Legal Basis
- Law on Intellectual Property 2005, as amended in 2009, 2019, and 2022;
- International treaties on intellectual property and industrial designs to which Vietnam is a member, including the Hague Agreement Concerning the International Registration of Industrial Designs.
Nature of Industrial Design Registration Abroad
- Territorial principle: protection is only valid in the country/region where registration is filed.
- Owners may file in one or multiple countries, or through regional/international mechanisms.
- Purpose: to safeguard intellectual property rights, prevent copying, and create competitive advantages in global markets.
Forms of Industrial Design Registration Abroad
Form 1: Direct filing in each country
- Applicants file directly with the national IP office of each country where protection is sought.
- Limitation: procedures are complex, costs are high, and requirements vary by language and currency.
Form 2: Regional filing
- If multiple countries belong to the same regional mechanism, one application can cover all member states. Examples:
- ARIPO (African Regional IP Organization – English-speaking countries);
- OAPI (African Intellectual Property Organization – French-speaking countries);
- Benelux Office for Intellectual Property (Belgium, Netherlands, Luxembourg);
- EUIPO (European Union Intellectual Property Office – EU member states).
Form 3: International registration under the Hague System
- Vietnam is a member of the Hague System administered by WIPO.
- Applicants may file one international application designating member states for protection.
- Advantages: simplified procedures, cost savings, and centralized management of renewals, assignments, or changes of ownership.
Filing Procedures under the Hague System
Option 1: Direct filing with WIPO
Option 2: Indirect filing via the Intellectual Property Office of Vietnam (IP Vietnam)
- Complete Form DM/1 (available from WIPO or IP Vietnam).
- File the application with IP Vietnam and pay the transmittal fee.
- Pay fees as instructed by IP Vietnam for WIPO.
- IP Vietnam forwards the application to WIPO.
Note: When filing via IP Vietnam, the language must be English.
Fees and Scope of Protection
- Fees depend on the number of designs and number of designated countries.
- Example: registering 05 designs in 11 countries via the Hague System costs approximately 900 CHF (~USD 1,049).
- Scope of protection is limited to the designated member states, based on the territorial principle.
Who Is Eligible to File International Applications?
Individuals or organizations that meet one of the following conditions:
- Nationals of a Hague member country;
- Domiciled or resident in a Hague member country;
- Possess a real and effective industrial or commercial establishment in a Hague member country.
Filing Industrial Designs in Europe – Two Options
- Option 1: File separate national applications with each EU member state.
- Option 2: File a single application with EUIPO, designating the desired EU countries. Applicants may file in any official EU language, but in opposition or cancellation proceedings, one of the five procedural languages (English, French, German, Italian, Spanish) must be used.
Conclusion
Registering industrial designs abroad is essential for Vietnamese businesses seeking to protect IP assets and expand their market presence internationally. Depending on their strategy, enterprises may choose direct national filings, regional filings, or international filings under the Hague System.
For detailed advice and assistance in filing industrial design applications abroad, please contact A Dong IP for professional support.
A DONG IP – TRANSLATION – CONSULTANCY COMPANY
Room F2&F3, No. 2 Phung Khac Khoan Street, Sai Gon Ward, Ho Chi Minh City, Viet Nam
Tel: 84-28 3926 0120 – 39260125
Email: consultant@a-dong.com.vn; info@a-dong.com.vn
Website: a-dong.com.vn
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