Amend trademark registration application in Vietnam

Trademark registration is basically understood as organizations and individuals conducting the necessary legal procedures to determine their exclusive rights to the trademarks of the products and services they are doing business. During the trademark registration process, with long procedure times and objective factors, the applicant cannot avoid changing the content declared in the registration dossier. Through this article, Viet An Law provides practical experiences for clients related to procedures and instructions to amend trademark registration application in Vietnam.

Legal basis

• Law on Intellectual Property 2005, as amended and supplemented in 2009, 2019, 2022.
• Decree No. 65/2023/ND-CP detailing several articles and measures to implement the Intellectual Property Law on industrial property, protection of industrial property rights, rights to plant varieties, and management State on intellectual property.

Need to amend trademark registration application in Vietnam

In Vietnam, when registering a trademark, the applicant and the applicant’s representative must take the following steps:

• Step 1: Submit trademark registration application;
• Step 2: Formality examination;
• Step 3: Publication of valid application (Decision to accept valid application);
• Step 4: Substantive examination;
• Step 5: Notification of granting a Title of Protection or intention to refuse to grant a Title of Protection;
• Step 6: Issue a Trademark Registration Certificate (if eligible for a certificate).

The time from applying for a Trademark Registration Certificate is quite long. During this period, it is inevitable that the information of the organization in the name be modified (when the Company changes its name) or changes are made. change the address, and name of the registered individual, add phone number, email address, add trademark, etc. Therefore, the need to amend the trademark application is not small.

Amendments to trademark applications must comply with regulations on order, procedures, and requirements of the law. Procedures for amending trademark registration applications are newly regulated in Decree 65/2023/ND-CP guiding the revised Intellectual Property Law in 2022, replacing procedures and regulations in Circular 01/2007/TT-BKHCN. Therefore, when performing this procedure, you need to carefully study the updates and seek the support of legal industrial property representatives in Vietnam.

In the following part of the article, we will summarize these contents according to the latest current regulations to inform you.

Scope of declaration to amend trademark registration application in Vietnam

Amendments to applications must be applied in the circumstances and under the statutory procedures, and must meet the following requirements to be accepted:

• Amendments to the registration application must not expand the scope of protection for the mark as shown in the trademark sample and the list of goods and services bearing the trademark;
• The amendment must not change the nature of the subject stated in the application;
• Must ensure the consistency of the application.

Cases of amending trademark applications

Amendments to trademark applications can be made based on:

• The applicant takes the initiative;
• The National Office of Intellectual Property requires amendments by written notice regarding the processing of trademark applications.

Contents that can be amended in a trademark registration application are specified in Article 16 of Decree 65/2023/ND-CP including:

For domestic applications:

• Name, address, country code of the applicant;
• Change of application owner based on inheritance or inheritance of assets (when acquisition, merging, dividing, separating, legal entity, joint venture, association, establishing a new legal entity of the same owner, converting form business) or according to the decision of the Court or other competent authority;
• Narrowing the scope of products and services of the registered trademark;
• Narrowing of registered trademarks;
• Change or cancellation of an authorized industrial property representative service organization;
• Amendment of the original application in case of separation of the trademark application.

For Madrid applications:

• Expansion of protected territory;
• Change the name and address of the internationally registered owner;
• Narrow the list of goods and services;
• Changes representative;
• Receiving transfer of international registration;
• Other cases related to the content in the registration application;

Time limit for amending trademark registration applications

• Amendments to the registration application are made by the applicant before the National Office of Intellectual Property issues a decision to refuse to accept the application (if the application is in the formality examination stage) or before the National Office of Intellectual Property makes a decision to grant/refuse to grant a Trademark Registration Certificate (if the application is in the substantive examination stage).
• The time for the applicant to amend the trademark application is not included in the formality examination time limit and the substantive examination time limit.
• The time limit for processing a request to amend a trademark application does not exceed one-third of the corresponding examination time according to the regulations on formality examination time limit (1 month) and substantive examination time limit (not more than 9 months).

Dossier for amending trademark registration application

Amendment of domestic trademark registration application

Pursuant to Article 16 of Decree 65/2023/ND-CP regulating amendments and supplements to industrial property registration applications,

• Declaration requesting amendment of industrial property registration application (Form No. 04 specified in Appendix II issued with Decree 65/2023/ND-CP);
• Power of Attorney for Viet An Law (if applying through industrial property representative Viet An Law);
• Copy of fee payment voucher;
• For requests to amend the application content: 05 trademark samples, a list of goods and services bearing the trademark that meet the formality regulations.
• For requests to correct errors in the applicant’s name, address, and country code, the applicant must attach an original or certified copy proving the change, specifically a legal document (certified copy) proving the change (decision to change name, address; enterprise registration certificate recording the change of name, address, etc.).
• In case of modification of industrial property representative, the applicant must submit a declaration of change of industrial property representative.

Form of declaration for amending domestic trademark registration application (in Vietnamese)

Amendment of international Madrid trademark application

According to the provisions of Article 26 of Decree 65/2023/ND-CP, requests to be made after a Madrid Application of Vietnamese origin is granted an international registration number can be made directly with the International Bureau or via National Office of Intellectual Property. In case of filing through the state management agency on industrial property rights, the applicant needs to submit the following documents:

• Request declaration according to Form No. 02 in Vietnamese in Appendix II of Decree 65/2023/ND-CP;
• 02 corresponding declarations according to the form of the International Bureau;
• Power of Attorney for Viet An Law in Vietnamese;
• Documents for payment of examination fees for modification, transfer, extension, territory expansion, limitation of the list of goods and services, termination, invalidation of internationally registered trademarks of Vietnamese origin, etc.;
• For requests to amend the application content: 05 trademark samples, list of goods and services bearing the trademark that meet the formality regulations.
• Other relevant documents (if necessary).

Form of declaration amending Madrid application for international trademark registration (in Vietnamese)

Note the case of multiple amendments

The applicant may request amendments and supplements with the same content related to multiple applications with the same type of industrial property right in a declaration or a document requesting amendments and supplements.

Procedures for handling amendment requests

After receiving amendment dossiers, the National Office of Intellectual Property will have to proceed:

• Announce the amended and supplemented contents in case of request to amend or supplement information related to the formally valid application recorded in the decision to accept the valid application; Trademark samples and accompanying list of goods and services;
• The amended and supplemented content is assessed in terms of form according to the provisions of Article 109 of the Intellectual Property Law and relevant legal regulations;
• Conduct a reassessment if the amendment application is filed after there is a notice of intention to grant a protection title and amendments related to the trademark sample, list of goods and services bearing the mark, regulations on the use of collective marks, regulations use certification marks; A description of the specific characteristics of the product bearing the geographical indication and the geographical area corresponding to the geographical indication; or Change of trademark applicant;
• Notice of acceptance or refusal to accept the request for amendments and supplements within 10 days for applications in the formality examination stage, 03 months for applications in the substantive examination stage ;

Fee for amending trademark application

According to the provisions of Decree 65/2023/ND-CP, the person requesting amendments and supplements to the application must pay the following fees:

• Fee for examination of the request for amendments and supplements for each amended content (in case of payment via postal service or direct payment to the account of the state management agency on industrial property rights): 160,000 VND ;
• Fee for publishing information on amendments and supplements to applications according to regulations if the amended or supplemented content must be published: 120,000 VND;
• Re-examination fee (if subject to re- examination according to regulations): 550,000 VND;

Note: In case the amendments and supplements must be made to correct errors due to errors of the state management agency on industrial property rights, the applicant does not have to pay a publication fee.

Above is the content related to the updated regulations to amend trademark registration application in Vietnam. If you need to amend your trademark registration application or carry out procedures related to trademark registration, please contact Viet An Law for the most effective support.