What Applicants Should Note When Preparing and Filing an International Industrial Design Application Under the Hague System Designating Vietnam

As of 30 December 2019, applicants could use the Hague System to protect their industrial designs in the Contracting Parties to the 1999 Act of the Hague Agreement designating Vietnam. After several years of implementation, we have seen that many international applications (Hague applications) designating Vietnam of foreign applicants have encountered refusal by the Intellectual Property Office of Vietnam (IPVN) for the reasons relating to industrial design description and/or photos/drawings, and unity of applications. Vietnamese law and practice on industrial design protection may differ from those in other countries, especially in term of strict requirements on drawings/photos/specification. This article aims to provide important notes the applicants should pay attention to when preparing and filing Hague applications designating Vietnam to avoid refusal by IPVN.

Industrial design specification

The frequent refusal by IPVN of Hague applications designating Vietnam relating to description of industrial design, specifically the description does not fully disclose the design. An industrial design specification is to describe the features of the industrial design in words. Under current regulations, a design specification comprises:

(i) Similar designs (prior art designs (if any): indication “unknown” is acceptable;

(ii) List of drawings/photos in the following order (for three-dimensional designs): perspective, front, rear, right, left, top, and bottom views. In practice, it is not necessary to follow the required order; any order of views is acceptable.

(iii) Features of the design: the description of features of the design under the regulations is as follows:

The design description should state sufficiently all characteristic features expressing the nature of the industrial design, which are suitable with those shown in the photos/drawings.

The features should be presented including features of shapes, lines, the correlations/proportions/scales among features of shapes and/or lines, and the features of colors (if any); shapes, layout, relative proportions, display sequence, and visual effects of graphic elements on non-physical products.

If the industrial design has different states of use (for example, a product has a lid/cover or it is foldable, etc.), the design in different use states should be described.

If the industrial design includes multiple embodiments (variants), the basic embodiment must be numbered and described first, then the remaining modified embodiments (variants) need to be respectively numbered and described, wherein the different features of each modified embodiment must be explained in comparison with the basic embodiment.

If the industrial design includes a set of products, each of products in the set must be fully described.

Design photos/drawings

The most common basis for IPVN’s refusal relating to drawings/photos of Hague applications designating Vietnam is the lack of one or more required views for 3D designs or the presence of broken lines in the drawings.

For 3D designs, a set of photos/drawings normally requires seven views (perspective, front, rear, right, left, top, and bottom views), which must be in the same scale, same direction, and taken at the right angle. Fewer views may be acceptable, for example:

1. If some views are identical or symmetrical, only one view among the views is required. However, applicants are required to indicate the identity or symmetry of the views in the industrial design specification (in the section listing of photos/drawings as noted above). For example, it is required to indicate “front view and rear view” or “right view and left view” or “front view and back view” when listing the drawings if such views are identical; or indicate “left view (the right view is symmetrical to the left view)” when listing the drawings if such views are symmetrical.
2. Bottom view of a very large product or the thickness view of the product that is very thin might not be required.
3. For packaging, the drawings can include a perspective and only one view in expanded state.

There is no limitation on the number of views. Therefore, views other than seven views listed may be required if it is necessary for understanding the design, for example:

1. For the design of a product which is a part of an integrated product, a view may be required to show how the design is installed and used in the integrated product.
2. If a design of an the integrated product comprises many parts, view(s) showing the parts may be required.

It is important to note that additional views (reference views) (to show the design in the integrated product or specific parts of the design) are for illustrative purposes only; such reference views are not within the scope of protection of the claimed design. Enlarged views, sectional views, expansive views, etc. may also be required for specific cases.

In cases where the industrial design of a non-physical product undergoes shape changes or displacements, this effect can be represented by a sequence of sequential images, each image in the sequence depicting a successive state of the transformation process.

Broken lines are not accepted when they are intended for parts that cannot be seen from specific views. In this case, the broken lines should be deleted. Before 1 April 2026, a partial design – a design a part of an integrated product that is inseparable from the integrated product or can be separated from the integrated product only by destroying the integrated product, is not patentable. Therefore, broken lines intended for partial designs were refused for applications filed before 1 April 2026. However, from 1 April 2026, Vietnam extended protection to partial designs; therefore, broken lines intended for partial designs will not be refused in applications filed from 1 April 2026.

IPVN always requires photos/drawings that are clear and sharp. The background colour of photos must contrast with the colour of design.

Unity of application

Unlike other countries, it is impossible to file a single application for designs of the same Locarno class in Vietnam. A multiple industrial design application is available in the following two scenarios:

1. Designs of embodiments (variants). Embodiments filed in a single application must share a single general inventive concept and must not be significantly different from each other. There is no limitation on number of embodiments in one application.
2. Designs of products in a set of products to be used together or to perform a general purpose.

When IPVN refuses Hague applications on the ground of unity, it is not necessary to file separate applications in Vietnam. Instead, applicants need only declare, in response to the refusal, that they wish to separate the embodiments that do not meet the unity requirements.

Submitting copy of priority application

In addition to the above issues, we would like to note one important formality requirement at IPVN regarding submission of copy(ies) of priority application. Vietnam has not yet been a participating office of the WIPO Digital Access Service (DAS). Therefore, applicants must submit copy(ies) of the priority application certified by the foreign Offices that received the priority applications (in paper format) to IPVN within three (3) months from the publication date of the Hague application. Failure to do so, the priority right will not be recognized.

Conclusion

Foreign applicants are strongly advised to carefully review the above requirements when preparing and filing Hague applications designating Vietnam. In particular, ensuring that the industrial design specification adequately describes all characteristic features, that the drawings and photos meet IPVN’s requirements, and that certified copies of priority applications are submitted within the prescribed deadline, will significantly reduce the risk of refusal by IPVN.

Should you require further assistance in connection with Hague applications designating Vietnam, please do not hesitate to contact us at hanoi@duongtran.vn.