Renewal trademark registration neglect in Vietnam

To extend the validity of the Trademark Registration Certificate, within 06 months before the date of expiration of the protection title, the owner must submit an application for extension to the National Office of Intellectual Property. However, in reality, for many reasons, the owner of the protection title forgets to renew the trademark registration. In the article below, Viet An Law Firm will provide advice to clients on how to resolve the situation on renewal the trademark registration neglect in Vietnam.

When must trademark registration be renewed?

Renewal trademark registration is understood as when the trademark expires, the trademark owner or authorized intellectual property representative organizations carry out the procedure to renew the Trademark Registration Certificate.

Pursuant to Clause 6, Article 93 of the Law on Intellectual Property 2005, amended and supplemented in 2022:

• The certificate of trademark registration is valid from the date of issue until the end of 10 (ten) years from the date of application.
• A certificate of trademark registration may be renewed multiple times in a row for all or part of the list of goods and services. The validity period of each renewal is 10 (ten) years.

To be able to renew a trademark registration, it is necessary to meet the requirements and conditions within 06 months before the date the Certificate of Trademark Registration expires. The owner of the Certificate must submit an application for renewal.

Trademark renewal not only helps ensure the owner’s legal ownership through the Certificate but also promotes the stability and strength of the owner’s brand in the market.

Can a trademark registration be renewed late if it is forgotten?

In case of forgetting to renew within 6 months before the expiration of the trademark, the intellectual property law allows the owner’s request for renewal to be submitted later than the above deadline but not later than 06 months from the date the Certificate of Trademark Registration expires and the owner of the Certificate must pay the renewal fee plus 10% of the renewal fee for each month of late submission.

Pursuant to Clause 3, Article 31 of Decree 65/2023/ND-CP, the owner of a Trademark Registration Certificate may apply for a late renewal if the late renewal meets the following conditions:

• Duration conditions: The application for extension may be submitted later than the prescribed duration but must not exceed 06 months from the date the Certificate of Trademark Registration expires;
• Fee conditions: The owner of the Certificate must pay a total fee including the renewal fee plus 10% of the renewal fee for each month of late payment.

Notes:

When the validity of the Certificate of Trademark Registration has not been renewed within the above duration, even when the trademark renewal period has expired, customers can still be assured of owning the trademark after 03 years from the expiration date (pursuant to the provisions of the amended Law on Intellectual Property in 2022, shorter than the previous regulation of 05 years).

If you promptly re-submit a new trademark registration application within 03 years from the date of expiration of the Certificate of Trademark Registration, you may be re-issued a Certificate of Trademark Registration due to the priority right for the applicant who has been granted a certificate within 03 years from the date of expiration.

Dossier requesting renewal trademark registration neglect in Vietnam

• Application form for extension of validity of certificate (according to Form No. 07, Appendix II, Decree 65/2023/ND-CP);

• Original Trademark Registration Certificate:

• • In case of request to record the extension on the Trademark Registration Certificate
  • In case the Certificate is issued in paper form;

• Power of attorney (in case of application through a representative);
• Copy of fee payment receipt (in case of payment via postal service or direct payment to the account of the National Office of Intellectual Property).
• Power of attorney for Intellectual property representative – Viet An Law to represent and carry out procedures.

What to do if forgetting to renew trademark registration?

If the trademark registration is forgotten to be renewed within the prescribed duration, the owner of the Certificate of Trademark Registration can carry out a late renewal according to the following procedures:

Step 1: Prepare documents and dossier for extension application

The owner of the Certificate or Viet An Law, upon the authorization request of Clients, will prepare the dossier for renewal trademark registration neglect in Vietnam.

Step 2: Submit dossier, documents for renewal and fee

The owner of the Certificate or Viet An Law, upon the authorization request of Clients, shall submit the application for renewal of the Trademark Certificate in the following methods:

• Submit directly or by post to one of the following addresses of the Intellectual Property Office:
• Submit renewal dossier online through the Online Public Service Portal of the Intellectual Property Office of Vietnam at the link: http://dvctt.noip.gov.vn. Note: To renew in this way, customers need a digital signature (also known as USB Token) and must register an account on the Online Public Service Portal.

Trademark renewal fee

According to Circular 263/2016/TT-BTC amended and supplemented by Circular 31/2020/TT-BTC and Circular 63/2023/TT-BTC, trademark registration renewal fees and charges that must be submitted with the application include:

• Renewal fee: 100,000 VND/class
• Late renewal fee: 10% renewal fee/each month late
• Fee for request for extension assessment: 160,000 VND/certificate
• Fee for using Certificate: 700,000 VND/class
• Fee for publishing the Decision on recording the extension: 120,000 VND/application
• Registration fee for Decision to extend the validity of Certificate: 120,000 VND/certificate.

Note: According to Circular 43/2024/TT-BTC, from July 1, 2024 to December 31, 2024, the fee collection rate is 50% of the fee collection rate according to Circular 263/2016/TT-BTC above. Thus, the current fee collection rate for validity extension is 50,000 VND/class.

Step 3: The NOIP reviews the dossier and returns the result

Within 01 month from the date of receipt of the application for extension, the Intellectual Property Office shall review the application and carry out the following procedures:

In case of valid dossier

• The National Office of Intellectual Property shall issue a decision to extend the validity of the certificate, record it in the certificate (if requested), register and publish the decision to extend the validity of the Certificate of Trademark Registration in the Industrial Property Gazette within 60 days from the date of issuance of the decision.
• After the renewal procedure has been completed, in case the owner of the Certificate of Trademark Registration requests the state management agency of industrial property rights to record the decision to extend the validity of the certificate, the owner of the certificate must carry out the procedure to amend the certificate and pay the prescribed fees and charges.

In case of invalid dossier

The National Office of Intellectual Property shall issue a notice of intended refusal to extend, stating the reasons and setting a deadline of 02 months from the date of issuance of the notice for the applicant to correct the deficiencies or make an objection if one of the following cases applies:

• The extension request is invalid or submitted without following proper procedures;
• The person requesting the renewal is not the owner of the corresponding Certificate of Trademark Registration.

If at the end of the specified duration the applicant fails to correct the deficiencies or fails to correct the deficiencies satisfactorily, has no objections or has objections that are not valid, the National Office of Intellectual Property shall issue a decision to refuse the extension.

Above is the advice of Viet An Law about renewal trademark registration neglect in Vietnam. If you have any related questions or need support, please contact Viet An Law for the best support!

Update: 8/2024