The Hague Agreement concerning the International Registration of Industrial Designs offically came into force in Vietnam on January 1, 2020. Vietnam’s accession to the Geneva Act of July 2, 1999 allowed natural persons or legal entities of the Contracting Parties to the Hague Agreement (hereinafter “Hague system users“) to designate Vietnam in international applications filed under the Geneva Act of 1999.
The first year of Hague implementation, the number of international applications designated Viet Nam is 174, including 328 industrial designs.
Under current Law and Practice, the Intellectual Property Office of Vietnam (IP Vietnam) has adopted a design registration system that requires substantive examination, meaning that the substantive examination will be conducted in terms of the design patentability (novelty, inventiveness & industrial applicability).
Following on from our previous article on Notes for Hague System Users to Designate Vietnam – Part I (http://iphouse.vn/notes-for-hague-system-users-to-designate-vietnam/), this piece functions to further provide details with respect to common notifications of refusal which are issued by IP Vietnam. The result is in principle based on one-year period.
1. The very first common notification of refusal: Deficiency of the description
Legal basis
- Article 103 of the Intellectual Property Law of Viet Nam
Grounds for refusal
Vietnam made the declaration referred to in Article 5(2)(a) of the 1999 Act, where Viet Nam is designated, an international design application shall contain a brief description of the characteristic features of the design, pursuant to Article 5(2)(b)(ii). In accordance with the declaration, IP VIETNAM has objected many applications due to the descriptions deficiency based on Article 103 of the Intellectual Property Law.
One of the most common grounds for refusal
This ground for refusal is very common as majority of international applications under the Hague is not fulfilled the requirement of the description set forth in the Article 103.
2. Deficiency of the drawings/photos
Legal basis
- Article 103 of the Intellectual Property Law of Viet Nam
- Art 33.6 of the Circular No. 01/2017/TT-BKHCN, revised by the Circular No. 16/2016/TT-BKHCN
Grounds for refusal
The country made the declaration in relation to drawings/photos of the industrial design referred to in Rule 9(3) of the Common Regulations under the 1999 Act & the 1960 Act of the Hague Agreement, whereby where the product which constitutes the industrial design is three-dimensional, a perspective view of the industrial design is required.
IP Vietnam may however refuse the application on the ground of not being sufficient to fully disclose the industrial design under Rule 9(4) of the Hague Agreement if other views, especially six orthogonal views (front, back, top, bottom, right side and left side views), are not provided.
The above-mentioned requirement is quite unique and very rarely adopted by other countries and many international applications have been refused for this reason. The guidelines to overcome such refusal is nevertheless provided in the Office Action from time to time.
Common grounds for refusal due to drawings/photos deficiency
3. Multiple designs in a single design application
Legal basis
- Article 101 of the Intellectual Property Law of Viet Nam
- Art 33.2 (a) of the Circular No. 01/2017/TT-BKHCN, revised by the Circular No. 16/2016/TT-BKHCN
Grounds for refusal
Vietnam made the declaration referred to in Article 13(1) of the 1999 Act, whereby, in accordance with the legislation of Viet Nam, only one independent and distinct design may be claimed in a single international application, except that:
(i) designs that are the subject of the same international application must belong to the same set or composition of items and conform to a requirement of unity of design, unity of use or accompaniment of each other in use, or
(ii) a design may be accompanied by single or multiple options that are variations of that design and which must conform to a requirement of unity of design and be insignificantly different from that design;
In the light of the above exceptions, the inclusion of multiple designs in a single design application is, to some extent, not permitted (restriction requirement will be issued accordingly) and divisional application(s) may therefore be required.
In other words, requiring an application for registration of only one industrial design is adopted, except where the application is submitted for multiple variants* the same industrial design or for a set of products.
Grounds for refusal due to multiple designs in a single design application
Again, the guidelines to overcome such refusal is provided in the Office Action from time to time.
(*) Designs that do not differ substantially from one another (i.e. minor variations)
4. Partial industrial design protection mechanism
Legal basis
- Art 33.2 (b) of the Circular No. 01/2017/TT-BKHCN, revised by the Circular No. 16/2016/TT-BKHCN
Grounds for refusal
Under current Law and Practice in Vietnam, partial industrial design protection has NOT been allowed yet. Further more, notification of refusal shall be issued if the reproductions and/or the description include the disclaimer.
In fact, the partial designs may be included:
- by broken lines (the design of a product depicted by both continuous lines and broken lines, in which parts depicted by continuous lines are to be claimed); and/or
- by a disclaimer in the reproductions and/or the description
Grounds for refusal due to impermission of partial industrial design protection
IPHOUSE & ASSOCIATES is incharge of the article development.
All rights reserved. Any copying, reproduction or distribution of the article without permission of the author is strictly prohibited.
Any of the above general information is not legal advice. Should clients need any further information on legal IP matters, please contact us at:
Dao Danh Phuoc (Mr.)
Head of Patent and Design Department – IPHOUSE & ASSOCIATES
Phone: (+84) 967742458 (direct)
Email: daodanhphuoc@iphouse.vn
Website: http://iphouse.vn/