9 Features of the International Design System under the Hague Agreement

Attorney Le Quang Vinh – Bross & Partners

Email: vinh@bross.vn

Vietnam deposited its instrument to join the Geneva Act 1999 of the Hague Agreement concerning the international registration of industrial designs hence since January 2, 2020, Vietnamese individuals, businesses including FDI companies can use the international design system to have your product's design with only 1 international application, 1 language, and 1 single payment registered abroad, ie. up to 79 member countries covering 96 foreign territories. Bross & Partners outlines 9 key features of such international design system as below.

1.     An international application may be submitted in English, French or Spanish either electronically through the e-Hague interface or by using the official form (DM/1) provided by the WIPO.

2.     Unlike an international patent application based on the PCT system, or an international registration of trademark under the Madrid system, which both require an international application be relied upon a respective application filed in the country of origin, the Hague system does not require it. In other words, the international design system does not ask any prior design under the basic registration or basic application filed in Vietnam or any other countries.

3.     An international design application must be accompanied by a set of photographs/drawings of the applied-for design, and a statement of which designated country registration is sought. Particularly, an international design application may contain up to 100 different designs as long as they belong to the same class under Locarno classification. For example, class 09-03 includes boxes, cases, containers, tin cans.

4.     Time limit for international design publication by default is 6 months from the date of its international registration. However, an applicant may request immediate publication or may request a delay of publication (deferment) for a period not exceeding 12 months (under the Hague Act 1960) or up to 30 months (under the Geneva Act 1999) from the filing date or priority date. Kindly note that for Vietnam, a request for deferment is merely granted up to 7 months at maximum.

5.     International design applications need to be submitted together with the design registration fee payable to WIPO in Swiss francs, including 4 main types: basic fee; standard designation fee (level 1, 2 or 3); individual designation fee; and publication fees. For example, if an international application for a design consists of 1 design containing 7 drawings seeking protection in Vietnam, China, France, Germany, Korea and the European Union, government charges would be identified as follows:

6.     Some designated countries reserve their own requirements to comply with their national laws, for example, requiring additional projections (Korea); requirements for the uniformity of the application (USA, Russia, Japan, Vietnam); requiring the applicant to specify the part or position claiming the exclusive right to the design (USA); do not accept publication delay (USA, Russia); accept a publication deferment not more than 30 months (Brunei-12 months, Cambodia -12 months, Singapore - 18 months, and Vietnam – 7 months).

7.     An internationally registered design is valid for the first period of 5 years and may be renewed every subsequent 5 years provided that its total term of protection, at the option of each designated country, is at least 15 years or may be even 50 years at most. Example: Vietnam (15 years), Monaco (50 years), USA (15 years), European Union (25 years), Japan (20 years).

8.     The International Bureau of WIPO (“IB”) acts as an intermediary handling international design applications, specifically the IB only accepts international applications and conducts formal examination (it would check whether photographs/drawings of the design comply with the formality requirements, government fees has been paid in full) before issuance of the international registration number, publishing it in the international design bulletin within 6 months from the date of international registration (except for a deferment request), and transmit the relevant dossier to the designated countries. Substance examination, i.e. assessment of novelty, non-obviousness, and industrial applicability shall be done by the national patent office of each designated country.

9.     A designated country may refuse to protect (in whole or in part) an international design application in a written statement to the IB within six months from the date of design publication made by WIPO. However, where domestic law of a designated country provides for an opposition mechanism then that designated country may apply a period of refusal of 12 months.

Bross & Partners, an intellectual property company ranked First (Tier 1) by Legal 500 Asia Pacific, has experience in registering industrial design in Vietnam and abroad.

Please contact: Vinh@bross.vn; mobile: 0903 287 057; Zalo: +84903287057; Skype: vinh.bross; Wechat: Vinhbross2603.