Why are some industrial designs terminated even after being granted protection?

Industrial designs play a key role in generating significant revenue for certain businesses, as the visual and aesthetic appeal of a design can strongly influence customers’ decision to choose a product. Industrial design focuses on the decorative aspects of a product, such as shape, configuration, pattern, and color, which help distinguish one product from others on the market. In Vietnam, the process of registering an industrial design is not overly complex; however, there are cases where industrial design protection may be terminated after being granted due to failure to meet certain conditions. In this article, Apolat Legal will introduce the conditions for protecting industrial designs and provide information on cases where industrial designs have been terminated in practice. 

1. Introduction to Industrial Designs and Conditions for Industrial Design Protection 

According to Clause 13, Article 4 of the Intellectual Property Law 2005, as amended and supplemented in 2009, 2019, and 2022 (“IP Law”), an industrial design is the external appearance of a product, represented by shapes, lines, colors, or a combination of these elements. An industrial design is protected if it meets the following conditions: (i) it is novelty; (ii) it is creative; and (iii) it is capable of industrial application. 

Among these conditions, “novelty” is considered a particularly challenging criterion to meet because the industrial design must differ significantly from other designs that have been publicly disclosed in any form, whether through use, written description, or any other means, both domestically and internationally, prior to the filing date or the priority date if the application claims priority. Additionally, the novelty of the design is only satisfied when it meets the conditions specified in Clauses 2 and 3 of Article 65 of the IP Law.  

To conclude whether an industrial design is novel, the minimum required information sources used to assess the “Novelty” standard of the industrial design in the application include the following prior documents: 

• Industrial design applications received by the Intellectual Property Office and published with a publication date earlier than the filing date or priority date of the application under examination (if the application claims priority). 

• Industrial design applications and protection certificates published by other organizations or countries within 25 years before the filing date or priority date of the application under examination (if the application claims priority), which are stored in the current industrial design database at the Intellectual Property Office.

• Other relevant information on industrial designs collected and retained by the Intellectual Property Office.

• Industrial design applications received by the Intellectual Property Office, including international industrial design applications designating Vietnam, with a filing date or priority date (if the application claims priority) earlier than the filing date or priority date of the application under examination (used to verify the first-to-file principle as stipulated in Clause 9 of this Article). 

Accordingly, the Intellectual Property Office has limited the scope of information sources used to assess the “Novelty” standard to include only information that was publicly disclosed before the filing date (or priority date) of the industrial design in the application. An industrial design is considered not to meet the “Novelty” standard if at least one prior industrial design in the Search Report is identified as a duplicate industrial design, as defined in Clause 1, Article 39 of the Regulation, or as an industrial design that does not differ significantly from the industrial design in the application, as defined in Clause 2, Article 39 of the Regulation. Additionally, the prior industrial design must not be one that was disclosed/published under the circumstances specified in Clause 4 of this Article. 

2. Practical cases of termination of industrial design protection due to lack of novelty 

In a recent ruling on March 6, 2024, the General Court of the European Union (EU General Court) addressed a design dispute involving the well-known brand Puma and the prior disclosure of the brand’s shoe design by artist Rihanna. The dispute arose in 2019 when a Dutch footwear wholesaler filed a request to cancel the registered design certificate for Puma’s industrial design No. 003320555-0002. The company argued that at the time Puma filed for registration in July 2016, the design of the shoe had already lost its novelty. Their supporting evidence was a series of photos shared by singer Rihanna on her Instagram in 2014, showing her wearing white Puma shoes with thick black soles, which closely resembled the protected design. These posts were shared to mark Rihanna’s public debut as the Creative Director of Puma. 

Under the European design protection regulations, “novelty” is also a prerequisite for determining whether a design is eligible for protection. Specifically, Article 5 of Council Regulation (EC) No 6/2002 of December 12, 2001, on Community designs stipulates that a design is considered novel if no identical design has been made public: 

• In the case of an unregistered Community design, before the date on which the design for which protection is claimed was first made available to the public; 

• In the case of a registered Community design, before the filing date of the application for the design for which protection is claimed or, if priority is claimed, the priority date.

According to the above regulation, Rihanna’s posting of photos wearing Puma shoes with a design similar to the protected design before Puma filed for registration resulted in the loss of the design’s “novelty.” Therefore, the Court had sufficient grounds to declare the cancellation of the registered design certificate No. 003320555-0002. 

In the above situation, under Vietnamese law, Point b, Clause 1, Article 96 of the Intellectual Property Law also stipulates that a protection certificate may be fully invalidated if the industrial property object does not meet the protection conditions at the time the certificate was granted. However, if Puma’s situation had occurred in Vietnam and Vietnamese IP law were applied to resolve it, there could still be a possibility that the protection certificate for Puma’s shoe design would not be canceled. Specifically, the design would not lose its novelty if it was disclosed under the circumstances specified in Clause 4, Article 65 of the IP Law, provided that the industrial design application was filed within six months from the date of disclosure. Accordingly, it would be necessary to determine whether Rihanna was authorized by the person with the right to register the design to make the disclosure. Although Rihanna debuted as Puma’s Creative Director at that time, it cannot be confirmed whether she had the right to disclose the design intended for registration. If there is evidence that Rihanna had not been authorized to disclose the design by the person with the right to register, the design would not lose its novelty, and the protection certificate would not be canceled. 

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