You are using an outdated browser and your browsing experience will not be optimal. Please update to the latest version of Microsoft Edge, Google Chrome or Mozilla Firefox. Install Microsoft Edge

December 7, 2023

Hague Design Applications in Vietnam Still Face Issues

Subscribe to Updates
Managing Intellectual Property

The Hague Agreement Concerning the International Registration of Industrial Designs (the Hague Agreement) officially took effect in Vietnam on December 30, 2019. Since then the Hague Express Database reports that more than 1,300 international design applications have designated Vietnam, and many of them have been examined by Vietnam’s IP Office before a statement of grant of protection was issued. However, from the time the Hague Agreement took effect until the amended Intellectual Property Law took effect on January 1, 2023, there were no legal documents regulating the process and procedures for examining these applications in Vietnam. This caused some difficulties in the examination process and many applications filed from 2020 to date remain in limbo, with the applicants having submitted responses to refusals, but yet to receive further results on the grant or refusal of protection.

The amended IP Law introduced Article 93.9 on the validity of international registrations of industrial designs according to the Hague Agreement. More recently, Decree 65/2023/ND-CP (Decree 65) introduced a new section on the filing and processing of Hague international design applications, with detailed regulations on the handling of Hague applications originating in Vietnam and Hague applications designating Vietnam. These new regulations have generally improved the international application process in Vietnam for both the IP Office and design applicants; however, they have not resolved some existing problems and in some cases have created more burdens for applicants.

Submission of priority documents

Article 24.8 of Decree 65 requires that within three months from the date of the International Bureau’s notification of the Hague Application designating Vietnam, applicants wishing to benefit from a priority must submit documents proving their priority right to the IP Office for approval. This is a completely new requirement that applies to all international design applications designating Vietnam starting from the effective date of Decree 65 (August 23, 2023).

Generally, communication between the IP Office and foreign applicants must be intermediated by an IP agent. As Vietnam currently does not accept electronic priority documents or participate in WIPO’s Digital Access Service (DAS) system, applicants must work with local IP agents to prepare priority documents in paper form and submit them directly at the IP Office. This is a new burden for applicants as they previously only needed to work with the local agent when the application was rejected. In practice, the statutory time limit of three months cannot be extended, and the procedure for receiving priority documents at the IP Office requires clearly indicating the Vietnamese application number corresponding to the international design application. This has caused difficulties for applicants and IP agents, as checking the Vietnamese application number assigned to the international design application is inconvenient.

Unclear regulations on powers of attorney

Though transactions between the IP Office and foreign applicants normally need to go through a local agent, there are no specific regulations on the submission of powers of attorney when the applicant wants to submit priority documents or a response to a notification of refusal for a Hague design application. Currently, the applicant’s responses are all filed via a local agent and are accompanied by a power of attorney. However, the deadline for submitting the power of attorney is unclear, as is the possibility of any deadline extension, creating further challenges.

Processing time after response to notification of refusal

Articles 24.6 and 24.7 of Decree 65 stipulate that, if the applicant’s corrections of defects and/or responses are acceptable, the IP Office will issue a statement of grant of protection. If a three-month period passes without an acceptable response/correction from the applicant, the IP Office will issue a decision to refuse protection. However, there is no regulation on the time limit for the IP Office to provide this further communication. Currently, many applicants have responded to notifications of refusals without receiving any subsequent notification/decision from the IP Office. This makes the applicants uncertain about whether their applications will be protected in Vietnam, and when the registration procedure will actually be completed.

Reproductions of designs accepted for protection are not published

Decree 65 sets out that the IP Office’s statement of grant of protection is to be published in the Industrial Property Gazette within two months from the date of the statement. However, it is unclear whether reproductions of the designs accepted for protection will also be published. Specifically, the content accepted for protection after amendments may not be accessible. We believe that reproductions of designs accepted for protection need to be published and included in the online database of the IP Office to facilitate the public’s access and searches for information.

Other issues

The current regulations do not provide a procedure for voluntary amendments of international designs, (such as amending the descriptions or drawings), assignments, or changes made only for the national phase in Vietnam. In addition, although requirements for industrial design specifications have been reduced under the amended IP Law, they are still not in line with the requirements in other countries. This leads to objections to many specifications of international design applications when entering the national phase in Vietnam; the new regulations are not as favorable for applicants as expected.

As IP practitioners, we hope that the upcoming circular of the Ministry of Science and Technology on industrial property (expected to be issued within December 2023) and the IP Office’s guidelines on industrial design examination will be adjusted to provide a legal basis to resolve the above issues.

This article first appeared in Managing Intellectual Property.

Download Full Article
Related Professionals

Practices

Intellectual Property

Location

RELATED INSIGHTS​ 

July 29, 2022
On July 1, 2022, Myanmar’s Ministry of Commerce issued Notification No. 44/2022, which specifies forms for filings under the 2019 Trademark Law. While the “soft opening” period of Myanmar’s Intellectual Property Department (IPD) is approaching two years and the date of the full opening is still undetermined, this new notification is a substantial development and can be considered progress pointing toward full implementation of the Trademark Law. The notification came with an annex describing the following 19 forms (issued in both Myanmar and English language on the IPD website): Application for Registration of a Mark Appointment of a Representative Request for Reinstatement of an Application Request for Correction of an Application Request for Withdrawal of an Application Request to Limit the List of Goods or Services in an Application Request to Divide an Application Opposition to Registration of a Mark Request to Issue Certified Copies of a Registration Certificate Request for Amendment of Registration of a Mark Request for Renewal of Registration of a Mark Request for Recordation of Transfer of Registration of a Mark Request for Recordation of a License of a Registered Mark Request to Cancel Recordation of a License of a Registered Mark Request for Invalidation of a Registered Mark Request for Cancellation of a Registered Mark Request to Change the Representative Request for Time Extension Application for Appeal The annex provides detailed requirements for each form corresponding to a particular request described in the Trademark Law. However, use and submission of the forms will need to wait for further procedural guidance from the IPD. Now that the authority has issued the forms for matters under the Trademark Law, the next step will be the announcement of fees for each action, after which the IPD will be ready to enter the second phase of its soft
Read More
July 20, 2022
What does “digital health” include within each jurisdiction? Thailand: For the most part, the idea of “digital health” or “telemedicine” has generally fallen within the area of medical device regulation in Thailand. The normal sort of digital health components you would think of—like software and device accessories for diagnosis, monitoring, prevention, or treatment of illnesses—would fall into medical device classification, so long as they do not achieve their intended function by immunological, metabolic, or pharmacological means. The “digital health” devices you commonly think of, like mobile medical apps, wearable technologies and software, fall mainly within this definition. After the last update to the Medical Device Act in 2008, Thailand next looked at digital health in 2019, with the Personal Data Protection Act (PDPA)—which is largely aligned with GDPR principles—and the Cybersecurity Act. These deal with important issues arising from “digital health” and “telemedicine” like personal data protection, consent to use and consent to transfer data, and privacy. Vietnam: Similarly, in Vietnam, while there’s not a clear definition of “digital health” in the law, it is understood to include various types of medical devices, software, and online services used for healthcare purposes—including diagnosis and treatment as well as medical records and telemedicine. There’s no law on digital health, per se, but many of these areas are covered by separate circulars issued by the Ministry of Health. There’s a circular (referred to as “Circular 49”) from late 2017 on telemedicine, for example, that actually uses the term “telemedicine” to identify the industry and sets out licensing and technical requirements. Indicators such as this show that Vietnam is definitely embracing the concept. Indonesia: In Indonesia, there is also no precise definition of “digital health.” Digital health is regulated under several laws and regulations, such as provisions concerning medical devices under the health
Read More
July 12, 2022
Observers in Vietnam were recently captivated by a trademark application filed by a famous singer, Truong Trieu Truc Lan (also known as Nathan Lee), for the mark “CAO THAI SON” for “real estate services” in Class 36, “entertainment and stage performances” in Class 41 and “restaurant services” in Class 43. “Cao Thai Son” is the real name of another famous Vietnamese singer. The application astonished the community not only due to Nathan Lee’s attempt to register another person’s name, but also because Nathan Lee and Cao Thai Son have a longtime rivalry, and after buying copyrights to many of Cao Thai Son’s hit songs, Nathan Lee’s registration of his rival’s own name has obviously deepened the animosity between the two. If this mark is exclusively granted to Nathan Lee, Cao Thai Son’s fans are worried that their idol could no longer use his own name in his performing career due to risks of trademark infringement. Their concern is not groundless in the context that protection of trademarks in Vietnam mostly depends on registration. Rights to non-registered objects, even well-known marks, are still rather difficult to obtain and enforce. However, the right to an individual’s name is a moral right, which cannot be bought, sold, transferred between living people, or inherited. Article 26 of Vietnam’s Civil Code affirms that individuals “have the right to have a full name (including a middle name, if any) … determined by the person’s first and last name at birth,” and that they “establish and perform civil rights and obligations according to their surname and name.” Thus, Cao Thai Son, as an individual, has the right to use his name in civil transactions. He can also use his name in his performances, regardless of whether the trademark “CAO THAI SON” is granted to Nathan Lee,
Read More
July 12, 2022
Before the issuance in late 2019 of the Trade Competition Commission of Thailand’s Guidelines on Unfair Trade Practices in Franchise Businesses, which took effect in February 2020, Thai law made little mention of franchising as a business model—despite the great popularity of franchising in the country. The guidelines, which were issued under the Trade Competition Act B.E. 2560 (2017), partly made up for the absence of a single, codified franchising law in the country and offered valuable direction on how franchisors and franchisees should operate in compliance with Thai law. One of the most significant conditions introduced by the original guidelines in February 2020 was a requirement for franchisors to provide a right of first refusal to their existing franchisees before opening a new franchise outlet within current franchisees’ operating vicinity. An update to the guidelines addressing the right of first refusal was issued in August 2020. Most recently, a second update was announced on July 13, 2021. It was published in the Government Gazette on August 19, 2021, and came into force on the following day. The August 2021 update further revised this provision, and the updated guidelines now adopt a less restrictive approach for franchisors in relation to this first-refusal requirement. Under the updated guidelines, a franchisor who decides to open a new outlet, whether it will be operated by the franchisor or by another franchisee or person, must notify the existing franchisee located in closest proximity to the intended location, and provide the franchisee with a right of first refusal for a period of 30 days. However, the franchisor does not have to provide the closest franchisee with a right of first refusal if the franchisee’s existing performance does not meet the franchisor’s criteria as specified and communicated to the franchisee in advance. In determining what
Read More