INDUSTRIAL DESIGN Q&A

According to Article 4.13 of the Law on Intellectual Property (IP Law), an industrial design is the external appearance of a product or a part intended for assembly into a complex product, expressed through shapes, lines, colors, or a combination of these elements, and visible during the use of the product or complex product.

According to Point 23.2 of Circular No. 23/2023/TT-BKHCN, the term “use of a product or complex product” means putting such products into operation according to their intended function or utility, excluding activities related to maintenance, servicing, or repair of the product or complex product.

A product is understood as an object, tool, device, or vehicle, produced by industrial or handicraft methods, with clear structure and function.
A part intended for assembly into a complex product refers to a component capable of independent circulation, detachable from the complex product.
A complex product is a product made up of multiple replaceable parts that can be disassembled and reassembled.

According to Clause 2, Article 134 of the Intellectual Property Law, once an industrial design application is filed and granted a protection title (“certificate”), the holder has the right to prohibit others from using the design. Accordingly, the certificate holder has the exclusive right to use the design and profit from that exclusivity. In essence, they have the right to prevent the following acts:

a) Manufacturing products whose external appearance is identical or similar to the protected industrial design;

b) Circulating, advertising, offering for sale, or storing for circulation the products mentioned in point a) above;

c) Importing the products mentioned in point a) above.

The applicant is the entity (organization/individual) that owns the industrial design and therefore has the right to file an application. Once the protection title is granted, the applicant becomes the holder of the certificate.

According to Article 86 of the Intellectual Property Law, the following organizations and individuals have the right to register an industrial design:

a) The author who creates the industrial design using their own effort and expense;

b) Organizations or individuals who invest funds and materials for the author in the form of task assignment or hiring, unless otherwise agreed by the parties.

• In cases where multiple organizations or individuals jointly create or invest in creating the industrial design, all parties shall have the right to register, and such registration can only proceed with the consent of all parties involved.

• A person entitled to registration under this Article may transfer the right to register to another organization or individual through a written contract, inheritance, or succession in accordance with the law — including after the application has been filed.

According to Article 64 of the Intellectual Property Law, the following subjects are not eligible for protection as industrial designs:

1. The external appearance of a product that is required solely by the product’s technical features. These are shapes, configurations, or lines that are determined entirely by the technical function of the product.
   Example: The spiral shape of a drill bit, the flat and circular shape of a CD… are not protected as industrial designs.

2. The appearance of civil or industrial construction works. The external shape of civil or industrial buildings is not protected as an industrial design because it is not feasible to mass-produce identical buildings from both exterior and interior aspects (e.g., equipment, materials). These works have purely aesthetic value and do not meet the requirement of industrial applicability.

3. The appearance of a product that is not visible during the use of the product.
   Example: A motorcycle engine. Since an industrial design must be the visible external appearance of a product and must have aesthetic characteristics, the shape of parts like a motorcycle engine—which are not visible during use—are not eligible for protection.

According to Article 63 of the Intellectual Property Law, an industrial design shall be protected only when it meets all of the following conditions:

• Novelty on a global scale, meaning it has not been publicly disclosed anywhere in the world, in any form such as publication or use.
• Creative nature, meaning the industrial design must not be easily created by a person with average knowledge in the relevant field.
• Industrial applicability, meaning it is capable of being used as a model for mass production of identical products by industrial or handicraft methods.

According to Clause 4, Article 65 of the Intellectual Property Law, an industrial design is not considered to have lost its novelty if it is disclosed in the following cases, provided that the industrial design application is filed within six months from the date of disclosure:

• The industrial design was disclosed by another person without the permission of the person having the right to register;
• The industrial design was published in the form of a scientific report by the person having the right to register;
• The industrial design was displayed by the person having the right to register at a national exhibition of Vietnam or at an official or officially recognized international exhibition.

According to Article 61 of the current Intellectual Property Law regarding the inventive step of an invention:

An invention is considered to involve an inventive step if, based on technical solutions that have been publicly disclosed through use, written description, or any other form, either domestically or internationally, prior to the filing date or the priority date (in cases where the application claims priority), the invention represents a creative advance and could not have been easily created by a person of ordinary skill in the relevant technical field.

In short, if a person of average skill in the field could easily think of or create the solution, then the solution does not meet the standard of inventive step — and vice versa.

According to Article 16.1 of Decree No. 65/2023/NĐ-CP, before the Intellectual Property Office issues a notice of refusal to accept a valid application, a notice of refusal to grant a protection title, or a decision to grant a protection title, the applicant may, either proactively or upon request by the Intellectual Property Office, amend or supplement the application documents.

However, such amendments or supplements must not broaden the scope of protection disclosed in the original description and set of photographs/drawings, and must not alter the nature of the industrial design stated in the application. In other words, the subject matter presented in the amended photographs/drawings and description must not differ significantly from the industrial design as shown in the original materials.

If the amendments or supplements expand the scope of protection or change the essential nature of the original industrial design, they will not be accepted. In such cases, the applicant must file a new application, and all procedures must start over from the beginning.

The addition of the industrial design of a new product to an existing industrial design application for a product set constitutes an expansion of the scope of protection as disclosed in the original description and set of photographs/drawings. Therefore, such an amendment is not accepted in accordance with Article 16.1 of Decree No. 65/2023/ND-CP.

According to Article 101 of the Intellectual Property Law, each application may only request the grant of one protection title for one industrial design. However, an application may request the grant of a single Industrial Design Patent for multiple industrial designs in the following cases:

• The application seeks protection for the industrial designs of multiple products in a set of products, where each product has a corresponding industrial design. The products in the set must reflect a single common creative idea and must be used together or for a common purpose;

• The application seeks protection for an industrial design of a product together with one or more variants of that industrial design. The first variant must be the basic variant. The variant designs must not differ significantly from the basic variant and must not differ significantly from each other.

According to Article 17 of Decree No. 65/2023/ND-CP, before the Intellectual Property Office issues a decision to refuse acceptance of the application, a decision to grant, or to refuse to grant the protection title, the applicant may proactively or upon the request of the Intellectual Property Office split the industrial design application.

The splitting of an industrial design application is usually carried out when the application contains multiple variants and the designs under these variants are considered significantly different from each other.

The split application(s) will be assigned new application numbers and will retain the original filing date or the priority dates of the original application (if any).

According to Article 4.13 of the Intellectual Property Law, an industrial design is the external appearance of a product. According to Point 21.2 of Circular No. 23/2023/TT-BKHCN, a product is understood as an object, tool, device, or means that is manufactured by industrial or handicraft methods, with a clear structure and function; a component that can be assembled into a complex product is a part capable of independent circulation and can be detached from the complex product; a complex product is a product composed of many replaceable parts that can be disassembled and reassembled.

Therefore, only complete products and parts of products that can be separately detached for independent circulation are subject to industrial design protection. If a part of a product cannot be separated from the product, it cannot circulate independently and thus is not eligible for industrial design protection. Accordingly, partial designs are not protected in Vietnam.

The industrial design protection certificate can be renewed up to 2 consecutive times, each time for 5 years.

To extend the validity of the industrial design protection certificate, within 6 months before the certificate expires, the certificate holder must submit a renewal request to the Intellectual Property Office.

The renewal request can be submitted late but no later than 6 months after the certificate’s expiration date. In this case, the certificate holder must pay the renewal fee plus an additional 10% of the renewal fee for each month of late submission.