With the aim of assisting esteemed clients in successfully and quickly registering industrial design, we are pleased to introduce the new and updated regulations in 2023 on industrial design registration in Vietnam as follows:

What is an industrial design?

An industrial design is the external appearance of a product or part for assembly into a complex product, represented by shapes, lines, colors, or a combination of these elements and visible in the process of use or exploiting the utility of a product or a complex product.

The product bearing an industrial design means any product, tool, equipment, vehicle, etc. in all fields, with a specific structure and function, produced and sold on the market.

Examples:

Some industrial designs have been successfully registered by ELITE for customers

What is the registration of industrial design?

Industrial design registration means that the industrial design owner carries out procedures for filing an industrial design application at the Intellectual Property Office of Vietnam (VNIPO) to obtain an industrial design patent, recognizing the ownership of the industrial design exclusive ownership of industrial designs to owners throughout the territory of Vietnam for a certain time. According to the provisions (Articles 123, 124, 125 of the IP Law), after being granted an industrial design patent (Design Patent), the Design Patent holder has the following exclusive rights:

• Manufacturing, trading, exporting, and importing products containing the protected industrial design;
• Transporting, storing, advertising, or offering products containing the protected industrial design;
• Industrial design licensing: leasing the protected industrial design to a third party for production;
• Assignment (sale) of the protected industrial design;
• Contributing to business capital equal to the value of the protected industrial design.

Registration of exclusive protection for product industrial designs becomes especially important and necessary in the context of a very fiercely competitive market. Industrial design registration establishes a competitive advantage for businesses in the market, while also safeguarding the design from infringements and design “theft”.

Who has the right to file an industrial design application for registration?

According to Article 86 of the Law on Intellectual Property, amended and supplemented in 2022, the following organizations and individuals have the right to register industrial design protection:

• The author or the lawful successor of the author who creates an industrial design using their effort and expense;
• Organizations or individuals who invest funds and material resources for the author through assignment or employment, except in cases where the parties have agreed otherwise.

Why do you have to register an industrial design?

The registration of industrial design protection holds 04 significant implications for businesses, as follows:

• (i) Firstly, industrial design can only be legally recognized and protected by the law based on registration with the competent State authority (Vietnam IP Office). Registration of industrial designs grants businesses exclusive legal ownership rights over the industrial design throughout the territory of Vietnam. Therefore, businesses need to acknowledge the importance of protecting industrial designs and proceed with registration as early as possible.
• (ii) Secondly, registering industrial design protection establishes a legal tool for competition in the market and serves as an effective marketing tool. It aims to prevent copying or imitation by competitors, thereby becoming an effective marketing instrument to enhance your competitive position in the market. This is particularly relevant for technology-related products such as mobile devices, computer software interfaces, automobiles, pens, cosmetic containers, and perfume bottles.
• (iii) Thirdly, registering industrial design protection stimulates sales volume and increases the value of your products in the market. Businesses should note that when your products have a beautiful design that is exclusively protected and cannot be copied by any competitors, they become easier to sell, leading to increased revenue.
• (iv) Importantly, the fourth implication is that you have the right and confidence to set higher prices for your products compared to competitors. This is because only your business has the exclusive right to produce and sell such aesthetically appealing and useful products in the market.

What are the conditions for industrial design protection?

Industrial design will be protected when it fulfills the following conditions:

• √ Having Novelty: The industrial design must have significant differences from any industrial designs that have been publicly disclosed through use, described in writing, or in any other form, either domestically or internationally.
• √ Having Creativity (inventive steps): Industrial design must not be easily created by a person with average knowledge in the corresponding field.
• √ Having Industrial applicability: Industrial design is considered to have industrial applicability if it can be used as a model for mass production of products with the external appearance defined by that industrial design, using industrial or craft methods.

Which types of industrial designs are protected according to the regulations?

The types of industrial designs protected under the provisions of the Law on Intellectual Property include:

An industrial design is the outer appearance of a product or a part of a complex product, expressed through shapes, lines, colors, or a combination thereof, and visible during the exploitation of the product or the complex product.

For example, the packaging of a milk carton, the outer shape of a bottle, the outer shape of a ballpoint pen, parts of a motorcycle fairing, etc.

Which objects are not eligible for industrial design exclusive protection registration?

Not all types of products can be registered for industrial design protection, according to the provisions of the Law on Intellectual Property of Vietnam. The following products will not be eligible for industrial design protection registration:

1. The outer shape of a product is dictated by its technical function.
2. The outer shape of civil or industrial construction
3. Shapes of products that are not visible during the use of the product.

What are the steps for registering industrial design protection in Vietnam?

The procedure for registering industrial design protection includes the following steps:

Step 1: Designing and selecting the industrial design to be registered for protection

The first step in registering an industrial design is to design and select the industrial design. When designing an industrial design, it is important to note that there are cases that may not be protected as an industrial design, including:

1. The outer shape of a product is dictated by its technical function.
2. The outer shape of civil or industrial construction works.
3. Shapes of products that are not visible during the use of the product.

Step 2: Preliminary evaluation of the possibility of registering the industrial design

After designing and selecting the industrial design to be registered, it is advisable to conduct a preliminary evaluation of the possibility of registering the design before submitting the formal application for registration.

ELITE Law Firm is ready to provide FREE preliminary consultation and evaluation of the possibility of registering industrial design upon request.

Step 3: Research on the possibility of registering the industrial design

One of the most important conditions for registering an industrial design is novelty (the design has not been disclosed in any form before the application date). Therefore, after applying for industrial design registration to the Vietnam Intellectual Property Office (VNIPO), clients should refrain from widespread disclosure (advertising, exhibitions, production, and sale of products containing the industrial design).

Note: Researching the possibility of registering the industrial design is not mandatory but essential to assess the chances of successful registration and to save time and costs for clients. If requested, ELITE Law Firm is ready to assist Clients in researching and evaluating the possibility of protection before submitting the application.

Step 4: Submitting the industrial design registration application

After going through the procedure of researching the possibility of registering the industrial design, customers will proceed to submit the industrial design registration application to the relevant authority to obtain the earliest priority date.

Step 5: Evaluation of the industrial design registration application

Under regulations of IP Law, after submitting the design application, the application will go through specific evaluation stages as follows:

(i) Formality examination: 1 month;

(ii) Publication of the design application in the industrial property gazette: within 2 months from the date of acceptance of the valid application;

(iii) Substantive examination of the application: not exceeding 7 months from the date of publication;

Note: In practice, the registration process for industrial design can take approximately 12-15 months due to the backlog of applications at the National Office of Intellectual Property.

Step 6: The VNIPO issues a Decision on granting/rejecting the protection certificate (Design Patent)

• During the examination process in Step 5, if the registered design does not meet the requirements for protection, VNIPO will issue a decision rejecting the grant of the protection certificate.
• If the registered design meets the requirements for protection, and the applicant submits the required granting fees in full and on time, the VNIPO will issue a Decision granting the Industrial Design Patent, recording it in the National Register of Industrial Designs, and publishing it in the Industrial Property Gazette.

Step 7: Monitoring the validity of the industrial design Patent

• If instructed, our ELITE Law Firm will monitor the validity of the industrial design Patent and notifies the client of the renewal deadline. As per regulations, the industrial design Patent is valid for 5 years from the filing date (priority date) and can be renewed twice, with each renewal having a validity of 5 years.
• The owner of the industrial design Patent must submit a request for renewal within 6 months before the expiration date as stipulated. The grace period for late renewal requests is 6 months after the expiration date of the Patent.

What is an industrial design patent?

The industrial design Patent is a certificate issued by the VNIPO to the applicant to acknowledge their lawful ownership rights over the registered and protected industrial design.

The basic information included in the industrial design protection certificate typically consists of:

• (i) Owner information: Name, address of the owner;
• (ii) Application date, application number; certificate number, certificate issuance date;
• (iii) Duration of the certificate’s validity, etc.
• (iv) Drawings/Images of the registered industrial design:

Note: During business operations, if any changes occur in the information stated on the industrial design Patent, such as company address (which often changes for legal entities), the patent owner must record these changes on the industrial design Patent at the VNIPO

What does the industrial design registration dossier include?

The industrial design registration dossier includes:

1. 01 file of industrial design images/drawings or 05 sets of clear photographs or drawings of the industrial design as prescribed (each set includes overall photos/drawings, front view, back view, left view, right view, top view, and bottom view);
2. Description of the industrial design;
3. Power of Attorney from the applicant to the IP agent (if submitted through an IP Agent);
4. Priority right request documents (if applicable);
5. Receipt of application fee payment.

Sample form of registration for industrial design

Where do I need to file an industrial design application?

Currently, NOIP accepts both direct (offline) filing and online registration via the NOIP’s web portal, specifically as follows:

Filing an industrial design registration application directly with a paper application

The applicant may submit an industrial design registration dossier directly or send it by post to the NOIP at the following address:

in Hanoi

Vietnam Intellectual Property Office (VNIPO)

Address: No. 384-386 Nguyen Trai, Thanh Xuan Trung, Thanh Xuan district, Hanoi

Phone: 024 3858 3069

in Ho Chi Minh City

Representative Office of VNIPO in Ho Chi Minh City

Address: 8A/1 Nguyen Canh Chan, Nguyen Cu Trinh Ward, District 1, Ho Chi Minh City – Phone: (08) 3920 8483 – 3920 8485

in Da Nang:

Representative Office of VNIPO in Da Nang

Address: 26 Nguyen Chi Thanh, Hai Chau District, Da Nang City.

Phone: 0511.3889955 – Phone: (0511) 3889955; Mobile Phone: 0903502566

Online application filing

The applicant needs to have a digital certificate and digital signature, register an account on the Online Application Receiving System, and have an account approved by the VNIPO to perform IPR registration transactions at the portal website of the VNIPO at the address: http://dvctt.noip.gov.vn:8888/HomePage.do 

How long is the validity of an industrial design patent in Vietnam?

According to regulations of the IP Law, an industrial design patent granted by the VNIPO takes effect from the granting date and is valid for 5 years from the date of filing the application.

A Patent for Industrial Design is valid for 5 years from the filing date, renewable twice, each time for 5 years. The validity of the industrial design patent can be renewed twice consecutively, with each term lasting 5 years.

Therefore, the maximum validity of an industrial design patent is 15 years from the filing date.

Industrial design registration fees

Industrial design registration fees in Vietnam include:

1. Official Fee to Vietnam Intellectual Property Office;
2. Attorney Fee if the applicants use registration services by an IP agent.

We would like to inform you that the national fees for filing industrial design applications at VNIPO are as follows:

I. FILLING

Filing a design application (for single embodiment): 6.67$

Claiming each priority right: 26.67$

Publication of the application:

 – For bibliographic data with one drawing: 5.33$

–  For each further drawing (if any) 2.67$

Classification of design for each class (if any): 4.45$

II. EXAMINATION

1 Substantive examination of design application

    1.1 – for the first design in case of a single application: 52.45$

    1.2 – for each further embodiment in case of a multi-design application (if any): 52.45$

III. PATENT ISSUANCE

1 Grant of Patent for Design

    1.1 – for the first design in case of a single design application: 5.33$

    1.2 – for each further embodiment in case of a multi-design application (if any): 4.45$

2. Publication & Registration of Patent for Design: 10.67$

    2.1 – for each further drawing (if any): 2.67$

As for the service fee, we will advise you in detail about the competitive service fee when required for each specific case.

Tips for industrial design registration successfully and quickly in Vietnam

Tip 1: Search and evaluate the eligibility for granting protection of industrial designs before filing an application

Before filing a design application, clients should conduct an availability and registrability search and evaluate the chance of registration probability because this step will help you prevent risks: such as using industrial designs shall be regarded as an infringement of the rights of owners of industrial designs.

Tip 2: Choose the appropriate type of protection

In principle, a new industrial design of a product can be protected under the forms/subjects of an industrial design patent and/or copyrights for an applied artwork and/or a trademark. Some industrial designs can be protected simultaneously under multiple forms/types of protection, such as industrial design, copyright, and/or trademark. Product labels and packaging are typical examples in this case. Thus, clients should select the appropriate type of protection for their industrial design to ensure the best possible safety of their intellectual property rights. There are different types of protection available, such as industrial design registration, copyright registration, and trademark registration.

Tip 3: Clear understanding of the procedures for industrial design protection registration in Vietnam

To have a clear understanding of the costs and timelines involved in the registration process and proactively plan their business strategies and market new products while safeguarding their rights and gaining a competitive advantage in the market, clients should thoroughly familiarize themselves with registering exclusive protection for industrial designs. Understanding the registration process also helps clients to clearly understand their intellectual property rights and the purpose of protection, thereby saving time and costs and aligning with their business plans.

Complaints and settlement of complaints related to industrial design registration procedures in Vietnam

Article 119a of the IP Law provides for complaints and settlement of complaints related to industrial design registration procedures in Vietnam as follows:

1. The applicant and individuals or organizations directly related to the decision or notification regarding the processing of applications for establishing IP rights, maintaining, renewal, amending, terminating, or canceling the validity of industrial design patents, or registration of industrial property transfer agreements issued by the State Management Agency for industrial property (the VNIPO) have the right to file complaints with the VNIPO or initiate legal proceedings at a competent court according to the provisions of this Law and other relevant laws.
2. Vietnamese organizations and individuals, foreign individuals permanently residing in Vietnam, and foreign organizations and individuals having production and business establishments in Vietnam shall file complaints directly or through their legal representatives. law in Vietnam. Foreign individuals not permanently residing in Vietnam, foreign organizations, and individuals without production or business establishments in Vietnam shall file complaints through their legal representatives in Vietnam.
3. Complaint contents must be presented in a complaint form, clearly stating the full name and address of the complainant; number, signing date, the content of the complained decision or notice; complaint content, arguments, and evidence to prove the complaint; a specific proposal to correct or rescind the relevant decision or notice. Complaints are filed in paper form or electronically under the online filing system.
4. In case the complaint is related to the right of registration or other matters requiring re-examination, the complainant must pay the re-examination fee.
5. The time limit for complaint settlement shall comply with the provisions of the law on complaints. In case the State Management Agency in charge of industrial property rights (the VNIPO) re-examines the cases specified in Clause 4 of this Article or the complainant amends and supplements the complaint file, the time for re-examination, the time limit for amending and supplementing the complaint dossier shall not be included in the time limit for complaint settlement according to the provisions of law on complaints. The time limit for re-examination shall comply with the provisions of Clause 3, Article 119 of this Law.
6. Complaints and settlement of complaints not specified in this Article shall comply with the provisions of the law on complaints.

Principle of priority date when registering industrial designs

In case there are many applications by different people for registration of industrial designs that are identical or not significantly different from each other, an industrial design patent may only be granted to a valid application with a priority date or earliest filing date among those that meet the conditions for a protection patent.

Our professional service for the registration of Industrial designs and enforcement of design patent rights in Vietnam

ELITE LAW FIRM with its Team of Lawyers and Associates with in-depth knowledge in the field of IP, is ready to support clients in consulting and evaluating the ability to protect industrial design applications in Vietnam, Laos, Cambodia, and other countries in the world. We have more than 20 years of experience in registration, protecting and dealing with infringement of intellectual property rights in Vietnam. We are proud and happy to assist a lot of the world’s leading prestigious Brands, including Fortune 500 companies, such as LG Corp., LG Electronics, LG Household & Healthcare Ltd., Thefaceshop, The Wonderful Company, Accor Group, Smilegate, M&K Holdings, Tokyo Life, Toplist, and more…

Our process for advising on the registration of your industrial designs consists of the following steps

01. Please let us know your industrial design registration requirements and purposes so that we can understand and advise you on the best solution;

02. We will advise on fees, procedures and conduct a search, evaluate your industrial design protection ability, and check the validity of the dossier before submitting the application for registration;

03. When your design is capable of protection, we will prepare the application file for registration of the design quickly and accurately according to the customer’s request;

04. During the application examination process, we will regularly monitor and update the application status for clients to correct arising errors (if any);

05. Keep confidential information of applications and clients, we use our smart software CONSHACLO (® TM) to handle and manage applications;

06. During the application processing, we always keep in touch, and exchange information to best meet the wishes of clients.

Tags: Industrial Design, Notable Articles