Written Consent of Co-owners to Transfer Trademark in Vietnam

Consent document is one of the mandatory document in trademark transfer, which is a common activity in the field of commercial business, carried out for many different purposes and reasons of the subjects participating in the transaction such as: no longer needing to use, transferring for economic benefits, transferring to relatives. Trademark transfer or transfer of trademark ownership is the act of the trademark owner transferring ownership of his trademark to another organization or individual. The transfer of the trademark depends on the will of the parties, however, this activity will require the written consent of the co-owner of the trademark in the case where the owner is many different individuals or organizations. In the article below, Viet An Law will provide general legal advice on the written consent of co-owners to transfer trademark in Vietnam.

Is written consent of co-owners to transfer trademark obligated?

Principle of joint ownership of trademark

Trademark co-ownership is a form of joint property ownership in civil law. According to the Civil Code 2015:

“Article 210. Joint ownership

2. Joint owners have equal rights and obligations to the multiple ownership property.

Article 218. Disposal of multiple ownership property

2. Disposal of joint property shall be implemented as agreed by the owners of the property or as provided by law.”

Accordingly, the joint ownership relationship allows the co-owners to have equal rights to dispose of the trademark. Therefore, the transfer of the trademark requires a written document recording the agreement of the co-owners on the transfer of the common property, which is the trademark.

What is a co-owner’s consent to transfer a trademark?

The written consent of individuals or organizations co-owning the trademark transfer is an important legal document to demonstrate the consensus between co-owners in transferring the right to use the trademark.

In cases where a trademark is owned by multiple individuals or organizations as prescribed by the Law on Intellectual Property, this document is often required in the process of transferring trademark ownership, must be drafted following the legal form, and must include the signatures of all relevant parties.

Contents of the written consent of the co-owners to transfer trademark

In the absence of written consent from the co-owner of the trademark, the application, when received and processed, will be considered invalid and will be required to be supplemented so as not to infringe upon the legitimate rights of the owner. When using the services of Viet An Law, we will assist you in drafting written consent from the co-owner of the trademark.

Accordingly, the written consent of individuals or organizations co-owning the trademark transfer must include specific information about the co-owners as well as the protected trademark and a commitment to agree to transfer the rights. The information that needs to be provided may include the following information:

For organizations:

• Organization name; Head office address, contact address (phone number, fax number, email);
• Business registration number/Tax code;
• Information about legal/authorized representative (Name, title, contact address;

For individuals:

• Personal name; Permanent/temporary address, contact address (phone number, email);
• ID card/Passport number;
• Tax code.

Trademark transfer procedures

Step 1: Check the transfer conditions

Viet An Law, upon request, will assist in checking the transfer conditions. Accordingly, to be able to transfer, the following conditions must be met:

• In case the trademark transferor has a trade name that is identical to the transferred trademark, the trade name must be changed before transferring the trademark to avoid conflicts of rights with the transferee.
• Not subject to restrictions on trademark transfer:
• The owner transfers his rights beyond the scope of protection;
• The transfer confuses the characteristics and origin of the goods and services bearing the trademark;
• The organization or individual being assigned does not meet the conditions for a person entitled to register a trademark.

Step 2: The parties agree and establish a trademark transfer contract.

The transferor and the transferee will agree to sign a contract to transfer the trademark registration certificate before drafting and signing the contract. When using the legal services of Viet An Law Firm, we will support you in drafting and checking the transfer contract to ensure the legal basis for the transfer.

A trademark assignment contract must have certain mandatory contents as prescribed, therefore, to have a basis for drafting the contract, please provide the following information:

• Full name and address of the transferor and transferee.
• Transfer basis.
• Transfer price.
• Rights and obligations of the transferor and transferee.

Step 3: Register the contract for transferring the trademark registration certificate at the National Office of Intellectual Property.

The transferor directly or authorizes Viet An Law Firm to submit a complete set of documents and fees to the Intellectual Property Office in the following ways:

• Submit application in person or by post to:
  • Headquarters of the National Office of Intellectual Property in Hanoi. Address: No. 386 Nguyen Trai Street, Thanh Xuan Trung, Thanh Xuan, Hanoi City (Contact number: 3858 3069 )
  • Address in Da Nang: 1st Floor, No. 135 Minh Mang Street, Khue My Ward, Ngu Hanh Son District, Da Nang City. (Contact number: 0236.3889955)
  • Address in Ho Chi Minh City: 7th Floor, Ha Phan Building, 17/19 Ton That Tung, Pham Ngu Lao Ward, District 1, Ho Chi Minh City (Contact number: 028.3920 8485)
• Submit application online through account at the Intellectual Property Office’s online public service portal at: http://dvctt.noip.gov.vn:8888/HomePage.do

Trademark transfer dossier includes the following documents:

• Trademark transfer request form (according to Form 01 in Appendix IV of Decree 65/2023/ND-CP);
• Trademark assignment contract ( original or certified copy as prescribed );
• Written consent of co-owners on the transfer of the trademark, if the trademark rights are jointly owned;
• Power of Attorney to Viet An Law to carry out procedures;
• Copy of documents for payment of state fees as prescribed;
• Other documents (if required).

Step 4: The National Office of Intellectual Property receives and processes trademark transfer applications and returns results.

In the case of valid documents

In case the application for registration of a contract for transfer of a certificate of trademark registration is valid, the Intellectual Property Office shall:

• Decision to record trademark transfer;
• Record in the protection certificate the new owner; in case of transferring part of the list of goods/services bearing the protected trademark, issue a Trademark Registration Certificate to the transferee and determine the limit of the list of goods/services in the original protection certificate for that transferred part;
• Record the trademark assignment in the National Register of Trademark Assignments.
• Announce the decision to record the trademark transfer in the Industrial Property Gazette within 02 months from the date of signing the decision.

In case of invalid documents

In case the application for registration of a contract for transfer of a trademark registration certificate is invalid, the Intellectual Property Office shall carry out the following procedures:

• Issue a notice of intended refusal to register the contract, clearly stating the deficiencies in the application, setting a deadline of 02 months from the date of signing the notice for the applicant to correct the deficiencies or make objections;
• Decide to refuse to register the contract if the applicant fails to correct the deficiencies or corrects the deficiencies but does not meet the requirements, has no objections, or has objections but they are not valid.

Trademark transfer state fees in Vietnam

Above is the advice of Viet An Law on the written consent of co-owners to transfer trademark. If you have any related questions or need support on trademark registration in Vietnam, please contact Viet An Law for the best support!

Updated: 8/2024