AIPPI Study Question - Partial designs. Please answer all questions in Part I on the basis of your Group's current law and practice.

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1 Study Question Submission date: April 27, 2018 Sarah MATHESON, Reporter General Jonathan P. OSHA and Anne Marie VERSCHUUR, Deputy Reporters General Yusuke INUI, Ari LAAKKONEN and Ralph NACK, Assistants to the Reporter General Partial designs Responsible Reporter(s): Yusuke INUI and Ari LAAKKONEN National/Regional Group Contributors name(s) contact Vietnam Nguyen Vu Nam, Nguyen Ha Ly I. Current law and practice Please answer all questions in Part I on the basis of your Group's current law and practice. 1 Is protection given to Partial Designs, and if so, are the laws for the protection of Partial Designs different to the laws for the protection of designs generally? If YES, please explain. According to the Vietnam IP law and regulations, to be registered as an industrial design (ID), the ID must be an appearance of a whole product. A whole product here is interpreted by the laws as a final product for end-user or a component of a final product which is capable of circulation in trade channel independently (sold separately). Therefore, in principle, partial design is not registrable in Vietnam. However, kindly note that, a design for a component which can be sold separately will still be considered/classified as a design for a whole product and accordingly, be registrable in Vietnam (i.e. wing mirrors, car wheels, ). Claiming priority rights for a design application in Vietnam based on a partial design application in Japan or other countries is acceptable provided that the design sought for protection in Vietnam design application is a whole design. 2 How are Partial Designs specified, described and/or graphically depicted? In principle, because partial design is not registrable in Vietnam, all designs to be filed in Vietnam must be presented in solid lines (the broken- Page 1 of 8

2 line/dotted line drawings are not acceptable by the NOIP). For a design for a component (which is sold separately), besides the figures showing the requirement views (front, rear, top, bottom, right, left and perspective views) which must be presented in solid lines, the applicant may submit reference views to clarify the position of this design/component in the Product of which it is a part of. In this case, dotted lines or dashed lines may be used for the Unclaimed Part. 2.a Is there a visual indication, e.g. by dotted or dashed lines, or shading or colouring, of those components that are not included in the Partial Design, i.e. of the Unclaimed Part? As said above, because partial design is not registrable in Vietnam, all designs to be filed in Vietnam must be presented in solid lines (the broken-line/dotted line drawings are not acceptable by the NOIP). 2.b Is there a written description of the Product, of which the Partial Design forms part? It is not necessary to describe of the Product, of which the design for a component (which can be sold separately) forms part. 2.c Can verbal disclaimers be used?* *Verbal disclaimers may be used in Brazil. For example, in the case of a handle for a pan, the entire pan is shown but the applicant may indicate in writing that protection is sought only for the handle. 3 Can a Partial Design forming part of a Product X be infringed by the use of the same Partial Design on a Product Y? If so, please explain any required link or nexus between X and Y. As partial design is not protected in Vietnam, we have no answer to this question. 4 Can a Partial Design forming part of a Product X be considered not novel in view of the same Partial Design in prior Product Y? If so, please explain any required link or nexus between X and Y. Page 2 of 8

3 According to the Article 65, the IP Law of Vietnam, An industrial design shall be considered new if it significantly differs from other industrial designs that are already publicly disclosed through use or by means of written descriptions or in any other form, inside or outside the country, prior to the filing date or the priority date, as applicable, of the industrial design registration application. Therefore, if a design for a component (which can be sold separately) was used/publicly disclosed on a Product Y in advance, this design which forms part of a Product X will still be considered as having no novelty. 5 Please explain if your Groupâ s laws take into account elements outside the scope of the Partial Design (i.e. the Unclaimed Part) when considering the application of Design Constraints, such as must fit / must match exceptions. Under Vietnamese law, because a design for a component which can be sold separately is considered/classified as a design for a whole product, elements outside the scope of this design and must fit/must match exceptions will not be taken into account. II. Policy considerations and proposals for improvements of your Group's current law 6 Are there aspects of your Group's current law or practice relating to Partial Designs that could be improved? If YES, please explain. As partial design is not protected in Vietnam, we have no answer to this question. 7 Is the way of specifying, describing or depicting Partial Designs satisfactory? As mentioned above, partial design is not registrable in Vietnam and there are no provisions regarding protection for partial designs in the IP regulations of Vietnam. 8 Should the Unclaimed Part influence the protection of the parts of the design that are claimed? Please explain why or why not. YES, because the overall impression of one product will be created not only by the Partial Designs but also the Unclaimed Part. In addition, one must refer to the Unclaimed Part to determine the purpose of use and function of the claimed Partial Designs. 9 Should Design Constraints restrict the subsistence and scope of protection of Partial Designs? Please explain why or why not. Page 3 of 8

4 YES, because Partial Design is a Design of a portion or portions of a whole Product, this Partial Design need to be must fit and must match to other parts of the whole Product to create a complete Product. 10 Should the assessment of whether a design is for a portion of a whole Product, i.e. that design is a Partial Design, take into account: 10.a the design as shown and any Unclaimed Part; and/or In our opinion, to assess of whether a design is a Partial Design or not, only the Design as shown and the Unclaimed Part are need to take into account. Portions which are sold separately or together with the Unclaimed Part/the whole Product should all be considered as Partial Designs. 10.b whether the Product is normally sold separately? In our opinion, to assess of whether a design is a Partial Design or not, only the Design as shown and the Unclaimed Part are need to take into account. Portions which are sold separately or together with the Unclaimed Part/the whole Product should all be considered as Partial Designs. 11 Are there any other policy considerations and/or proposals for improvement to your Group's current law falling within the scope of this Study Question? The IP law should be revised to include subject partial design therein. III. Proposals for harmonisation Please consult with relevant in-house / industry members of your Group in responding to Part III. 12 Should a Partial Design be registrable as an independent design? Page 4 of 8

5 13 Is harmonisation of the law of Partial Designs desirable? If YES, please respond to the following questions without regard to your Group's current law or practice. Even if NO, please address the following questions to the extent your Group considers your Group's current law or practice could be improved. 14 Please propose a suitable framework for specifying, describing and/or graphically depicting (a) the Partial Design and (b) the Unclaimed Part. For (a) the Partial Design, using solid lines. For (b) the Unclaimed Part, using dotted lines. 15 Taking the example of a Partial Design for a handle for a pan, and an accused product consisting of a sieve with the same handle, the: Unclaimed Part (UP) of the Partial Design is the pan without the handle; Surrounding Context (SC) is the part of the accused product without the protected Partial Design, i.e. the sieve without the handle, Please explain whether differences between the SC and UP should be relevant when considering the overall impressions of the accused product and the Partial Design, in the following circumstances. In each case, please briefly explain why. 15.a SC is the same as UP NO. Because in case SC is the same as UP, the overall impressions of the accused product and the Partial design will be the same. 15.b SC is not the same as UP, but SC and UP relate to products that are used in the same way YES. Because if SC and UP relate to products that categorized in the same way when registering designs, it is necessary to consider the differences between SC and UP when considering the overall impression of the accused product and the Partial Design. 15.c SC is not the same as UP, but SC and UP relate to products that look the same Page 5 of 8

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7 NO Because SC and UP relate to products that look the same, the overall impression of the accused product and the Partial design may be similar. 15.d SC is not the same as UP, but SC and UP relate to products that categorised in the same way when registering designs YES. Because if SC and UP relate to products that categorized in the same way when registering designs, it is necessary to consider the differences between SC and UP when considering the overall impression of the accused product and the Partial Design. 15.e SC is not the same as UP, and SC and UP are entirely unconnected. NO. In case SC and UP are entirely unconnected, it can be assumed that the Product of which the Partial Design is a part of and the accused product also have no connection. Thus, the overall impression of the accused product and the Partial design will be quite different. 16 In light of your answers to Question 15, please propose appropriate rules specifying whether and how the Unclaimed Part should be taken into account when analysing the overall impression of a Partial Design for both individual character and infringement. When analyzing the overall impression of a Partial Design for both individual character and infringement, it is necessary to assessment the differences between the Unclaimed Part and Surrounding Context of the accused products if the Unclaimed Part and Surrounding Context of the accused products relate to products that have a close relation on functions or being categorized in the same way when registering designs. 17 Please propose appropriate rules specifying whether and how Design Constraints arising from the Unclaimed Part should affect a Partial Design. In particular, please explain whether and how must fit / must match Design Constraints affect Partial Designs. We have no answer to this question. 18 Please comment on any additional issues concerning any aspect of Partial Designs you consider relevant to this Study Question. We have no answer to this question. 19 Please indicate which industry sector views are included in your Group's answers to Part III. Our answers to Part III are stated without referring to any specific industry sector. Page 7 of 8

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