According to the law, industrial designs of Vietnamese individuals or enterprises protected abroad must be registered for protection at the intellectual property agencies of the countries in which the owners wish to be protected. This regulation has led to many difficulties in registering for protection of industrial designs internationally due to differences in intellectual property laws of each country as well as the costly fee for each registration in a country.
However, since January 1st, 2020, with the participation of Vietnam in Hague Agreement, owners from Vietnam shall be able to register for industrial designs protection in 90 member countries (Contracting parties) with one single application. The following analysis will go into more depth into the overall analysis of the Agreement, opportunities as well as a few notes when applying the Agreement.
Table of Contents/Mục lục
1. What is Hague Agreement?
– Hague Agreement Concerning the International Registration of Industrial Designs (Hague Agreement) first adopted in 1925 and takes effect since 1928, is a collection of international treaties administered by the World Intellectual Property Organization (WIPO). The Hague Agreement enabling design owners to acquire, maintain and manage their design rights with minimum formalities, which includes three independent international treaties: The London Act of 1934 (the “1934 Act”); The Hague Act of 1960 (the “1960 Act”) The Geneva Act of 1999 (the “1999 Act”).
On the basic of evaluating the progress and improvement of 1999 Act compared to other documents, Vietnam has decided to ratify Hague Agreement, or 1999 Act which takes effect from December 30th, 2019.
2. Who may use the Hague system?
The possibility of filing an international application under the Hague Agreement is not open to everyone. To be entitled to file such an application, an applicant must satisfy at least one of the following conditions:
- Be a citizen of a country that is a party to the Hague Agreement;
- have a domicile in the territory of a Contracting Party or a habitual residence in a Contracting Party
- have a real and effective industrial or commercial establishment in the territory of a Contracting Party.
3. How to file an application through the Hague System
Vietnamese or foreign organizations or individuals permanently residing in Vietnam, foreign organizations and individuals having real and effective industrial or commercial establishment in the territory of Vietnam can apply for industrial designs registration directly to the International Office of the World Intellectual Property Organization (WIPO) or through the National Office of Intellectual Property of Vietnam (NOIP).
An international application may include up to 100 different designs. All designs must, however, belong to the same class of the International Classification for Industrial Designs (the Locarno Classification) and are allowed by designated Contracting Parties.
The international application shall be filed in English, French or Spanish (at the applicant’s option).
– Submit directly to the International Bureau:
- Method 1: Use electronic filing (eHague) interface. The applicant logins to the online application system, enters the information, pays the fee, and submits the application. (https://www.wipo.int/hague/en/e-filing.html)
- Method 2: Send the application directly to WIPO or send it by post: The applicant declares the information on the relevant official form (form DM/1) made available by the International Bureau.
– Submit indirectly through the National Office of Intellectual Property:
- Application form DM/1: This form can be downloaded from the website of WIPO or received at the NOIP.
- The application’s transmittal fee is 2,000,000 VND for each design.
- The applicants shall receive a fee notification from the NOIP and proceed to pay the fee at the International Office.
- NOIP completes the dossier and sends it to the International Office.
- Language used when submitting to the NOIP: English.
– Required documents in the application dossier:
- International registration application form (using form DM/1)
- A reproduction of the industrial designs concerned
In addition, all applicants should take note of the mandatory and optional requirements; general and specific required contents for the application and each section in the form such as: requirements for the description of industrial designs, author information, protection information for designated countries, namely the United States and Vietnam, other requirements for photographs, drawings, projections.
4. Changes in the International Register
The following changes, which may affect an international registration, may be recorded in the International Register:
- Change in the ownership of the international registration (using form DM/2);
- Change in name and address of the holder (including the address for post) (using form DM/6);
- Renunciation of all the industrial designs, in respect of any or all of the designated Contracting Parties (using form DM/5);
- Limitation of some only of the industrial designs, in respect of any or all of the designated Contracting Parties (using form DM/3).
A request for the recording of such changes must be presented to the International Bureau (WIPO) on the relevant official form and must be accompanied by the prescribed fees. Information concerning such changes is recorded in the International Register and is published in the Bulletin for the information of third parties.
5. Duration of protection
International registrations are affected for an initial period of five years. They may be renewed for an additional period of five years. In respect of each designated Contracting Party, the minimum duration of protection shall be at least 15 years from the date of international registrations.
Requests for renewals must be presented to WIPO, along with the payment of the corresponding renewal fees. International registrations may be renewed electronically through the electronic renewal interface available on the WIPO website (www.wipo.int/hague/en). Renewals may be made for all or some of the industrial designs included in the international registration and for all or some of the designated Contracting Parties.
6. Publication of the design
International registrations are published in the International Designs Bulletin’s periodical publishment. The applicant may request that publication of the designs be deferred for a period which cannot exceed 30 months (under the 1999 Act) from the filing date or, where priority is claimed, from the priority date.
7. Implications for accessing the Hague Agreement
Essential for business and integration
In the business, industrial design is one of the important factors that make up the success of products. Therefore, national and international intellectual protection to prevent infringement of intellectual property rights of industrial designs is essential for all enterprises.
International registration under Hague Agreement not only develops the competitiveness of domestic enterprises but also attracts investment of foreign enterprises. In particular, the accession to Hague Agreement has simplified procedures for establishing the rights and management of international registration of industrial designs such as: validity extension, ownership transfer, change of the owner’s name and address. Similarly, it is also easier for foreign organizations and individuals to protect their industrial designs in Vietnam.
Inadequacies in the application process
However, it is worth noticing that there are still regulatory differences regarding industrial design protection between Vietnamese law and Hague Agreement. Up to now, Vietnamese law has not approved the mechanism of protecting industrial designs partly or the registration of many designs in one application except for applications for multiple plans of the same industrial design or registration for a set of products.
The above is the entire analysis regarding to international registration of industrial designs under Hague Agreement since January 1st, 2020.
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