Address adjustment in trademark registration in Vietnam

The issue of trademark registration is now receiving more and more attention from business subjects. However, during prolonged procedures, the owner sometimes changes information such as name, address, etc. Address adjustment in trademark registration in Vietnam is an administrative procedure in the owner application or the organization representing the application owner shall proceed at the National Office of Intellectual Property when there is a change of address in the trademark registration application. To provide clients with necessary information. In the article below, Viet An Law will guide clients  on address adjustment in trademark registration in Vietnam.

Legal basis

• Law on Intellectual Property 2005, as amended and supplemented in 2009, 2019, 2022;
• Decree 65/2023/ND-CP detailing several articles and measures to enforce intellectual property laws on industrial property, protection of industrial property rights, rights to plant varieties, and state management on intellectual property;
• Circulars263/2016/TT-BTC on regulations on collection rates, collection, payment, management, and use of industrial property fees and charges;

General overview of trademark application

What is a trademark application?

A trademark application is an application to register and establish intellectual property rights for organizations and individuals with the right to register a trademark to register the goods they produce or the services they provide.

According to Clause 3, Article 6 of the Intellectual Property Law 2022, the establishment of industrial property rights to a trademark is expressed through a decision to grant a protection title by a competent Vietnamese state agency or recognize it. International registration according to international treaties to which Vietnam is a member, except in cases where famous trademarks.

Contents of address adjustment in trademark registration in Vietnam

A trademark registration application has many contents, but all contents can be adjusted. Clients often amend the trademark registration application with some of the following content:

• Adjust the name of the owner of the trademark application;
• Adjust the address of the trademark application owner;
• Amend the list of registered goods/services in the direction of eliminating some products/services;
• Change the representative organization of the application owner.

For applications under the Madrid system, clients can make amendments to the trademark registration application with the following contents:

• The late designation (in case of expanding the protected territory);
• Amendment of name and address of the internationally registered owner;
• Narrow the list of goods and services;
• Change of representative;
• Recording international registration transfer;
• Other cases related to the content in the application.

In particular, this article will guide clients specifically in case the address of the trademark application owner changes during the trademark registration process in Vietnam.

Time to amend the address in the trademark registration application

Before two timelines, clients can proceed with the procedure to change the address of the trademark registration application:

• The time when the National Office of Intellectual Property issues an Official Dispatch refusing to accept the application (formality examination);
• The time when the National Office of Intellectual Property issues an Official Dispatch refusing to grant a protection title (substantive examination).

Dossier for address modification in trademark registration application

Pursuant to the provisions of Decree 65/2023/ND-CP, for requests to amend the address of a domestic trademark registration application, the applicant must submit the corresponding amended document, according to the detailed explanation of the amended content compared to the original submitted document, including:

• 02 declarations requesting amendments to industrial property registration applications;
• Legal documents proving the amendment;
• 05 trademark samples, list of goods and services bearing the trademark for the trademark registration application;
• Document confirming the legality of the modification;
• Copy of fee and charge payment voucher (except for cases where fees and charges are paid via postal service or paid directly to the Intellectual Property Office’s account;
• Power of Attorney to Viet An Law for conducting procedures;
• Other documents.

For overseas modification requests:

• Declaration requesting amendment of international trademark registration;
• Declaration form of the International Office;
• Copy of the trademark international registration application;
• Copy of certificate of internationally registered trademark protected in Vietnam;
• Copy of WIPO’s Official Register of International Trademark Registration;
• Copy of decision to accept internationally registered trademark protection in Vietnam;
• Copy of the amended Certificate of Trademark Registration;
• Copy of notice recording amendments to the basic trademark protection application;
• Power of Attorney to submit dossier requesting amendments and supplements to international trademark registration application (if any);
• Copy of fee payment voucher.

Procedures for address adjustment in trademark registration in Vietnam

Step 1: Submit application

After fully preparing a set of dossiers to amend the address of the trademark registration application, the trademark owner can personally or authorize an organization providing industrial property representation services to submit the dossier.

Clients can submit a request to amend the application directly or via postal service to one of the application receiving points of the National Office of Intellectual Property, specifically:

• Head office of the Department of Intellectual Property, address: 386 Nguyen Trai, Thanh Xuan district, Hanoi city ;
• Representative office of the National Office of Intellectual Property in Ho Chi Minh City, address: 7th Floor, Ha Phan Building, 17/29 Ton That Tung, Pham Ngu Lao Ward, District 1, Ho Chi Minh City ;
• Representative office of the Department of Intellectual Property in Da Nang City, address: 3rd floor, 135 Minh Mang, Khue My ward, Ngu Hanh Son district, Da Nang City.

In case of submitting a split application by post, the applicant needs to transfer money through the post office service, then photocopy the Money Transfer Receipt and send it along with the application to one of the above application receiving points of the National Office of Intellectual Property to prove the amount paid.

Step 2: Processing documents

In case of amendments or supplements to the application made on the initiative of the applicant after the state management agency in charge of industrial property rights accepts the valid application, including amendment of legal representative in Vietnam, the request for amendment and supplement must be made according to Form No. 04 in Appendix II of Decree 65/2023/ND-CP.

In the case of amending and supplementing a trademark application, the processing of amendments and additions to the application corresponds to the processing of the corresponding trademark application, but the processing time required for amendments and supplements must not exceed 1/3 of the corresponding examination period.

Thus, the time limit for processing requests to amend and supplement applications is specifically as follows:

• Formality examination: must not exceed 1/3 month from the date of application;
• Substantive examination: no more than 3 months from the date of publication of the valid application.

Fees and charges for amending trademark registration applications

Pursuant to Circular 263/2016/TT-BTC, the person requesting amendments and supplements to the application must pay the following fees:

• Fee for examination of the request for amendment and supplementation of the amended content of the address of the trademark registration application according to regulations and submission of a copy of fee payment voucher: 160,000 VND/01 amended content request;
• Fee for publishing information on amendments and supplements to the application according to regulations if the amended or supplemented content must be announced: 120,000 VND/01 application for amendment in case the trademark application has already had an acceptance decision valid application;
• In addition, in cases where amendments and supplements must be made to correct errors caused by the state management agency on industrial property rights, the applicant does not have to pay a publication fee.

The request to amend the application is submitted after the notice of intention to grant a protection title and payment of fees and charges. In case of changing information related to the nature of the subject matter stated in the application, the application must be re-examined, and collect examination fee for each subject as 550,000 VND/class.

Trademark application amendment service of Viet An Law

To assist clients in amending trademark applications, Viet An Law Firm can assist clients with the application amendment process such as:

• Legal advice on procedures and conditions for amending trademark applications;
• Drafting documents to amend trademark applications;
• Representative submits documents and monitors progress at the National Office of Intellectual Property;
• Exchange and provide information to clients during the process of amending and supplementing orders.

Above is an article about amending trademark registration applications. If you have any related questions, please immediately contact Viet An Law Firm to receive quick and timely support. Best regards!