Overview of Vietnam’s design system

Vietnam's design system (industrial design system) is regulated by the Intellectual Property Law enacted in 2005 (including subsequent amendments), and is protected as an "industrial design patent", which is equivalent to Japanese design rights. Below, we have summarized the main points of the design system in Vietnam and practical points to keep in mind for intellectual property managers and patent attorneys at Japanese companies.

Registration requirements (novelty, creativity, industrial applicability)

To be protected as a design in Vietnam, three requirements must be met: novelty, creativity (not easy to create), and industrial applicability.

• Novelty: Requires that no identical or similar design exists in the public domain anywhere in the world before the filing or priority date. Specifically, the design must be significantly different from any design that has been made public in any way, such as the use of the product or the description in publications (Article 65, Paragraph 1 of the Intellectual Property Law). It should be noted that if the difference from other designs is difficult to distinguish at first glance, or if the design itself lacks originality, it will not be recognized as novel and will not be registered. In addition, as a condition for it to be considered "not made public," it is not considered to be publicly known if it is only known to a limited number of people under an obligation of confidentiality.

• Creativity (not easily inventive): Based on the design that was publicly known at the time of filing or prior to the priority date, it is required that the design has creative features that cannot be easily devised by a person skilled in the art (a person with average knowledge in the field). This corresponds to the difficulty of creation under Japanese design law, and requires uniqueness that is not simply a collection or imitation of conventional designs.

• Industrial applicability: It must be possible to mass produce it by industrial or handicraft means. In other words, a design is deemed to be industrially applicable if it can be repeatedly produced industrially. In addition, the law clearly states that designs consisting only of shapes that are necessarily determined by the functionality of a product, the appearance of buildings, and shapes that are not visible from the outside during use cannot be protected as designs.

If the above requirements are met, the design application will be approved for registration after a substantive examination (Vietnam has an examination system in which both formal and substantive examinations are conducted for designs). In particular, standards regarding novelty and originality are similar to those in Japan, but there are differences regarding protection of partial designs. Partial designs (protection of only a part of the shape of a product) have not been recognized in Vietnam, and designs are registered as the appearance of the entire finished product (partial claims by dashed lines in drawings are not allowed; see below). However, the revised Intellectual Property Law in 2022 stipulates that the "appearance of the parts that make up a product or composite product" is also included in the definition of an industrial design, creating the possibility that in the future, parts of composite products themselves will also be recognized as subject to design registration. In practice, it is still unacceptable to indicate unclaimed parts using broken lines, but if you want to protect a partial design, you need to devise ways to express the part itself as a separate product.

Application procedures (required documents, language, applicant qualifications, etc.)

The basic flow of the application procedure is generally similar to the Japanese system, and consists of application (formal examination) → publication → substantive examination → registration. The documents and information required for application and points to note regarding the procedure are as follows.

• Required documents: Prepare an application (in the prescribed format), a drawing or photograph of the design (see drawing requirements below), a description of the design (describing the shape, pattern, color, etc. of the design and the name of the article), and information on the applicant and creator. Additionally, if you wish to claim priority under the Paris Convention, you will need apriority document. Pay the prescribed application fee at the time of application, and if it is accepted, the application will proceed to formality examination.

• Language requirements: In principle, application documents must be prepared and submitted in Vietnamese. Application forms, design descriptions, drawing descriptions, etc. must all be written in Vietnamese. However, attachments such as power of attorney and priority certificate can be submitted in languages ​​other than Vietnamese, and translations may be requested if necessary. In some cases, a standard power of attorney format prepared by a local agent must be prepared in English and submitted for signature (see below).

• Applicant qualifications: The applicant is the creator (inventor) of the design, or his/her employer/client (such as a company in the case of a work design). Foreign companies and foreigners can also apply, but Foreign individuals and corporations that do not have a residence or business base in Vietnam must apply through a local intellectual property agent (patent attorney, etc.). This is based on local law (Article 89 of the Intellectual Property Law), and Japanese companies cannot directly apply to the Vietnam Intellectual Property Office, but must appoint a Vietnamese agent to handle the procedure.

• Flow from application to registration: After filing, a formality examination is first carried out, and if there are no deficiencies, the application will be published in the official gazette approximately two months after application (application publication). From publication to registration assessment, third parties can submit written opinions (opinion submission system, not formal objection system). After publication, a substantive examination will be conducted, and if the registration requirements such as novelty and originality are met, the application will be approved for registration. In recent years, it has been reported that the average examination period from application to registration is approximately 1 to 2 years in practice (varies depending on the case). At the time of registration, a registration fee is paid and a design registration certificate (certificate) is issued.

• Priority claim: If you wish to claim priority under the Paris Convention, you must file a Vietnam application within six months from the earliest filing date. The deadline for submitting priority documents (priority application gazette, application receipt, etc.) is set as <3 months from the filing date> and cannot be extended. In addition, if the priority applicant and the Vietnamese applicant are different, documents proving the succession of rights (such as a deed of assignment) must also be submitted. Since the provision of electronic priority certificates through the Digital Access System (DAS) is currently not available in Vietnam, we will be operating submitting original paper priority certificates.

• Other practical points: It is necessary to use the Locarno classification as the classification of a design application, and the classification of the applicable design (Class XX) must be stated in the application. If the applicant does not indicate the classification, the IP Office will perform the classification work and charge a fee for the classification. In addition, the principle is one application for one design, but if multiple designs constitute a "set product" (e.g. a set of teacups and saucers) or "variations (embodiments) of designs that are very similar to each other", it is permissible to combine them into one application. Under the unity of design requirement stipulated by Vietnamese law, only identical or similar designs can be included in one application; for example, variations that have most of the same shape but differ only in details can be included in one application. On the other hand, please note that multiple designs that have significantly different forms even if they have the same Locarno classification will need to be divided.

Drawing requirements

Requirements for submission of drawings (or photographs) are very important and will directly affect the success or failure of your Vietnam application. Since the drawings are the only clue for the examiner to understand the contents of the design, it is necessary to prepare clear drawings that meet the following criteria.

• Type and number of basic drawings: Normally, 7-sided drawings are submitted. Specifically, there are seven basic views: the front, back, left side, right side, top, bottom, and perspective view (three-dimensional view) of the product. It is necessary to show the appearance of the product from all directions, including perspective views. In a symmetrical design, if one side is the same as the other, or if the front and back sides are the same, it is permissible to omit one of the figures. In addition, it is possible to omit the bottom view if the bottom surface of a large or heavy object is substantially flat and not normally visible. However, even if this is omitted, it is assumed that the main parts of the design are disclosed in all drawings.

• Drawing quality and format: Submit drawings with clear lines and high contrast. Photographs should be taken on a plain, uniform background so details can be easily seen. The scale must be the same and consistent across multiple drawings. Drawings should preferably be accurately drawn using CAD, etc., or high-resolution photographs, rather than hand-drawn. If the drawings are unclear in light of the screening criteria, you may be asked to make corrections.

• Illustration of partial design: As mentioned above, indication of non-claimed parts using broken lines (dotted lines) is not permitted. Therefore, if a drawing with broken lines as a partial design applied in a Japanese application is used as is in Vietnam, there is a risk that the application will not be accepted. If you want to protect a part, you need to draw only that part as an independent product, or draw it only with solid lines, and then clearly state the scope of your rights in the instructions (for example, state that "the part shown in solid lines is the part for which you are seeking design registration"). In addition, the Vietnam Intellectual Property Office may request the submission of "drawings showing the state in which it is assembled into the product (assembled drawing)" as necessary for set designs and designs for parts of composite products. Complex part designs may require supporting drawings to explain where the part will be used in the final product.

• Additional views: If the basic 7-view drawings cannot adequately express the shape, it is permitted to submit additional views such as enlarged views, sectional views, developed views, etc. For example, if a design is characterized by a very detailed pattern or internal structure, attaching an enlarged view or cross-sectional view of that part can help the examiner's understanding.

• Availability of photo submission: In Vietnam, photo submission is also possible. In the case of three-dimensional objects, if CAD drawings are not available, high-quality photographs are also acceptable. However, as mentioned above, the background should be plain and adjusted so that the outline of the product can be clearly seen. The examiner generally does not instruct you to redraw the drawings after submission, so it is important to prepare drawings with a high degree of completion at the initial submission stage.

• Two-dimensional designs: Flat designs (2D designs) such as patterns and color patterns are also subject to protection. In that case, we will submit a developed drawing of the pattern or a drawing of the pattern itself. In the case of repeating patterns such as fabric patterns, it is possible to use a diagram showing one unit.

As mentioned above, Drawing requirements are strict, so please be careful to comply with Vietnamese standards when reusing Japanese design drawings. It is important to consult with a local representative as necessary and consider the optimal drawing configuration.

Exception for loss of novelty

Vietnamese Intellectual Property Law provides exceptional provisions for loss of novelty regarding publication before filing. If the publication falls under certain cases, such as unauthorized publication by another person or presentation at an academic conference or exhibit at an exhibition by the applicant, an exception to the loss of novelty will be granted if the application is filed within 6 months after publication. Specifically, there are three situations:

1. Unauthorized publication: When the design is published by a third party without the consent of the application right holder (creator or his/her successor). For example, in cases where a product design has been plagiarized and published without permission before the application is filed, the loss of novelty exception applies from the perspective of redressing damages.

2. Academic publication: When the applicant publishes the design in the form of ascientific report such as a conference or a paper. If the technical or academic significance of the design has been announced, an application can be submitted within six months as an exception to the loss of novelty.

3. Exhibition at an official exhibition: When the applicant exhibits the design at anational exhibition in Vietnam or an officially recognized international exhibition. For example, this applies to public disclosures when exhibiting new products at officially recognized international trade fairs. This is similar to the publication exception (so-called "exception period") in the Japanese design system, and protection is provided only if it is exhibited at an official or authorized exhibition.

In any of the above cases, the condition is that the application must be filed within 6 months of publication. This six-month grace period is the same period as the priority period under the Paris Convention, but it is a remedy under domestic law that is separate from priority rights. Therefore, if the application is filed directly in Vietnam without claiming priority, the novelty will not be lost if the application is filed within 6 months from its publication. Please note that detailed points such as the scope of an "officially recognized international exhibition" are defined by law, so if you hold such a public exhibition, it is best to consult with a local representative in advance.

Protection period

The duration of design rights in Vietnam is up to 15 years. Specifically, the protection period is for the first five years starting from the filing date, and can be renewed up to two times every five years, extending the protection period up to a total of 15 years from the filing date. This differs from Japan (20 years from the date of registration, no renewal), in that the period can be extended by paying a renewal registration fee.

• Starting date: A design right becomes effective from the date of registration, but the expiration date of the protection period is stipulated as five years after the filing date (Article 93, Paragraph 4 of the Intellectual Property Law). For example, even if you applied on January 1, 2018 and were granted registration on January 1, 2020, the initial protection period will be until December 31, 2023 (5 years from the application date). It should be noted that the effective term of rights will be shortened to the extent that the examination takes time.

• Renewal procedure: By filing a renewal application (application for extension of the term) before the expiry of the initial five years, an additional five-year extension will be granted. Renewalup to twotimes is possible, with the first renewal up to the 10th year and the second renewal up to the 15th year. Renewal procedures can be accepted from 6 months before the expiration of each protection period, and even if there is a slight delay, there is a grace period within 6 months, in which case it can be renewed by paying an additional fee of 10% each month. Rights expire after the grace period, so it is important to manage deadlines.

• Maintenance pension: There is no pension system for designs in Vietnam like that for patents, and a prescribed renewal fee must be paid at the time of renewal. If you do not renew, the right will expire at the expiration of the term, and the exclusive right to the design will no longer arise.

Please note that from 2020 to 2024, the Vietnamese government took measures to temporarily reduce fees for intellectual property rights for reasons such as countermeasures against the new coronavirus, but from January 1, 2025, fees will return to normal fees (for details, see the section on the reduction/exemption system below). Therefore, as of 2025, renewal fees for design rights are also the normal amount. Strategies for maintaining rights for as long as necessary are also considered, taking into consideration the costs associated with maintaining rights over the long term.

Efficacy of design rights and responses to infringement (civil, administrative, criminal)

The effect of a design right is that the owner of a registered design (design right holder) has exclusive rights against third parties who use the registered design or a design that is confusingly similar to it as a business without permission. Specifically, actions such as manufacturing, selling, distributing, importing/exporting, advertising, offering to sell, and storing products that use a registered design can be prohibited without the permission of the right holder. In addition to the right to use the design themselves (manufacturing, sales, etc.), a design right holder also has the right to license the design to a third party or transfer the design right itself. Although there are many things in common with Japan regarding the content of rights and standards for determining infringement, such as the similarity of important parts of designs, there are also practices unique to Vietnam.

In Vietnam, the two main remedies for infringement of design rights are civil proceedings and administrative measures (criminal penalties will be discussed later). This is stipulated by Articles 198 and 199 of the Intellectual Property Law, and civil or administrative procedures can be selected depending on the nature and severity of the infringement. In practice, each has the following characteristics:

• Overview of Hague Agreement accession: Vietnam's accession allows it to be included as a designated country for international design applications through WIPO. If you apply for Vietnam designation via The Hague, the Vietnam Intellectual Property Office (IP Vietnam) will conduct an examination after publication in the International Registration Bulletin. In principle, the Vietnam Intellectual Property Office must issue a notification of refusal (commonly known as a "notification") within six months. If there are no reasons for refusal or if the objection can be resolved by responding to a written opinion, the Vietnamese government will notify the granting of protection for the international registration, and the design will be protected in Vietnam in the same way as a registered design. This short six-month time limit is based on the provisions of the Hague Agreement, and if the examiner does not issue a notice of refusal within the time limit, an automatic protection decision is deemed to have been made.

• Examination response for applications via The Hague: If a notification of refusal is issued for an international registration designated in Vietnam, the applicant can respond by submitting a written opinion or amendment within 3 months from the date of dispatch of the notification. You can apply for an additional three-month extension (up to a total of six months) of this deadline only once. Responses must be made through a Vietnamese representative and must be submitted in Vietnamese. Once the reasons for refusal are resolved, the Intellectual Property Office will notify the grant of protection (registration decision) via WIPO. The term of protection for a design registered in a Hague application is up to 15 years from the date of international registration (updated twice every 5 years), which is the same as for a domestic application.

• WIPO Announcement and Domestic Announcement: Under the Hague System, WIPO Announcement (International Bulletin) is made, but it is not published in Vietnam IP Office's own domestic gazette. Therefore, if a third party monitors only Vietnam domestic gazettes, applications via The Hague may be overlooked. In practice, it is necessary to check the international publication on the WIPO database or contact the Vietnam Intellectual Property Office. In addition, it is possible to submit a third-party opinion in the case of a Hague application in the same way as in a domestic application, but the opinion will only be treated as reference information and will not develop into a formal objection.

• New rules for filing priority documents: Important changes in practice include Decree No. 65, effective August 23, 2023, which stipulates that if a Hague application specifies Vietnam and claims priority, the priority document must be submitted directly to the Vietnam Intellectual Property Office. Specifically, withinthree months from the date of international publication by WIPO, proof of the priority application claimed by the Hague application (such as an official receipt of application) must besubmitted to the IP Office through a local representative. This will not be accepted via WIPO's Digital Access Service (DAS) and the original paper copy (with the official seal of the issuing authority) must be submitted. Submission requires a power of attorney (POA)** addressed to a representative in Vietnam, and no authentication or consular confirmation is required if the representative has his or her own signature. Please note that this new requirement is not well known by WIPO and some applicants may have overlooked it. If you do not submit the appropriate priority certificate within the deadline, you run therisk that your priority claim will not be accepted.

  Supplementary: As of August 2023, there will be a grace period for already published Hague applications, and applications published before May 23, 2023 will not require additional submissions. However,from the date on which WIPO officially publishes this requirement, strict adherence to the deadline will be required andno supplements will be allowed after the three-month filing deadline. As of the end of 2024, WIPO has not yet been published, and as a transitional measure, submissions are accepted after the deadline, but formal operation may begin at any time, so when designating Vietnam in a Hague application, be sure to submit priority documents locally as soon as possible.

• Whether or not to use the Hague application: When Japanese companies seek to protect their designs in Vietnam, they can use two methods: via The Hague or directly. Advantages are that in The Hague, you can apply all at once in English and the procedure is simple. On the other hand, there are points to keep in mind that, as with the above-mentioned obligation to submit priority documents, there may be situations in which the involvement of a local agent is ultimately required, and that responses to refusals also need to go through a local agent, so an agent may not be completely unnecessary. Furthermore, if the request is sent via The Hague, it is difficult to see the status of the procedures on the Vietnamese side, and notifications will also be sent via WIPO, which may result in a time lag in response. On the other hand, direct filing requires communication with a local agent, so you can expect procedural transparency and flexibility (for example, informal consultation for accelerated examination). It depends on a case-by-case basis, but it is said that if you are targeting only one country, Vietnam, it is more reliable to apply locally. If you want to save time by filing applications in multiple countries at the same time, consider The Hague and don't overlook the additional procedures mentioned above.

• Fees reduction/exemption system: The Vietnam Intellectual Property Office has taken measures to temporarily reduce various fees for industrial property rights, including designs, by 50% from 2020 until the end of 2024 as a countermeasure against the new coronavirus. This measure will end at the end of 2024, and from January 2025 onwards, the normal fee structure will be restored. However, there is currently a separate preferential policy in which fees are halved for online procedures only. Specifically, from January 1, 2024 to December 31, 2025, basic fees will be reduced by 50% for procedures performed online, such as electronic applications. This online reduction/exemption measure applies to the entire field of industrial property rights, and also applies to design applications, registration fee payments, renewal fee payments, etc. Therefore, in terms of cost, it can be said that the advantages of using online application are currently significant. Please note that there is no permanent exemption system for small businesses (e.g. small business discount) in Vietnam. There are no additional fees charged just because you are a foreign applicant (official fees are the same for domestic and foreign applicants, apart from agent fees, etc.). From the perspective of cost reduction, if necessary, you may consider filing a batch of applications for set designs or similar designs to reduce the number of applications (additional drawing fees will be charged for multiple designs in the same application, but it is cheaper than filing separately).

• Power of Attorney (POA) Requirements: Foreign companies are required to submit a Power of Attorney when proceeding through a local agent. According to the regulations of the Vietnam Intellectual Property Office, an original power of attorney (signed to the local representative) must be submitted. Notary certification or consular certification is not required, and only the signature and seal of the representative is valid. Previously, there was a strict deadline for submitting the original power of attorney within one month from the filing date, with no extensions allowed. However, this deadline was abolished with2023 revision (Ministry of Science and Technology Circular No. 23), and now the practice has been relaxed to the point that it is only necessary to submit a power of attorney beforethe application is determined to be acceptable in the formalities examination. In other words, even if the power of attorney is not submitted in time at the time of application, the application will not be immediately rejected, but will be accepted if submitted during the formalities examination process. However, it goes without saying that it is still desirable to submit the application as early as possible. If you do not have a power of attorney, the Intellectual Property Office will issue an amendment order, and if there is no response, your application may not be accepted. In addition, even in the case of international applications (Hague), a power of attorney is required for procedures involving a local representative, such as the submission of priority documents mentioned above. It is also possible to leave a general power of attorney (General POA) with a local agent in advance, and if you continue to request the same agent, you can use a copy of it.

• Other document signature requirements: In design applications and registration/renewal procedures, in addition to power of attorney, documents such as assignment certificate and notification of change may be required. These generally do not require certification; an original signature or a notarized copy is sufficient. For documents that span multiple pages, care must be taken to ensure that no signatures are left out (such as stamps on each page). Please follow the instructions of your agent carefully when submitting documents, as there are strict requirements regarding formats and signatures in Vietnam's government procedures.