By Linh Nguyen
Pursuant to international norms, the protection of industrial design is jurisdictional, meaning it is limited within the boundary of the territory where the application for protection is submitted and granted. To obtain protection in various jurisdictions, each industrial design application must conform with the specific rules and procedures of each country.
The establishment of the Hague System for International Registration of Industrial Designs by the World Intellectual Property Organization (WIPO) helps to govern international registrations of industrial designs, allowing protection in multiple countries (91 countries) with minimal formalities and costs.
Taking effect in Vietnam since 1 January 2020, Hague System users now can designate Vietnam in their international design applications. On the basis of Vietnam’s accession and accompanying declarations, these are the grounds of refusal that may be raised by the Intellectual Property Office of Vietnam (IP Viet Nam) when examining international design applications designating Vietnam:
- Claimed design belongs to the non-patentable category, e.g., partial design, design that is not independent in its physical form (pattern, graphic symbol, etc.), or design contrary to social morality or public order
- The design does not satisfy the requirements of patentability: novelty, inventive step, and industrial applicability
- The reproductions are not sufficient to fully disclose the industrial designs – the set of reproductions must include the perspective view and six orthogonal views of the design
- The description does not fully disclose characteristic features of the design
- The application does not fulfil the unity of design requirements, particularly (i) designs in an international application must belong to the same set of 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
- The application does not fulfil the first-to-file principle
For overcoming the provisional notification of refusal, the application for requesting review of the IP Viet Nam shall be filed through an authorized Vietnamese representative within three months from the date of the provisional notification with the possibility of one three-month extension.
Should you need any assistance, our professional team of Southeast Asian IP experts at KASS are keen to help you and get your industrial design registered. Don’t hesitate to reach out to us at kass@kass.asia!
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