Amending application of Trademark Registration Certificate in Vietnam

Trademarks application are an indispensable marketing tool in the current context of the globalization of businesses’ commercial activities. When the owner has any changes recorded in the Trademark Registration Certificate, he must carry out procedures to change the information on the Trademark Registration Certificate. However, many clients have difficulty preparing documents to amend this Certificate. For advice to clients, Viet An Law Firm would like to present the following article on the amending application of Trademark Registration Certificate in Vietnam.

Legal basis

• Intellectual Property Law 2005, as amended and supplemented in 2009, 2019, 2022;
• Decree 65/2023/ND-CP provides detailed regulations on industrial property, protection of industrial property rights, and state management of plant varieties.

Trademark registration certificate in Vietnam

Trademarks are signs used to distinguish goods and services of different organizations and individuals. To use a trademark, a Trademark Registration Certificate (also known as a trademark protection title) is the final result of the trademark registration procedure at the Vietnam National Office of Intellectual Property. This is considered the highest legal document proving the trademark owner’s ownership rights. After being granted a Trademark Registration Certificate, organizations and individuals will have their trademark rights protected by the state within a certain spatial and time scope.

The trademark registration certificate is valid throughout Vietnam territory, from the date of issue until the end of 10 years from the date of application. This title can be renewed many times, each time for 10 years.

Cases of amending the Trademark Registration Certificate

Amendments to the Trademark Registration Certificate must be made following the provisions of law. Accordingly, based on Article 29 of Decree 65/2023/ND-CP, only in the following cases can the registrant amend the Trademark Registration Certificate:

Change information about trademark registration:

• Change in name and address of the protection title holder;
• Change of owner of protection title (transfer of ownership due to inheritance, inheritance, merger, division, separation, consolidation, joint venture, association, establishment of a new legal entity of the same owner, transformation of business method or according to the decision of the Court or other competent authority);
• Amend the description of the specific characteristics of the regulations on the use of collective marks and the regulations on the use of certification marks.

Request to narrow the scope of protection

The owner of a protection title has the right to request the state authority in charge of industrial property rights to narrow the scope of protection according to the provisions of Clause 3, Article 97 of the Intellectual Property Law in the following cases:

• Request to reduce one or several goods, services, or classes of goods and services in the list of goods and services stated in the Trademark Registration Certificate;
• Removing small details is an excluded element (not separately protected) but does not change the distinctiveness of the trademark recorded in the Trademark Registration Certificate.

Correct deficiencies

In case of detecting any errors in the registration certificate, the National Office of Intellectual Property shall, on its own or at the request of the person who discovered the errors, revoke the defective certificate and issue a Trademark Registration Certificate.

Amending application of Trademark Registration Certificate in Vietnam

According to the provisions of the law on Intellectual Property, the dossier to amend the Trademark Registration Certificate includes:

Some questions related to dossiers for amending the Trademark Registration Certificate

What information does a trademark registration certificate contain?

• Certificate number;
• Owner certificate includes information: Owner’s name and owner’s address;
• Information about the application number and filing date of the trademark registration application;
• Information about registered good/service classes;
• Information on the number of the decision to issue the protection title;
• Information about the validity period of the protection title.

In addition to the Trademark Registration Certificate, what other types of protection titles does Vietnamese law regulate?

Protection title is a term used in intellectual property law to represent the form of recording the protection of the owner’s intellectual property rights. According to the provisions of Clause 3, Article 92 of the Intellectual Property Law, the title to protect intellectual property objects includes:

• Patents;
• Utility solution;
• Industrial design;
• Semiconductor integrated circuit layout design;
• Trademark registration certificate;
• Geographical indication registration certificate.

In case an error is discovered in the Trademark Registration Certificate, who bears the cost of correcting the error?

According to Clause 6, Article 29 of Decree 65/2023/ND-CP, the protection title owner must pay a fee for appraisal of the request to amend the protection title according to the provisions of Clause 1, Article 97 of the Intellectual Property Law and fees. Publish amended information in cases where the protection title has errors that have been announced if such errors are due to the fault of the protection title owner.

If the defection is due to the fault of the state management agency on industrial property rights, the protection title holder does not have to pay that fee.

Trademark registration is the most important and popular method to establish legal ownership of a trademark. Clients who need advice on documents to amend the Trademark Registration Certificate, please contact Viet An Law Firm for the best support.