Firms should register designs

Multinational companies are increasingly looking to Viet Nam to source their latest product ranges. Vietnamese designers and manufacturers should therefore be looking to obtain industrial design registrations to protect themselves against third parties copying or appropriating their designs.

In 2004, Vietnamese entrepreneur Duy Loi’s costly experience in recovering his rights over a hammock design which was copied in Japan and the US caught the attention of both consumers and businesses in Viet Nam. However, it appears that the lessons have not been learned from this experience as Vietnamese businesses continue to neglect registering industrial designs, even as the registration of trademarks grows.

According to the National Office of Intellectual Property, over 28,000 trademark applications were filed in 2009 but only 1,879 industrial design applications.

Registration of an industrial design protects the specific appearance of a product embodied in three-dimensional configurations, lines, colours, or a combination of these elements. An industrial design registration could protect an ornamental design on a plate, packaging (e.g., the shape of a bottle), furniture, or something as complex as an automotive design.

An industrial design registration brings a number of benefits to the holder. First, it gives the holder an exclusive right to use the design and stop others from copying the design and trying to exploit for commercial gain. Once registered, an industrial design can help the holder increase their product’s value and competitiveness in the market. The holder can also exploit the registered design by selling or licensing the right to use the design to third parties. An industrial design registration is valid for five years and renewable for two additional periods of five years (15 years in total).

In order to be registered, an industrial design must be new, original and capable of industrial application. An industrial design is considered new if it significantly differs from other industrial designs that are already publicly disclosed prior to the filing or priority date of the industrial design application.

An industrial design is considered original if it could not be easily created by a person with average knowledge in the field, and it is considered capable of industrial application if it can be used as a model for mass production.

In order to preserve industrial design right in Viet Nam, an application for an industrial design patent must be filed with the NOIP.

Viet Nam has adopted a first-to-file system and it is therefore important to file an application for an industrial design patent as soon as possible after the design is created. The application must also be filed before the design is made available or disclosed to the public.

The application shall be formally examined within a month of filing date and published in the National IP Gazette within two months. A substantive examination will take place within seven months. If examiners judge that the application fulfils the above requirements, they will grant an industrial design patent.

Tags: Intellectual Property, Vietnam companies, Vietnam enterprises