Vietnam’s accession to the Hague System (Geneva Act of 2 July 1999) on 30 December 2019 has provided applicants with two options for design protection in Vietnam: filing a national design application (“national application”) or an international design application designating Vietnam under the Hague System (“international application”).
When choosing between these two options, various factors must be considered. One key consideration is the possibility of having to abandon applications, as discussed below.
National Application
In Vietnam, multiple designs can be included in a single application only under specific conditions: (i) a set of articles (e.g., a set of cups and a pot); or (ii) similar designs (embodiments) of the same product, provided the embodiments do not differ in their essential appearance-forming features and only differ in minor appearance-forming features.
If an applicant files a single application for multiple similar designs and the examiner determines that the designs differ significantly, the applicant will be required to file divisional applications. Conversely, if separate applications are filed and the examiner finds the designs to be sufficiently similar, an office action will be issued to require their combination into a single application.
In such cases, one application is retained, while the others are abandoned. The designs from the abandoned applications are then added to the retained application as embodiments. As a result, all embodiments remain effective for design protection.
International Application
In contrast, for international applications, the situation differs. If multiple international applications encounter a similar issue, it is impossible to combine designs (embodiments) into a single application. The applicant must retain one application and abandon the others, without the option to transfer the embodiments from the abandoned applications to the retained one.
Consequently, only the retained application remains effective for design protection.
This distinction arises because the Hague System does not allow for adding designs (embodiments) to an already filed international application, whereas Vietnam’s national application process permits this.
Comments
As noted above, embodiments are similar to each other, differing only in minor appearance-forming features, and thus share essentially the same scope of protection. Therefore, excluding embodiments in international applications may not significantly affect the overall design protection.
By Dinh Thi Thuy Trang
Patent Department