An industrial design registration may be one of the most valuable asset for business owners. The success of a product is usually influenced by its appearance; in an aesthetic-driven consumer base, the looks of a fashionable product looks can often be equally or more important than its functionality. A product with nice designs attracts more consumers nowadays, not only in Vietnam, but also other in other countries worldwide.
Obtaining exclusive rights to a product with a particular appearance may result in a substantial return on the investment because the owner of a protected industrial design has the exclusive right to use, licence or assign the right to use such industrial design to other persons (Article 123 of the 2005 Intellectual Property Law), the right to request the competent Vietnamese enforcement authorities to compel/force other persons to stop infringements, and the right to claim compensation for damages caused by such acts of infringement (Civil Code No. 91/2015/QH13 and Article 198 of the 2005 Intellectual Property Law)
An industrial design registration in Vietnam provide the owner exclusive rights to the commercial production, marketing and sale of your product for a maximum period of 15 years ( A registered industrial design is given an initial protection period of 5 years from the date of filing and is extended for two further consecutive terms of 5 years each. The maximum protection period is 15 years ). Under Article 93.4 of the IP Law of Vietnam, an industrial design patent shall be valid from the grant date until the end of five (5) years after the filing date and may be renewed for two consecutive terms, each of five (5) years.
If the owner’s industrial design is trespassed on, they may bring their case to a Vietnamese competent court and be awarded damages for the lost sales the plaintiff has incurred as a result of the infringement of their design registration. This allows the patent holder to focus on establishing products on the basis of superior industrial design without worrying about knock-offs from competitors who can produce items cheaper or who can scale their manufacturing quicker.
An industrial design registration can also be sold or licensed to others. If you do not want or do not have the capability to produce the product protected by your industrial design, you may be able to sell or license your design to another and earn a royalty on their sales.
Further, your industrial design registration can help you establish goodwill in the trademark sense in particular shape and appearance of the article, which is referred to as its get-up in trademark law. Having sufficient reputation in the get-up of a product becomes a separate ground for excluding others from copying your design.
The period of exclusivity provided by an industrial design registration allows your reputation in the design to build and then potentially provide those protectable trademark rights that can extend indefinitely as long as sufficient reputation in the get-up is maintained.
Authors who have created industrial designs by their own labour and at their own expense and/or organizations or individuals who have supplied funds and material facilities to authors in the form of job assignment or hiring are entitled to register industrial designs for protection under Article 86.1(a,b) of the IP Law of Vietnam. In a broader sense, owning a permanent production or trading establishment in Vietnam is not a prerequisite condition to register an industrial design in Vietnam.
All documents submitted to the National Office of Intellectual Property of Vietnam (NOIP) must be in Vietnamese, with the exception or power of attorney and evidence documents for right to register and priority right where appropriate. Other supporting documents may be submitted in other languages, but translations must be provided if requested.
As a party to the Paris Convention for the Protection of Industrial Property, Vietnam offers the ‘right of priority’ to applicants where the same filing has been made within the last 6 months in any other member state. Once registered, the patent protection will be calculated from this priority date, rather than the actual filing date in Vietnam.