On December 30, 2019, the Geneva (1999) Act of the Hague Agreement Concerning the International Registration of Industrial Designs (Hague Agreement), and the declarations made thereto, became effective in Vietnam.

Generally,  the Hague Agreement permits an applicant to seek protection of industrial design rights among member countries with a single application filed either directly with the World Intellectual Property Organization (WIPO) or through the applicant’s home patent/trademark office, for example the Intellectual Property Office of Vietnam (IP Vietnam) for Vietnamese applicants. Applicants will also be permitted to include up to 100 designs within a single Hague Agreement application; however, all products to which such designs relate must be in the same class of the Locarno Classification.

The WIPO does not substantively examine an international application, but instead checks the application for certain formalities, registers the design in the International Register, publishes the design, and then forwards the registration to each of the designated Contracting Parties who will then advise the WIPO, within either six or twelve months, of whether the registration meets the requirements of their national laws.

Thus, if a designated Contracting Party finds that the registration is not in compliance with its national laws, the applicant shall have the same rights in that Party to seek re-examination or appeal as it would have had if the application had been filed domestically in that Party. If in compliance with the national laws of a designated Contracting Party, the registration will have the same effect as a national design registration or design patent in that Party.

Some Important Aspects of Vietnam Design Law Applicable to Vietnam-Designated International Design Applications

Publication of an international application starts the substantive examination period for the international application in Vietnam.

Though Vietnam substantively examines designs for novelty and non-obviousness and provides for the possibility of opposition to the grant of protection, it does not declare the standard six-month period for notification of refusal to be extended (to twelve-month period) pursuant to Rule 18(1)(b). So, it is still not clear how international design applications, especially if they are also opposed, will be handled by the IP Vietnam within the limited period of time.

Vietnam’s instrument of accession to the Geneva Act was accompanied by the following declarations:

• Where Vietnam is designated in an international design application, it is not possible for an applicant to request the deferment of publication of the design.
• An international design application designating Vietnam must contain a perspective view of the design if the product which embodies the design is three-dimensional.
• An international design application designating Vietnam must contain a claim whose specific wording must be as follows: “Application for overall protection for industrial design(s) as shown and described”.
• Only one independent and distinct design may be claimed in a single international application, except designs that comply with the unity requirements of Vietnam, namely: (i) designs differ insignificantly (design embodiments); and (ii) designs applied to products which must belong to a set of products (i.e., products are normally sold and/or used together and share the same general design).
• The maximum duration of protection for designs is 15 years.

If you have any question about the Hague system or the protection of designs in Vietnam, please do not hesitate to let us know.