Type of Trademark Transfer in Vietnam

As a valuable intangible asset, a trademark plays an important role in building brand image and customer trust in goods and services. In the business process, trademark transfer may become necessary to accommodate strategic changes, market expansion, or financial considerations. Viet An Law Firm, as an intellectual property representative, will provide you with comprehensive advice on the type of trademark transfer in Vietnam through this article.

What is trademark transfer?

The transfer of industrial property rights is an important mechanism for the practical exploitation of trademarks. According to the Vietnamese Intellectual Property Law 2005, as amended in 2009, 2019, and 2022, the transfer of an intellectual property right to a trademark means the transfer of ownership from the trademark right owner to another organization or individual.

In addition, licensing of an industrial property object means the permission by the owner of such industrial property object for another organization or individual to use the industrial property object within the scope of his/her use right.

Principles of Trademark Transfer

The principles of trademark transfer are stipulated in Article 139 of the current Intellectual Property Law as follows:

• Industrial property right owners may only transfer their rights within the scope of protection.
• The transfer of the rights to marks must not be confused as to properties or origins of goods or services bearing such marks.
• Rights to marks shall only be transferred to organizations or individuals that satisfy conditions for persons having the right to register such marks.

Type of trademark transfer in Vietnam

Partial trademark transfer

When the owner of intellectual property rights transfers a portion of their ownership rights to another individual while retaining some ownership, this is known as a partial trademark transfer. This type of transfer will be agreed upon by the parties in the trademark ownership agreement.

Full trademark transfer (Trademark assignment)

In a full trademark transfer, the entire ownership of the trademark is transferred from one party to another. Once the parties have executed the transfer agreement and the necessary documentation has been filed with and approved by the Intellectual Property Office, the ownership of the trademark is officially transferred, and the certificate of registration is updated to reflect the new owner.

Trademark licensing

Unlike a partial or full trademark transfer, a trademark license agreement grants a licensee the right to use the trademark under specific terms and conditions set by the trademark owner. The licensee does not acquire ownership of the trademark but merely the right to use it within the scope of the license.

Contents of the agreement for transfer of industrial property rights

The agreement for the transfer of industrial property rights is stipulated in Article 140 of the current Law on Intellectual Property, and must have the following main contents:

• Full names and addresses of the assignor and the assignee;
• Transfer bases;
• Transfer price;
• Rights and obligations of the assignor and the assignee.

Trademark transfer procedures

Step 1: The transferring and receiving parties sign a trademark transfer agreement and prepare the necessary documents for filing.

Step 2: The transferring party submits the trademark transfer application to the National Office of Intellectual Property. The application can be submitted in person or by mail to the headquarters in Hanoi or one of the two branch offices in Ho Chi Minh City or Da Nang.

Step 3: The trademark owner pays the fees, including registration fees, publication fees, examination fees, application fees, and related trademark search fees.

Step 4: The National Office of Intellectual Property examines the application. If the application is incomplete, the Office will issue a notice requesting additional information or corrections. If the application is complete, the Office will issue a decision granting the trademark transfer.

Step 5: The National Office of Intellectual Property records the transfer in the National Register of Industrial Property and publishes the decision in the Industrial Property Gazette.

Documents of trademark transfer agreement registration

A registration for the transfer of a trademark shall include the following documents:

• 02 copies of the trademark transfer request form;
• 02 original or certified copies of the trademark transfer agreement;
• A written consent from co-owners if the trademark is co-owned;
• A power of attorney (if the application is filed through a representative such as Viet An Law);
• A copy of the payment receipt for the prescribed fees;
• Other documents as required.
• For registrations to transfer collective or certification marks, in addition to the above documents, the following shall be submitted: (i) The regulations for the use of the collective or certification mark by the assignee as prescribed under Article 105 of the Intellectual Property Law; (ii) Documents evidencing the right of the assignee to apply for a certification or collective mark as prescribed under Clauses 3 and 4 Article 87 of the Vietnam Intellectual Property Law.

In such cases, the National Office of Intellectual Property shall re-examine the requirements for the right to apply and the regulations for the use of the mark. The applicant shall pay an additional examination fee in addition to the prescribed fees for the transfer registrations.

The results of the trademark transfer agreement registration on the Annex of the Certificate

• Certificate of trademark registration with an additional page recording the transfer.
• The recorded content will be recorded according to the transfer agreement between the parties.
• Record additional co-owners of the trademark in case of partial transfer.
• Record related amendments.

Trademark Transfer Service in Vietnam of Viet An Law

Viet An Law Firm provides comprehensive services for trademark transfer, including:

• Representing clients in trademark transfer proceedings;
• Filing and tracking trademark transfer applications at the National Office of Intellectual Property;
• Advising on the negotiation, drafting, and execution of trademark transfer agreements;
• Representing clients in the registration and approval of trademark transfer agreements before competent authorities.

Clients have any questions on the type of trademark transfer in Vietnam, please contact Viet An Law for the fastest and most accurate support!