Registration industrial design for products before they are sold on the market is one of the first and most important factors to protect the rights of the owner against all acts of copying and imitating the industrial design. The following is the sharing of Ngoc Phu Law Firm on contents related to industrial design protection.
WHAT IS INDUSTRIAL DESIGN PROTECTION?
Industrial design protection means that a competent state agency grants an industrial design patent to an organization or individual that submits an application for registration an industrial design that satisfies the conditions for protection according to the provisions of law.
EXAMPLES OF INDUSTRIAL DESIGN PROTECTION
Example 1:
Example 2:
Example 3:
Example 4:
POLICY OF INDUSTRIAL DESIGN PROTECTION
Like most other objects of industrial property rights, the right to an industrial design will be established on the basis of a decision on granting a protection title by a competent state agency according to registration procedures which specified in the Law on Intellectual Property or an International Treaty which Vietnam is a contracting party.
WHAT IS A PROTECTION TITLE OF INDUSTRIAL DESIGNS?
Industrial design protection title means a document issued by a competent state agency to an organization or individual in order to establish industrial property rights to an industrial design. The industrial design protection title is called the Industrial Design Patent.
OBJECTS INELIGIBLE FOR PROTECTION AS INDUSTRIAL DESIGNS
According to Article 64 of the Intellectual Property Law, the following objects are not protected in the name of industrial designs:
- Outward appearance of a product which is necessarily due to the technical features of the product.
- Outward appearance of civil or industrial construction works.
- Shape of a product which is invisible during the use of the product.
WHICH ARE UNPROTECTED INDUSTRIAL DESIGNS?
Unprotected industrial designs are industrial designs that do not satisfy one of the protection conditions of novelty, creative nature or industrial applicability.
CONDITIONS FOR PROTECTION OF INDUSTRIAL DESIGNS
An industrial design shall be eligible for protection when it satisfies the following conditions:
Be novel
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.
Be of a creative nature
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 the registration application is considered non-creative:
- An industrial design is a simple combination of known design features (publicly disclosed design features that are simply put together, such as replacing, changing location, increasing or decreasing quantity, etc).
- Industrial design is a shape that copies or imitates part or all of the inherent natural shape of trees, fruits, animals..., shapes of geometric shapes (circles, ellipses, triangles, squares, rectangles, regular polygons, etc) are widely known.
- An industrial design is a simply reproduction of the shape of products or works that are well-known in Vietnam or in the world.
- An industrial design that imitates an industrial design in another field, if such imitation is already widely known in reality (for example: toys that simulate cars, motorbikes, etc).
Be susceptible of industrial application
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 an industrial design registration application is considered incapable of industrial application:
- It is the shape of the product whose state of existence is not fixed (products in the gaseous state, liquid form, etc.);
- It can only be produced by special skill or cannot be repeatedly produced in the same shape as the object stated in the application;
- Cases with other valid reasons.
CAN USED INDUSTRIAL DESIGNS BE REGISTERED FOR PROTECTION?
In principle, an industrial design is only protected when it has not 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. However, there are cases which an industrial design has been used in reality, but the owner can still register it, specifically as follows:
According to the provisions of Article 65 of the Law on Intellectual Property, 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.
Because the use of an industrial design is also considered one of the forms of industrial design publication, if the industrial design is used by others without the owner's permission, the owner is still entitled to file registration application within 06 months from the date of unauthorized use. In this case, in the registration dossier, the owner must submit together with documents proving his ownership of the industrial design that is illegally used.
SCOPE OF PROTECTION OF INDUSTRIAL DESIGNS
Requirements on the scope of protection in the industrial design description: The applicant must list all necessary and sufficient design features to determine the nature of the industrial design and the scope of industrial property right for an industrial design, shown on photos or drawings stated in the application, including new design features that are different from known similar industrial designs.
Industrial designs are protected within the territory of the country of registration.
TERM OF PROTECTION OF INDUSTRIAL DESIGN
According to the provisions of Clause 4, Article 93 of the Intellectual Property Law, an industrial design patent takes effect from the date of grant and lasts until the end of 5 years from the date of filing the application.
AFTER THE TERM OF PROTECTION EXPIRES, DOES THE OWNERS NEED TO RENEW?
After the term of protection expires, the owner needs to carry out procedures to extend the validity of the industrial design patent. Industrial design patents can be renewed for 2 consecutive times, each time for 5 years.
