Southeast Asia IPR Series: Industrial Designs In Vietnam

18 October, 2015

 

Having looked at Vietnamese patent law earlier this week, we thought we’d round off the week with a look at how industrial designs are protected in Vietnam.

 

Industrial designs are important to any manufacturer who relies on the physical appearance of their products to attract customers and entice potential buyers to choose their offering over the competition.

 

As such, features protectable as industrial designs can be used both purely as a form of aesthetic enticement, as well as a way of identifying your products, helping them stand out amongst a myriad of similar goods.

 

What are industrial design patents?

 

Industrial design patents protect the specific appearance of a product, covering its three-dimensional configurations, lines, colours, or a combination of these elements. To be registerable as a patent in Vietnam, the industrial design must be new, i.e. not already disclosed to the public, creative, i.e. not easily created by a person with average knowledge in the relevant field taking into consideration existing, disclosed designs and have an industrial application i.e. usable as a model for mass manufacture. Vietnamese industrial design patents will not protect physical features of a product which serve a technical purpose however, nor do they protect the appearance of a civil or industrial construction work, or shapes of products which are not visible whilst the product is in use.

 

Protection of industrial design patents in Vietnam

 

In Vietnam, industrial design patent protection lasts 5 years from date of filing, with an option to extend for two more consecutive 5 year periods for a maximum of 15 years protection. During this period, the patent holder has the exclusive rights to exploit the design for economic gain, and control any production of the design by third parties. The owner may also assign or license these rights to others as he sees fit.

 

Obtaining industrial design patents in Vietnam

 

Any individual or organisation may register an industrial design in Vietnam, although those without a permanent production or trading establishment in the country must apply through a local lawful representative. All documents must be in Vietnamese, with the exception or power of attorney and evidence documents for right to register and priority right where appropriate. Other supporting documents may be submitted in other languages, but translations must be provided if requested.

 

As a party to the Paris Convention for the Protection of Industrial Property, Vietnam offers the ‘right of priority’ to applicants where the same filing has been made within the last 6 months in any other member state. Once registered, the patent protection will run from this priority date, rather than the actual filing date in Vietnam.

Applications must be filed with the National Office of Intellectual Property of Vietnam (NOIP), and the application dossier must contain the following:

 

• Request made using the prescribed form supplied on the NOIP website[1]
• Documents, samples, information identifying the design (e.g. a set of photos and/or drawings and a description of the design)
• Power of attorney, where the application is filed through a representative
• Documents evidencing the right to registration, where acquired by the applicant from a third party
• Documents evidencing the priority right and date, where appropriate
• Relevant fees and charges

 

The basic filing fee for an industrial design patent for applications are between EUR 5-7 plus legal/representative fees.

 

Enforcement

 

Should your industrial design be infringed in Vietnam, there are two main avenues of enforcement which can be pursued; administrative actions, or civil litigation. This being said however, private mediation via legal professionals is often effective and should be considered as a viable first action in the event of an infringement.

 

Administrative actions

 

Administrative actions are both cost-effective and time-efficient, and this is usually the most common route for companies to take when infringement has been discovered. It is a good way to deal with small-scale infringers and to gather evidence for larger scale infringements. Due to the nature of the remedies available and speed of case handling, administrative actions are an especially effective method of putting an immediate stop to on-going IPR infringement.

 

In the case of industrial design infringement however, administrative measures are limited in their effectiveness due to the relative

inexperience of administrative bodies in dealing with the complex issues usually associated with patent infringement cases. As such it is often better to make use of the civil courts, which are more experienced in handling industrial design cases.

 

Civil litigation

 

Civil litigation is usually only used in the event of larger scale infringements and very few cases are brought before Vietnamese civil courts. This is partially due to the lack of proper IP training and human resources within the judicial system, resulting in somewhat unpredictable case outcomes. Vietnamese authorities are working to improve the civil system however, working in cooperation with

international organisations and government agencies.

 

The civil courts are still relatively inexperienced at dealing with industrial design patent cases by international standards and have only dealt with a limited number of cases to date. However they remain the best option for patent owners at present as administrative bodies have less experience still.

 

In civil actions, right holders can request provisional measures such as preliminary injunctions, as well as claim actual damages or loss of earnings. Where actual loss cannot be determined however, the maximum award is currently set at approximately EUR 18,000.