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Accepting “Bad Luck” with International Registrations of Trademark or Design Designating Vietnam

posted 2 weeks ago

D&N International – Vietnam

The international registration systems for design (Hague system) and trademark (Madrid system) have been known as the efficient and cost-effective tools for creators and innovators to protect their intellectual property across multiple jurisdictions. Especially, the Office of contracting parties must strictly abide by the examination time limit under the relevant international legal systems which may help reduce delay time for the IP owners during the design or trademark registration in a contracting party. However, the case below that one of our clients recently experienced with its Vietnamese design designation may help IP owners see a big flip side of these mechanisms.

It all started with the unexpected failure of the Office of the contracting party to comply with the time limit

In July 2023, our client requested advice from our attorneys on the legal status of its design application filed in May 2021 under Hague system designating Vietnam. Of note, in this case the refusal was not sent to the IB within six months from the publication date of the international registration (the IR), thus the refusal was disregarded and the IR is deemed to have the same effect as a grant of protection for the industrial design in accordance with the Hague Agreement.

In fact, the client had anticipated the formality defects of the IR such as the drawings of the design was presented in broken lines and accordingly had prepared itself for the IPO’s refusal but then never received the same within the prescribed time limit. To clarify the situation, the client had consulted with the IB (the IB in its turn consulted the national IPO) and was advised that subsequent voluntary amendment of the design for the Vietnamese designation is possible. However, the client wanted to make sure of all legal aspects of this unprecedented case and came to seek legal advice from a reliable local attorney before deciding to proceed further.

Anything advised or done without firm legal basis is full of risk and uncertainty

Having reviewed the matter in the light of current IP Law of Vietnam, we found that the option of an “allowable voluntary amendment” as suggested by the IPO in reply to the IB’s consultation request is highly uncertain and may risk facing an appeal or cancellation by third parties in the future. Considering our advice, the client instructed us to continue discussing directly with the Design Examination Center (DEC) of the IPO to clarify the matter.

As per the client’s request, our attorneys arranged several discussion with the DEC requesting it to review this case again. This rare case then took the DEC several months for internally re-discussing the matter before it gave us the final confirmation that “there are no legal bases for allowing a voluntary amendment to remedy the defects of the design to which the protection has been granted”.

Every coin has two sides

With this final confirmation, our client accepted its “bad luck” caused by the unexpected incident with the IPO’s internal procedures for handling the international application and, to save time and costs, chose not to try filing for a voluntary amendment of the design as it had previously been suggested by the national IPO through the IB.

At the same time, the design owners in unlucky situations like this need to be fully advised of the possible problems that may arise in the future in terms of enforcement, namely, due to the said apparent defects with the description and figures of the design, it would be extremely difficult and reluctant for the Vietnamese enforcement authorities to identify the scope of protection for the design.

This article is also published on our firm’s website at www.dnlaw.com.vn

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