Along with the development of the economy, competition between businesses is inevitable. An industrial design after being introduced to the market can be easily imitated. Therefore, for businesses, the protection of industrial designs is a very important thing. With the desire to assist businesses in understanding the provisions of the law on industrial designs, Ngoc Phu Law Firm would like to share the following contents related to industrial designs
According to the provisions of Clause 13, Article 4 of the Intellectual Property Law, an industrial design means the outward appearance of a product embodied in three dimensional configuration, lines, colours or a combination of such elements.
Products mean objects, tools, equipments, vehicles, or parts used to assemble or combine those products, which are manufactured by industrial or manual methods, have clear structure and function, are circulated independently.
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Similarities between an industrial design and a trademark
- An industrial design and a trademark must be visible signs.
- Rights to an industrial design and a trademark are established on the basis of registration and are granted protection titles by the Intellectual Property Office.
Differences between an industrial design and a trademark:
- An industrial design can only be registered for products. A trademark can be registered for both products and services.
- An industrial design is only protected for a maximum of 15 years. A trademark can be protected unlimitedly provided that the procedure for renewing the protection title is required every 10 years.
- The conditions for protection of an industrial design are novelty, have inventive nature and industrial applicability. While the function of a trademark is to distinguish goods and services of different organizations and individuals, so, it is not necessary to meet the above requirements.
According to the provisions of Article 86 of the Intellectual Property Law, the following organizations and individuals have the right to register industrial designs:
- Authors who have created industrial designs by their own labour and at their own expense;
- Organizations or individuals who have supplied funds and material facilities to authors in the form of job assignment or hiring, unless otherwise agreed by the parties.
Where a number of organizations and individuals have jointly created or invested in the creation of an industrial design, such organizations and individuals shall all have the registration right which may only be exercised with the consensus of all.
A person who has the registration right as stipulated in this article may assign such right to other organizations or individuals by a written contract, bequest or inheritance in accordance with law, even where a registration application has already been filed.
An industrial design shall be eligible for protection when it satisfies the following conditions:
An industrial design shall be deemed to be new if it significantly differs from other industrial designs which have been publicly disclosed by use or by means of written descriptions or in any other form either inside or outside Vietnam prior to the filing date or the priority date, as applicable, of the application for registration of the industrial design.
Two industrial designs shall not be deemed to be significantly different from each other if they are only different in features of appearance which are not easily noticeable and memorable and which cannot be used to distinguish such industrial designs overall.
An industrial design shall be deemed not yet publicly disclosed if it is known to only a limited number of persons who are obliged to keep it secret.
An industrial design shall be deemed not to have lost its novelty if it is published in the following cases, provided that the application for registration of the industrial design is filed within 06 months from the date of publication:
- It is published by another person without permission from the person having the right to register it;
- It is published in the form of a scientific presentation by the person having the right to register it;
- It is displayed at a national exhibition of Vietnam or at an official or officially recognized international exhibition by the person having the right to register it.
An industrial design shall be deemed to be creative if, based on industrial designs already publicly disclosed through use or by means of written descriptions or in any other form either inside or outside Vietnam before the filing date or the priority date, as applicable, of the application for registration of the industrial design, the industrial design cannot be easily created by a person with average knowledge in the art.
In the following cases, the industrial design stated in an application shall be considered non- creative:
- It is a simple combination of known design features (publicly disclosed design features are put together or assembled in such a simple way as replacement, interchange of positions, increase or decrease of quantity);
- It is a reproductionlimitation of part of or the whole inherent natural shape of a tree, fruit or animal, shapes of geometric figures (round, ellipse, triangle, square, rectangular, regular polygons and prisms, cross-sections of which are foregoing figures), which are widely known;
- It is a simple reproduction of the shape of a product or work well known or publicly known in Vietnam or worldwide;
- It is an imitation of an industrial design in another field, if such an imitation is widely known in reality (for example: toys imitating cars, motorcycles, etc...)
An industrial design shall be deemed to be susceptible of industrial application if it can be used as a model for mass manufacture of products with the outward appearance embodying such industrial design by industrial or handicraft methods.
In the following cases, the object stated in the application shall be considered insusceptible of industrial application:
- It is the shape of a product with an unfixed state of existence (products in gaseous or liquid form);
- A product whose shape identical to the object stated in the application can only be created with special skills or it is impossible to repeatedly manufacture a product whose shape identical to the object stated in the application;
- Cases where there exist other justifiable reasons.
The industrial design description is one of the important documents in the application for registration of industrial design. An industrial design description includes the following contents:
1. Name of the industrial design: means the name of the product imbued with the industrial design, expressed in common words and phrases, not of the advertising nature, does not contain symbols, annotations and trade indications.
2. Field in which the industrial design is used: means a specific field in which the product imbued with the industrial design is used, clearly stating the use purpose of the product.
3. The most similar industrial design: To clearly state an industrial design which is least different from the industrial design of the same product stated in the application and widely known before the filing date or the date of priority (if the application contains a claim for priority), indicating the information source publicly disclosing the most similar industrial design;
4. List of photos or drawings: enumerates photos, three-dimensional drawings, shadows, cross-sections, etc., of the industrial design one after another according to the ordinal numbers of those photos or drawings.
5. The section of description of the industrial design: must satisfy the following provisions:
- It fully discloses the nature of the industrial design sought to be protected, adequately showing design features presenting the nature of the industrial design as well as new design features that are distinguishable from the most similar industrial design and consistent with those shown in the set of photos or drawings;
- Design features of the industrial design sought to be protected must be presented one after another in the following order: Configuration and line features, correlation between configuration and/or line features, color features (if any);
- For a product that have different usages (for example: a product with cover or foldable), its industrial design must be described in different states;
- If an industrial design consists of many variations, distinctive characteristics of the basic variation (the first variation stated in the application) in comparison with those of remaining variations must be clearly indicated);
- If an industrial design is the design of a set of products, the design of each product in the set must be described.
6. Coverage of protection (or claim for protection) of the industrial design: must fully enumerate prerequisite and sufficient design features to identify the nature of the industrial design sought to be protected and the scope of industrial property rights to the industrial design, shown on photos or drawings stated in the application, and including new and distinctive design features as compared with known similar industrial designs.
The purposes of Hague Agreement Concerning The International Registration Of Industrial Designs (Hague Agreement)
The Hague Agreement was signed on November 6th, 1925 and entered into force on June 1st, 1928. The Hague Agreement has two main purposes:
- To simplify administrative procedures in the registration of industrial design abroad. In particular, the Hague Agreement has made it possible to obtain industrial design protection in many countries through a single international application, filed with the International Bureau of the World Intellectual Property Organization. Under this procedure, the applicant does not need to file separate national applications in each of the countries in which he wishes industrial design to be protected, does not have to submit required documents in different languages, and does not have to pay fees in different currencies.
- To help industrial design owners easily manage international registration of industrial designs owned by them. Specifically according to the provisions of the Agreement, the extension of validity, the transfer of ownership rights, the change of the name and address of the owner, etc., are made through a simple procedure of sending written notice to the The International Bureau and the International Bureau will notify the owner of the expiration date and other legal issues related to the registration of industrial design in the member countries.
Contents of Hague Agreement
- Applicants: Includes nationals of a member state of the Hague Agreement and persons who, though not nationals of any other member state, reside or have a real and effective industrial or commercial establishment in the territory of a member state of the Hague Agreement.
- How to apply: An application for an international registration of an industrial design is filed directly to the International Bureau or to the International Bureau through the National Intellectual Property Office of the member country.
- Priority when applying: The time limit for using priority right to file an international application is within 06 months from the date on which the first application for registration of the same design is filed in a member country of the Hague Agreement.
- Legal effect of an international application for registration of an industrial design: The registration of an industrial design with the International Bureau shall enter into force in each of the member countries designated by the applicant in the application in accordance with the laws of the member state.
- Term of protection: As stipulated by the laws of member countries, at least 5 years.
Effectiveness of Industrial Design Patent
According to the provisions of Clause 4, Article 93 of the Intellectual Property Law, an industrial design patent is valid from the date of grant and lasts until the end of 5 years from the date of filing the application. It can be renewed for 2 consecutive times, each times 05 years.
In what cases is an industrial design patent canceled?
An industrial design shall be entirely invalidated in the following cases:
- The applicant for registration has neither had nor been assigned the right to register industrial design;
- The industrial design failed to satisfy the protection conditions at the time the industrial design patent was granted.
An industrial design patent will be partly invalidated as to the part which failed to satisfy the protection conditions.
Any organization or individual may request the State administrative body for industrial property rights to invalidate an industrial design patent in the above cases, provided that such applicant pays fees.
The statute of limitations for exercising the right to request invalidation of an industrial design patent shall be the whole term of protection.
CÔNG TY LUẬT TNHH NGỌC PHÚ
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