In today's fiercely competitive market, registering industrial designs is of utmost importance. Each new design is a result of creativity and represents a valuable asset. However, businesses and owners sometimes neglect the crucial step of registering ownership of this valuable asset. Registering an industrial design creates a strong "wall" for individuals and organizations, protecting their intellectual property (IP) in the form of industrial designs from infringement (copying, counterfeiting, etc.).
1. What is an Industrial Design?
An industrial design (abbreviated as KDCN in Vietnamese) is the external appearance of a product, expressed through lines, shapes, colors, or combinations of these elements. It is one of the objects of intellectual property protection in Vietnam.
The initial protection period is 5 years and can be renewed twice for 5 years each, for a total of 15 years.
2. Conditions for Registering Industrial Design Protection in Vietnam
In Vietnam, according to the Intellectual Property Law, to be eligible for industrial design protection (granted a certificate of exclusive registration), a registered industrial design must meet the following conditions:
Novelty: The design must not have been publicly disclosed before the filing date. This means that the owner must file the registration application before the industrial design is released to the market for circulation.
Creativity: The design must be different from other industrial designs that already exist on the market (not identical or confusing with existing products).
Industrial Applicability: It must be possible to manufacture (produce) identical products using industrial or manual methods.
The above are the three basic conditions for an industrial design to be eligible for protection.
Note:
The following objects cannot be protected as industrial designs:
- The external appearance of a product that is required by the technical characteristics of the product;
- The external appearance of a civil or industrial construction work;
- The shape of a product that is not visible during use of the product;
- Objects that are contrary to social morality, public order, or harmful to national defense and security.
3. What is an Industrial Design Patent?
An Industrial Design Patent is a certificate issued by the National Office of Intellectual Property of Vietnam (NOIP) to the applicant, recognizing their legitimate ownership of the design.
The basic information on an Industrial Design Patent includes:
(i) Owner information: Name and address of the owner
(ii) Filing date, application number, patent number, and date of grant
(iii) Information about the registered product design
(iv) Information on the validity period of the patent, etc.
Note: During the course of business, if any information in the Industrial Design Registration Certificate changes, such as the owner's address (this is the most common case, as legal entities often change their address frequently), the owner must go through the procedure of changing the information recorded on the patent.
4. Why is it necessary to file an Industrial Design application?
There are many reasons why it is necessary to file an Industrial Design application. In this article, the author will only mention some basic reasons as follows:
- Only when an application is filed and a Certificate of Registration is granted, will the owner's rights to the industrial design arise;
- The owner has the exclusive right to use the design for a period of 15 years, which gives them a significant competitive advantage over others;
- The owner is protected by law in case of infringement of their registered industrial design rights;
- During the 15-year period of exclusivity, the owner can transfer or license the design to a third party for a fee, which can bring economic benefits to the owner.
5. Who Has the Right to Register an Industrial Design in Vietnam?
In some cases, the creator of an industrial design may not be the one who has the right to register it. This may sound illogical, but it is actually not illegal. Specifically, Article 86 of the consolidated document 19/VBHN-VPQH in 2013 stipulates that the following entities are eligible to register an industrial design:
- The author who created the industrial design with their own effort and expense;
- An individual or organization that invested in the author in the form of commissioning or hiring (except in cases where there is a different agreement);
- In the case where the industrial design is created with the state's investment of all material and technical means and funds, the state has the right to register or another agency representing the state shall register;
- If multiple individuals or organizations contribute funds and material means, these individuals or organizations also have the right to register when agreed upon by all other individuals;
- Other individuals or organizations that are transferred the right to register by the holder of the right to register in the form of a contract or inheritance in accordance with legal regulations.
Therefore, the entities eligible for industrial design protection that fall into one of the above cases have the right to submit an application to the competent state agency to request industrial design protection.
6. The Right to File an Industrial Design Application in Vietnam
The right to file an industrial design application in Vietnam is governed by the Law on Intellectual Property.
- The author or their legal successor has the primary right to file an application.
- If the industrial design is created while the author is performing a task assigned by an organization they are a member of, or if the design is primarily created using the organization's financial resources and equipment, the right to file the application belongs to:
- The organization that assigned the task; or
- The organization that provided the financial resources and equipment to the author.
- If the industrial design is created by the author under a work-for-hire contract with another organization or individual, and the contract does not contain any other agreement, the right to file the application belongs to:
- The organization or individual that signed the contract with the author.
- The applicant of an industrial design can transfer the right to file the application, including an application that has already been filed, to another individual, legal entity, or other entity through a written transfer of the right to file the application.
7. Guidelines for Industrial Design Registration in 2022
7.1. Industrial Design Registration Procedure
The industrial design registration procedure consists of the following steps:
Step 1: Determine the Eligibility of the Design for Registration
First, it is necessary to determine whether the design to be registered falls within the scope of protection for industrial designs. This will help decide whether or not to file an application.
Step 2: Classification and Search of the Design
Classification and search will help the applicant assess the registrability of the design before deciding to file an application.
Step 3: Prepare the Application File for Industrial Design Registration
After searching and concluding that the industrial design is registrable, the applicant will proceed to prepare the application file according to the information below.
Step 4: File the Application at the National Office of Intellectual Property (NOIP)
Filing the application should be prioritized as soon as possible to avoid the design losing its novelty and to secure the earliest priority date.
Step 5: Issuance of the Certificate of Industrial Design Registration
If the industrial design meets the conditions for protection, the NOIP will issue a notification to grant a certificate for the design. Otherwise, the NOIP will refuse to grant the certificate of registration.
7.2. Documents Required for Industrial Design Registration in Vietnam
To register an industrial design in Vietnam, you will need to prepare the following documents:
- Application Form for Grant of Industrial Design Certificate of Exclusive Right (Application Form) in the format prescribed by the National Office of Intellectual Property (NOIP);
- Description of the Industrial Design;
- Set of Photographs or Drawings of the Industrial Design;
- Documents Certifying the Legality of the Filing Party if the filing party is exercising the filing rights of another person (Certificate of Inheritance; Certificate or Agreement on Transfer of Filing Rights; Work Contract or Labor Contract), including one (1) copy;
- Documents Certifying the Ownership of the Trademark, if the registered industrial design contains a trademark, including one (1) copy;
- Power of Attorney (if necessary);
- Copy of the First Application or Document Certifying the Display at an Exhibition, if the application claims priority rights under an international treaty, including one (1) copy;
- Voucher for Payment of Application Fee and Publication Fee, including one (1) copy;
- Vietnamese Translation of the Description of the Industrial Design, if the application already includes an English/French/Russian version of the document;
- Documents Certifying the Ownership of the Industrial Design (if any);
- Original Power of Attorney, if the application already includes a copy;
- Copy of the First Application or Document Certifying the Display at an Exhibition, including the Vietnamese translation.
7.3. Notes when submitting an industrial design application:
Description of the industrial design:
- Must be complete and clearly presents the nature of the industrial design.
- Must be consistent with the set of photographs or drawings.
- Include the following information:
- Name of the product or part of the product bearing the industrial design.
- International Classification for Industrial Designs (Locarno Classification) index.
- Field of use of the product bearing the industrial design.
- Similar known industrial designs.
- List of photographs or drawings.
- The nature of the industrial design, clearly stating the basic design features of the industrial design that is requested for protection and that are different from known similar industrial designs.
Set of photographs or drawings:
- Must fully represent the nature of the industrial design as described.
- Determine the scope (volume) of protection for that industrial design.
- Photographs/drawings must be clear and sharp.
- Must not include products other than the product bearing the industrial design that is requested for protection.
Requirements for photographs/drawings:
- All photographs/drawings must be in the same proportion.
- The size of each photograph/drawing must not be smaller than (90 x 120) mm and not larger than (210 x 297) mm.
- Other considerations:
- Assess whether the registered design is eligible for protection under the Intellectual Property Law.
- Assess whether the registered design has novelty, creative level and industrial applicability.
- Assess whether anyone has previously filed an application for the same design.
7.4. Steps for Examining an Industrial Design Application
The Intellectual Property Office of Vietnam (IPVN) will conduct the examination of an industrial design application in the following specific steps:
Step 1: Examination of the Form of the Industrial Design Application
This involves assessing the validity of the application based on formal requirements, excluded subject matter, and the right to file the application. The conclusion will be whether the application is valid or invalid. The time for formal examination is 1-2 months from the filing date.
Step 2: Publication of a Valid Industrial Design Application
An industrial design application accepted as valid will be published in the IP Gazette within 2 months from the date of acceptance. The content of the published ID application includes information related to the valid application stated in the notice of acceptance, and a set of photographs or drawings of the industrial design.
Step 3: Examination of the Content of the Industrial Design Application
An industrial design application that has been recognized as valid will be examined for its content to assess the possibility of granting an ID Certificate of Exclusive Right for the subject matter mentioned in the application, in accordance with the protection conditions and to determine the corresponding scope of protection. The time for substantive examination of an ID application is 8-15 months from the date of publication of the application.
Step 4: Granting of a Certificate of Protection or Rejection of an Industrial Design Application
After completing the substantive examination, if the industrial design application meets the protection requirements, the owner will pay the industrial design registration fee to receive the certificate of protection. If the application does not meet the protection requirements, the IPVN will issue a notice of refusal to grant a certificate of protection.
7.5. Time for Industrial Design Registration
The time for industrial design registration will depend on the time taken for each stage of the application examination process. Specifically, it is as follows:
- Time for formal examination of the application: 1-2 months
- Time for publication of the application in the IP Gazette: 2 months
- Time for substantive examination of the ID application: 8-15 months
- Time for issuing the Certificate of Registration: 1-2 months
8. Complaints and Dispute Resolution Regarding the Granting of Industrial Design Protection Certificates
Who Can File a Complaint?
- The applicant has the right to complain about the refusal to accept the application for an industrial design protection certificate, or the refusal to grant the certificate.
- Any third party can also complain about the decision to grant the certificate and must pay a complaint fee as prescribed.
Complaint Procedure:
- The complaint must be made in writing. It must clearly state the name and address of the complainant; the number, date, and content of the Decision or Notice being appealed; the number of the application for the protection certificate concerned; the name of the subject matter to be protected as stated in the application; the content, arguments, and supporting evidence for the complaint; and the specific request for the correction or cancellation of the Decision or related conclusion.
- The complaint must be submitted to the Intellectual Property Office within 03 months from the date of the Decision or Notice. Complaints submitted after the above deadline will not be considered.
- Within 30 days from the date of receiving the complaint, the Intellectual Property Office must issue a written response to the Complainant.
- If the Complainant disagrees with the response of the Intellectual Property Office, they have the right to appeal to the Minister of Science and Technology or to file a lawsuit in accordance with administrative litigation procedures. In the case of an appeal to the Minister of Science and Technology, the Minister of Science and Technology must notify the Complainant of the results of the appeal within 60 days from the date of receiving the appeal.
9. How to Search for Industrial Designs
Sources:
- Database of the National Office of Intellectual Property (NOIP) of Vietnam
- Databases of intellectual property offices in other countries
- Commercial databases such as Questel Orbit and Thomson Innovation
Search Methods:
- By Locarno classification
- By design name
- By name of applicant
- By application number
Search Tools:
- Website of the NOIP: https://thuvienphapluat.vn/
- Websites of other intellectual property offices
- Commercial databases
Search Criteria:
- Industrial design name
- Locarno classification
- Name of the holder of the title of protection
- Application number
Search Results:
The search results will include information about the industrial designs that match the search criteria, including:
- Total number of results found
- Design name
- Applicant name
- Application number
- Registration date
- Status
10. What is an industrial design registration fee?
An industrial design registration fee is a payment that an applicant must submit to the registration authority. Before applying for industrial design registration, it is important for clients to understand the associated costs.
Understanding these costs allows clients to make informed decisions and prepare accordingly.
The cost of industrial design registration depends on several factors:
- The country where the application is filed (each country has its own fee structure)
- The number of designs being registered
- The number of countries where the client wants to protect the design
- The service fee charged by the authorized company handling the registration on the client's behalf
- The renewal fee for industrial design (applicable when the design needs to be renewed)
- Other miscellaneous costs (depending on the specific case)
The basic cost of registering an industrial design typically includes the following:
- Application fee: 150,000 VND
- Industrial design classification fee: 100,000 VND per classification
- Examination fee: 700,000 VND per object
- Publication fee: 120,000 VND
- Publication fee from the second image onwards: 60,000 VND per image
- Search fee for information to serve the examination process: 480,000 VND per object
- Examination fee for claiming priority right (if any): 600,000 VND per priority application
11. Trademark Registration Services by Thien Di
We offer various trademark registration services tailored to the needs, preferences, and capabilities of each client. Therefore, it is crucial for clients to clearly explain their difficulties, current issues, or concerns when contacting us for service consultation. Only then can our lawyers and legal experts provide the most accurate advice, guidance, and quotes.
Typically, when using our trademark registration service, clients will be provided with basic knowledge by our lawyers, including concepts according to the Intellectual Property Law, conditions, necessary documents for registration, time and cost. As a result, clients will have a better understanding of the process of registering exclusive protection for the appearance of their products.
So, what is the trademark registration process at Thien Di?
Pre-registration consultation on all related issues
Consulting and guiding clients in preparing necessary information and documents for registration
Drafting trademark registration dossiers and submitting them to clients for reference
Submitting the application for publication and carrying out all necessary legal procedures at the Intellectual Property Office
Receiving the Certificate of Trademark Registration and submitting it to clients for reference and keeping
Consulting on arising issues (if any) after completing the work
12. Thien Di is the unit that has successfully registered over 1,000 trademarks
We have helped over 1,000 trademark owners obtain trademark registration certificates to quickly bring their products to market and seize opportunities.
We provide comprehensive consulting services from business establishment, product quality announcement, trademark registration, industrial design registration, to trademark infringement handling support services, helping Clients to focus on business and develop their companies with peace of mind.
Contact us now for free consultation support.
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THIEN DI TRADING SERVICES COMPANY LIMITED
Address: No. 36 Street A4, Ward 12, Tan Binh District, Ho Chi Minh City
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