Procedure for Registering an Industrial Design in Vietnam

Industrial design registration is crucial in today’s increasingly competitive market. Every new industrial design is the result of creativity and is a valuable asset, but sometimes businesses and owners overlook the step of registering ownership rights for this precious asset. Registering an industrial design will create a strong “wall,” protecting the intellectual product—the industrial design—from infringing acts such as copying and imitation.

1. What is an Industrial Design?

An industrial design is the external appearance of a product, represented by lines, three-dimensional shapes, colors, or a combination of these elements. Industrial design is one of the subjects of intellectual property protection in Vietnam.

Once a protection title is granted, the owner is allowed to exclusively use the design in Vietnam for a maximum of 15 years (the protection period is 5 years and can be renewed twice, with each renewal lasting 5 years).

2. What are the Conditions for Industrial Design Registration?

What are the conditions for industrial design registration? According to the Law on Intellectual Property of Vietnam 2005, to be registered for protection (granted a certificate of exclusive registration), an industrial design must meet the following conditions:

2.1. Novelty of the Industrial Design

The design has not been publicly disclosed before the filing date (meaning the owner must file the application before introducing the industrial design to the market for circulation).

2.2. Inventive Step of the Industrial Design

The industrial design must have an inventive step that is distinctly different from other industrial designs already available on the market (it must not be identical or confusingly similar to existing products).

2.3. Industrial Applicability

It must be possible to manufacture (produce) identical products by industrial or handicraft methods.

These are the three basic conditions for an industrial design to be eligible for protection.

Note: The following subjects cannot be protected as industrial designs:

• The external appearance of a product that is dictated by its technical characteristics.
• The external appearance of a civil or industrial construction work.
• The appearance of a product that is not visible during its use.
• Objects that are contrary to social ethics, public order, or harmful to national defense and security.

3. What is a Certificate of Industrial Design Exclusive Right?

A Certificate of Industrial Design Exclusive Right is a certificate issued by the NOIP to the applicant to recognize their legal ownership rights.

The basic information on an industrial design protection title includes:

(i) Owner’s information: Name, address of the owner. (ii) Filing date, application number; protection title number, issuance date of the protection title. (iii) Information about the registered product design. (iv) Validity period of the title, etc.

Note: If any information on the industrial design registration certificate changes during its validity, for example, the owner’s address (most common case for legal entities with frequent address changes), the owner must carry out the procedure to update the information recorded on the protection title.

4. Why File an Industrial Design Application?

There are many reasons to file an industrial design application. This article will outline some basic ones:

• The rights to an industrial design only arise upon filing the application and being granted a registration certificate.
• The owner has the exclusive right to use the design for 15 years, which provides a significant competitive advantage over others.
• The owner is protected by law against acts of infringement on the registered industrial design.
• During the 15-year exclusive period, the owner can transfer or license the use of the design to a third party for a fee, which brings economic benefits to the owner.

5. Who Has the Right to Register an Industrial Design?

Sometimes, the creator of an industrial design is not the person who has the right to register the industrial design. This may sound unreasonable, but it is in fact consistent with legal regulations. Specifically, Article 86 of the Intellectual Property Law 2005 stipulates that the following entities have the right to register an industrial design:

• The author who created the industrial design using their own labor and expenses.
• The individual/organization that invested funds for the author in the form of a work assignment or contract for hire (unless otherwise agreed).
• In cases where the industrial design is created with full state investment in material facilities, technical means, and funds, the state has the right to register, or another state agency can register on its behalf.
• If multiple individuals/organizations contribute funds and material facilities, these individuals/organizations also have the right to register when all other individuals agree.
• Other individuals/organizations to whom the right to file has been transferred by the person with the right to register through a contract or inheritance as stipulated by law.

Therefore, entities falling into one of the above categories have the right to file an application with the competent state authority to request industrial design protection.

6. Right to File an Industrial Design Application

The right to file an application shall be exercised in accordance with the provisions of the Intellectual Property Law of Vietnam, specifically as follows:

• The right to file a design application belongs, first and foremost, to the author or the author’s legal heir.
• If the industrial design is created when the author performs a task assigned by an organization of which the author is a member, or is created primarily by using the funds and material facilities of an organization, the right to file the industrial design application belongs to the organization that assigned the task or provided the funds and material facilities to the author.
• If the design is created by the author under a contract for hire with another organization or individual, and the contract does not contain any other agreement, the right to file the industrial design 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, including a filed application, to an individual, legal entity, or other entity through a written transfer of the right to file.

7. Guidelines for Industrial Design Registration Procedures and Dossier

7.1. Industrial Design Registration Procedure

The procedure for industrial design registration is carried out through the following steps:

Step 1: Identify the subject of the industrial design registration First, it is necessary to determine whether the subject to be registered falls within the scope of industrial design protection. This determines whether to file a registration application.

Step 2: Classification and search of the design Classification and search will help the applicant assess the possibility of registration before deciding to file the application.

Step 3: Prepare the industrial design registration dossier After searching and concluding that the industrial design is likely to be registered, the applicant will prepare the registration dossier based on the information below.

Step 4: File the application with the National Office of Intellectual Property (NOIP) Filing the application as early as possible is prioritized to ensure the design does not lose its novelty and to secure the earliest priority date.

Step 5: Grant a certificate of industrial design registration If the industrial design meets the conditions for protection, the NOIP will issue a notice of grant for the protection title. Otherwise, the NOIP will issue a refusal to grant the registration certificate.

7.2. What does an Industrial Design Application Dossier include?

To register an industrial design, applicants must prepare the following documents:

• A declaration requesting the grant of a Certificate of Industrial Design Exclusive Right.
• A description of the industrial design.
• A set of photographs or drawings of the industrial design.
• Documents confirming the legal right to file if the applicant is a successor of the right to file from another person (Certificate of Inheritance; Certificate or Agreement on the transfer of the right to file; Work Assignment Contract or Labor Contract), in one (1) copy.
• Documents confirming trademark ownership, if the industrial design contains a trademark, in one (1) copy.
• Power of Attorney (if necessary).
• Copy of the first application or a document certifying display at an exhibition, if the application claims priority rights under an international treaty, in one (1) copy.
• Proof of payment of the filing fee and publication fee, in one (1) copy.
• Vietnamese version of the industrial design description, if the dossier already contains an English/French/Russian version of that document.
• Documents confirming industrial design ownership (if any).
• Original Power of Attorney, if a copy was previously submitted.
• Copy of the first application or a document certifying display at an exhibition, including the Vietnamese translation.

7.3. Other Notes on Filing an Industrial Design Application

When filing an application, the owner should pay attention to the following issues in the industrial design application:

• The industrial design description must be full, clear, and consistent with the set of photographs or drawings, and include the following contents:
  • Name of the product or product part bearing the industrial design.
  • International Industrial Design Classification Index (according to the Locarno Agreement).
  • Field of use of the product bearing the industrial design.
  • Similar industrial designs already known.
  • List of photographs or drawings.
  • Nature of the industrial design, clearly stating the basic design features of the industrial design requested for protection that are different from known similar industrial designs.
• The set of photographs or drawings must fully represent the nature of the industrial design as described to define the scope of protection. The photographs/drawings must be clear and sharp. No other products should be mixed with the product bearing the industrial design requested for protection.
• All photographs/drawings must be in the same scale. The size of each photograph/drawing must not be smaller than (90 x 120) mm and not larger than (210 x 297) mm.
• Assess whether the registered design is a protectable subject under the IP Law.
• Assess whether the registered design has novelty, an inventive step, and industrial applicability.
• Assess whether anyone has filed an application for the intended design before.

7.4. Examination Steps for an Industrial Design Application

The examination steps for an industrial design application are carried out by the NOIP as follows:

Step 1: Formal Examination of the Industrial Design Application This involves assessing the validity of the application based on formal requirements, excluded subjects, the right to file, etc., to conclude whether the application is valid or invalid. The formal examination period is 1-2 months from the filing date.

Step 2: Publication of the Valid Industrial Design Application A valid industrial design application is published in the Industrial Property Official Gazette within 2 months from the date of acceptance as a valid application. The content of the publication includes information related to the valid application stated in the notice of acceptance and the set of photographs or drawings of the industrial design.

Step 3: Substantive Examination of the Industrial Design Application A valid industrial design application undergoes a substantive examination to assess the possibility of granting a Certificate of Industrial Design Exclusive Right for the subject matter specified in the application, based on protection conditions, and to determine the corresponding scope of protection. The substantive examination period is 8-15 months from the publication date of the application.

Step 4: Grant of Protection Title or Refusal of the 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 protection title. If the application does not meet the protection requirements, the NOIP will issue a notice of refusal to grant the protection title.

7.5. Timeframe for Industrial Design Registration

The timeframe for industrial design registration depends on the duration of the application examination stages, specifically:

• Formal examination: 1-2 months
• Publication in the Industrial Property Official Gazette: 2 months
• Substantive examination: 8-15 months
• Issuance of the registration certificate: 1-2 months

8. Appeal and Resolution of Appeals related to the Grant of an Industrial Design Protection Title

8.1. Persons with the Right to Appeal

– The applicant has the right to appeal the refusal to accept the application for an Industrial Design Protection Title or the refusal to grant a protection title.

– Any third party has the right to appeal the decision to grant a title and must pay the appeal fee as regulated.

8.2. Appeal Procedure

– The content of the appeal must be in writing, clearly stating the full name and address of the appellant; the number, date, and content of the decision or notice being appealed; the related application number for the protection title; the name of the subject matter to be protected in the application; the content, arguments, and evidence supporting the appeal; and a specific proposal for amending or revoking the relevant decision or conclusion.

– The appeal must be submitted to the NOIP within 03 months from the date the decision or notice is issued. Appeals filed after this deadline will not be considered.

– Within 30 days from the date of receiving the appeal, the NOIP must provide a written response to the appellant.

– If not satisfied with the NOIP’s response, the appellant has the right to appeal to the Minister of Science and Technology or initiate administrative litigation proceedings. In the case of an appeal to the Minister of Science and Technology, the Minister must notify the appellant of the resolution result within 60 days from the date the appeal is received.

9. How to Search for an Industrial Design

– Search Sources: There are many sources for searching. In Vietnam, you can use the electronic database of the NOIP or the intellectual property offices of other countries.

– Search Methods: By Locarno classification, design name, applicant name, etc.

Once you have accessed the search website, you need to create a search query for the industrial design. The search fields include:

• Industrial design name
• Locarno classification
• Owner’s name
• Application number, etc.

Depending on the need and necessity, you can choose the corresponding search fields. The search results include data about the designs corresponding to the selected fields, including the total number of results found.

10. Fees for Industrial Design Registration?

The industrial design registration fee is the amount the applicant must pay to the registration authority. Before intending to register an industrial design, clients often research the costs involved.

This is highly encouraged because it helps clients have a clear understanding of the information to make appropriate preparations and adjustments.

Currently, the cost of industrial design registration depends on:

• The country where the client registers (each country has a different cost calculation).
• The number of designs the client wants to register.
• The number of countries where the client wants to protect the design.
• The service fee for the authorized company acting on your behalf.
• The renewal fee for the industrial design (applicable at renewal time).
• Some other costs (depending on the specific case).

Basically, the cost to register one industrial design includes the following fees:

• Application filing fee: 150,000 VND
• Industrial design classification fee: 100,000 VND/01 classification
• Examination fee: 700,000 VND/01 subject
• Publication fee: 120,000 VND
• Publication fee for the 2nd drawing onwards: 60,000 VND/01 drawing
• Search fee for examination: 480,000 VND/01 subject
• Examination fee for priority claim (if any): 600,000 VND/01 priority application.

11. Industrial Design Registration Services of VN Law Firm

Depending on the needs, desires, and capabilities of each client, we provide different industrial design registration services. Therefore, it is important for clients to clearly state their concerns, problems, or interests when contacting us. Only then can our lawyers and legal specialists provide advice, guidance, and the most reasonable quotes.

Typically, when clients use our industrial design registration services, they receive basic knowledge from our lawyers on concepts under the Intellectual Property Law, conditions, necessary documents for registration, timeframe, and costs. This helps everyone better understand the exclusive protection registration for the external appearance of a product.

So, what is the industrial design registration process at VN Law Firm?

• Consultation on all related matters before registration.
• Advising and guiding the client on preparing the necessary information and documents for registration.
• Drafting the industrial design registration dossier and sending it to the client for review.
• Filing the dossier and carrying out all necessary legal procedures at the National Office of Intellectual Property.
• Receiving the industrial design registration certificate and transferring it to the client for review and safekeeping.
• Consulting on related issues that may arise after completing the work.