of the Customs;

– Temporarily withholding the settlement after receiving the written documents from the IP state management authorities, informing of disputes, appeals about the right holder, protectability, IP protection scope;

As for police force, the design infringement is not handled under criminal measure in Vietnam under Article 226 of the 2015 Criminal Code.

The IP agent may actively work with the relevant enforcement bodies to support the handling process if the infringement is handled under administrative measure or represent the design holder before the Court if the infringement is handled under civil measure.

The design holder may, at the request of IP agent or enforcement authority, provide the required documents in support of the handling of design infringement.

With respect of disposal of the infringing goods, under Article 29.1(c) of Decree No. 105/2006/ND-CP, “for infringing goods that are not intellectual property counterfeit goods or materials, raw materials and means mainly used for producing or trading such goods, the infringement-handling agency shall apply measures to compel the goods owner, transporter or storer of those goods to remove the infringing elements from the goods, then apply appropriate measures specified in Clause 4 of this Article”.

Article 29.4 of Decree No. 105/2006/ND-CP provides that “on a case-by-case basis, the infringement-handling agency shall decide to apply measures specified at Point a, Point b, Clause 1 of this Article or other appropriate measures as it deems appropriate. In the process of issuing a decision to handle infringement, the infringement-handling agency may consider the related parties’ proposals regarding the handling of infringement”.

Article 29.1(a,b) of Decree No. 105/2006/ND-CP provides as follows:

1. For intellectual property counterfeit goods, raw materials, materials and implements mainly used for producing or trading such goods, the infringement-handling agency may apply one of the following measures:

a/ Confiscation for distribution or use for non-commercial purposes in accordance with Article 30 of this Decree;

b/ Confiscation for destruction under Article 31 of this Decree;

KENFOX: It may be possible for a design to be entitled to both copyright and industrial design protection in Vietnam.

As you are aware, the IP Law of Vietnam does not specifically provides which subject must be categorized as industrial design and which must be categorized as a work for copyright protection so that they will be protected as industrial design or copyright work. As a result, a design can be patented as registered industrial design and/or copyrighted works of applied art to enjoy both copyright protection and industrial design protection provided that it meets requirement of protection. Hence, dual protection is possible in Vietnam. For example, in Vietnam, a product label can be registered as a design patent or copyrighted work of applied art.

Despite availability for dual protection, for 2D form images or 2D representations of a specific product, the Copyright Office of Vietnam may still, practically, reject application for registration of 2D images or representations of such product as copyright, alleging that they are the exterior shape of a product which should be registered as industrial design.

KENFOX: As you may be aware, although the design holder can take either or both  administrative and civil measures against the infringers, Court actions in settlement of IPR infringement in general and Patent/Design infringement in particular are rarely taken in Vietnam. Civil route is known to be quite costly, time-consuming, and thus ineffective. In addition, the unavailability of an IP specialized Court results to the fact that all litigations relating to IP matters shall fall under jurisdiction of Civil Courts of Vietnam, in which the judges do not have experience and background in respect of IP issues. Therefore, in fact, most of the IPR infringement cases have been settled under administrative measure by the Inspectorate of Ministry of Science and Technology (“IMOST”) since this measure seems to be more feasible and more effective in terms of time and cost.

With regard to the number of infringement cases in relation to Patents/Designs which are settled via administrative route, the statistics thereof published by the NOIP are as follows: