Declaration form to register Trademark Transfer Contract in Vietnam

Trademark transfer is the transfer of ownership rights by the owner of a collective trademark to another organization or individual. Trademark transfer is a complex legal process that requires a clear understanding of current regulations. This article will guide you through completing the declaration form to register trademark transfer contract in Vietnam to complete the trademark transfer process.

Benefits of trademark transfer

Trademark transfer offers many benefits to both the transferor and the transferee. Here are some of the benefits:

For the transferor

Trademark licensing helps enterprises earn significant profits. By licensing, enterprises can focus resources on core business activities, reduce risks, and increase operational efficiency.

For the transferee

Instead of spending a lot of time and effort building a new brand, buying an existing brand helps businesses quickly enter the market and create prestige. Businesses can also take advantage of the existing customer network to expand the market and increase competitiveness.

Trademark transfer dossier under Vietnam IP Law

Pursuant to Article 58 of Decree 65/2023/ND-CP, the trademark transfer dossier includes the following documents:

• Application form for registration of transfer contract according to form No. 01 in Appendix IV of Decree 65/2023/ND-CP;
• Trademark Transfer Contract;
• Trademark protection title;
• Approval of Co-owners, written explanation of reasons for disagreement of any co-owner, if any;
• Regulations on the use of the trademark of the transferee if transferring a collective trademark or certification trademark;
• Documents proving the transferee’s right to apply for a collective trademark or certification trademark;
• Copy of fee payment documents;
• Power of Attorney to submit application in case of submitting application through a representative.

Instructions on the declaration form to register Trademark Transfer Contract in Vietnam

The declaration form to register the trademark transfer contract is form No. 01 issued with Appendix IV of Decree 65/2023/ND-CP. You can search on websites or receive it from the Department of Intellectual Property or contact Viet An Law to download it.

When filling out the declaration form to register the trademark transfer contract, you need to fill in all the information in the form including:

In Section 1: Applicant information

• Fill in the name, address, and contact information of the applicant. The applicant can be an individual or an organization. If the applicant is an individual, write down the applicant’s citizen identification number. Clearly state the contact phone number and email, if available, to receive information from the National Office of Intellectual Property.
• Select the corresponding box to clearly show whether the applicant is the transferor or the transferee, in which: the transferor is the current owner of the trademark, and the transferee is the individual or organization to which the trademark owner wants to transfer ownership of the trademark.

In Section 2: Information of the applicant’s representative

• Fill in the name, address, and contact information of the applicant’s representative if authorized.
• The applicant’s representative may be the applicant’s legal representative or an industrial property representative service organization authorized by the applicant, or another person authorized by the applicant. Accordingly:
  • The legal representative of the applicant is the person specified in Article 136, Article 137 of the Civil Code 2015. The legal representative of an individual is the parent of a minor, the guardian, or the person appointed by the Court; The legal representative of a legal entity is the person appointed by the legal entity according to the charter, the person with the authority to represent according to the law, or the person appointed by the court. The conditions to become a legal representative are that the person is 18 years of age or older, has full civil act capacity, is not prohibited from establishing and managing an enterprise, does not have a suspended tax code, and does not necessarily have to be a capital contributor to the company.
  • Other authorized persons of the applicant are those who are not the legal representative of the applicant or the industrial property representative service organization.
  • An industrial property representative service organization will represent organizations and individuals before competent state agencies on establishing and ensuring the enforcement of industrial property rights; providing advice on related issues as well as other services related to procedures for establishing and enforcing industrial property rights. An organization that meets the conditions is an enterprise, cooperative, law practice organization, or scientific and technological service organization established and operating following the provisions of law, except for foreign law practice organizations practicing in Vietnam; Having the function of industrial property representative service activities recorded in the Enterprise Registration Certificate, Certificate of Registration of Operation; The head of the organization or the person authorized by the head of the organization must meet the conditions for practicing industrial property representative service. You can refer to the use of the industrial property representative service of Viet An Law Firm, which is also Viet An IP Representative Organization, was established under the Certificate of Registration of Operation No. 01010266/TP/DKTP issued in 2007 by the Department of Justice of Hanoi City, Certificate of Operation No. 41.06.2504/TP/DKHD issued by the Department of Justice of Ho Chi Minh City, Decision No. 1448/QD – SHTT issued in 2007 by the National Office of Intellectual Property of Vietnam.

In Section 3: Subject of the contract

The applicant selects the subject of the contract as the trademark registration certificate and clearly states the protection certificate number.

In Section 4: Information of the second part of the contract

Fill in the name, address, and contact information of the second party to the contract not named by the applicant. The second party to the trademark assignment contract is the other party of the applicant. If the applicant is the assignor, the second party is the assignee, or vice versa.

In section 5: State fees

• Select the types of State fees to be paid; the number of subjects to be charged; clearly state the amount to be paid for each type of fee and charge; the total amount of State fees to be paid according to the application to carry out the procedure for registering a trademark transfer contract.
• State fees that may be payable include Fees for examination of transfer contract registration; Fees for searching for duplicate or similar cases of the same owner to serve the examination of transfer contract registration dossiers; Application examination fee (in case of transferring collective trademarks, certification trademarks); Fee for granting a Trademark Registration Certificate (in case of transferring part of the list of goods/services bearing the trademark); Fee for registering the decision to record the transfer of industrial property rights; Fee for publishing the decision to record the transfer of industrial property rights. In case of submitting the dossier by post and transferring the fee, the applicant must clearly state the document number for checking and comparing the dossier.

In Section 6: Documents required in the application

• Select documents included in the application including declaration; assignment/transfer contract; written consent of co-owners, if any; regulations on the use of trademarks, regulations on the use of certification trademarks of the assignee; documents proving the assignee’s right to file an application for certification trademarks, collective trademarks; protection certificate; authorization document; copy of fee payment receipt; other documents, if any.
• Notes:
  • The declaration form to register the Trademark Transfer Contractclearly states the number of pages;
  • Clearly state the language of the transfer contract. If the contract is in a foreign language, it must be translated into Vietnamese, and clearly state the number of pages of the contract. If the contract has many pages, each page must have the signatures of the parties or a seal on the edge;
  • Clearly state the language of the Power of Attorney. If it is in a foreign language, it must be translated into Vietnamese;
  • There must be regulations on the use of the transferee’s trademark if transferring a collective trademark or certification trademark.

In Section 7: Commitment of the applicant/applicant’s representative

• The applicant/applicant’s representative commits to the information in the application and signs and states his/her full name.

What are the state fees for trademark transfer registration?

State fees for registration of transfer of trademark ownership as prescribed in Circular 263/2016/TT-BTC will include the following:

Note:

Pursuant to Circular 43/2024/TT-BTC, from July 1, 2024, to December 31, 2024, to continue to remove difficulties and support production and business activities, the collection rate is equal to 50% of the fee collection rate according to Circular No. 263/2016/TT-BTC above.

Notes when transferring trademarks

Trademark transfer requires strict compliance with legal regulations. Below are some important notes to be aware of when transferring a trademark:

• Carefully study the provisions of the Intellectual Property Law on conditions, procedures, and restrictions on trademark transfer;
• identify the legal ownership of the trademark, this ensures that the ownership transferred is legal.
• The transferred trademark must not be identical or similar to the remaining trademarks of the transferor;
• The transfer contract must clearly state terms such as the transfer object, transfer value, rights, and obligations of the parties;…
• Carry out full transfer procedures under the provisions of the law;
• Consult a lawyer or intellectual property expert before proceeding to ensure your rights.

Above is the consulting content of Viet An Law on the declaration form to register trademark transfer contract in Vietnam. If you need advice or use the service of performing trademark transfer procedures, please contact us for timely support.

Update: 9/2024