Industrial design, as an object of industrial property, means a specific appearance of a product embodied by three-dimensional configurations, lines, colors, or a combination of these elements. Industrial design is one of the key factors that attracts consumers to a product, making an important contribution to the success of the product. A product’s beautiful, eye-catching industrial design can be a factor leading customers to prefer using it over another. Therefore, industrial designs are assets of enterprises, which means that, to protect and exploit such assets, the enterprises should take appropriate measures, including registration of the industrial design right.
However, since not all industrial designs are protected, a protected industrial design must fully satisfy the following conditions:
Subject matters that shall not be protected by the industrial design right
The subject matters that shall not be protected as industrial designs are: (i) Appearance of a product, which is dictated by the technical features of the product; (ii) Appearance of a civil or an industrial construction work; (iii) Shape of a product, which is invisible during the use of the product;
For example, the spiral design of construction screws shall not be covered by the industrial design right.
Novelty, inventiveness and industrial applicability
Similar to patents, protected industrial designs must meet the conditions of novelty, inventiveness and industrial applicability. To meet the novelty, it is extremely important to keep the industrial design confidential. An industrial design that are already publicly disclosed, for example, by posting on a company website, advertising in a catalog or in marketing materials shall be considered “losing its novelty.” Vietnamese laws allow a “grace” for proving an industrial design’s novelty, in which if the holder has the right to register for displaying such industrial design at Vietnam’s national exhibition or an official or recognized international exhibition, or publicize it in a scientific report; or if such design is publicized by another person without the consent of the right holder, the industrial design shall not be deemed to have lost its novelty, given that the the industrial design registration application thereof is filed within six months from the date it is publicized. However, it is difficult to provide evidence for this case; therefore, the right holder should keep the industrial design confidential before the filing date of the industrial design registration application.
With regard to the inventiveness of an industrial design, an industrial design shall be considered not involving an inventive step if it can be easily created by a person with average knowledge in the respective field; for example, industrial designs which are a simple combination of known design features, or simply shapes of products and famous or widely-known construction works at home and abroad, or an imitation of widely-known designs such as toy car simulators…)
In addition, a protected industrial design must be susceptible of industrial application, that is, it can be used as a model for mass manufacture of products with appearance embodying such industrial design by industrial or handicraft methods
Industrial designs play a significant role in the successful marketing of a company’s products, being an important constituent of the company’s brand identity. Industrial design right should be considered as a crucial factor in a company’s marketing and market share development strategies.
Read more: The “first to file” principle in the protection of industrial property objects
Disclaimer: This article is for general information only and is not a substitute for legal advice. Apolat Legal is a Vietnamese law firm with experience and capacity to advise on matters related to Intellectual Property Rights. Please click here to learn more about our services and contact our lawyers in Vietnam for advice via email info@apolatlegal.com.
