Amendment of Trademark Registration Certificate in Vietnam

Trademarks are an indispensable marketing tool in the current context of globalization of businesses’ commercial activities. When the owner has any changes recorded in the Trademark Registration Certificate, he must carry out procedures to change information on the Trademark Registration Certificate and must pay an amendment fee. In the article below, Viet An Law will answer customers’ questions about amendment of Trademark Registration Certificate in Vietnam.

Legal basis

• Law on Intellectual Property 2005, as amended and supplemented in 2009, 2019, 2022.
• Decree No. 65/2023/ND-CP provides detailed regulations on industrial property, protection of industrial property rights, and management of plant varieties.

What is a trademark registration certificate?

Trademarks are signs used to distinguish goods and services of different organizations and individuals. Trademark registration certificate, also known as trademark protection title, is the final result of the trademark registration procedure at the Vietnam National Office of Intellectual Property and is the highest legal document proving ownership rights of the trademark owner.

Cases of amendment of Trademark Registration Certificate

According to Article 29 of Decree No. 65/2023/ND-CP stipulates cases where information on the Trademark Registration Certificate can be amended:

• First, change the owner of the protection title (transfer of ownership due to inheritance, succession, merger, division, separation, consolidation, joint venture, association, establishment of a new legal entity of the same owner, change the form of business or according to the decision of the Court or other competent authority.
• Second, amend the regulations on the use of collective marks and the regulations on the use of certification marks.
• Third, request to reduce one or several goods, services, or groups of goods and services in the list of goods and services recorded in the Trademark Registration Certificate.
• Fourth, remove small details that are excluded elements (not separately protected) but do not change the distinctiveness of the mark recorded in the Trademark Registration Certificate.

Procedures for amendment of Trademark Registration Certificate in Vietnam

Dossier components

According to Clause 4, Article 29 of Decree No. 65/2023/ND-CP, depending on the content that needs to be amended, the application for amendment includes 1 set of the following documents:

• The declaration requesting amendments is made according to Form No. 06 in Appendix II of Decree No. 65/2023/ND-CP, which clearly states the request for recording changes. An amendment request declaration can request the amendment of multiple protection titles if they have the same amended content, provided that the requester must pay the prescribed fee for each protection title;
• Original protection title in case it is issued in paper form;
• Documents confirming the change of name and address (original or certified copy); decide to change name and address; Enterprise registration certificate records the change of name and address; Other legal documents proving the change of name and address (original or certified copy) if the content requested to be changed is name and address;
• Documents proving the transfer of ownership rights (documents proving the inheritance, inheritance, merger, division, separation, consolidation, joint venture, association, establishment of a new legal entity of the same owner, transfer change the form of business or according to the decision of the Court or other competent authority), if requesting to change the owner of the protection title;
• Documents detailing the amended content;
• 02 copies of regulations on the use of collective marks, 02 copies of regulations on the use of amended certification marks (if requesting amendment of collective mark or certification mark); 05 trademark samples (if you request to amend the trademark sample);
• Power of Attorney for Viet An Law (in case the request is submitted through a representative);
• Copy of fee and charge payment documents (in case of payment of fees via postal service or direct payment to the account of the state management agency on industrial property rights).

Number of dossier

The dossier requesting amendment of the Trademark Registration Certificate is submitted to the competent receiving agency, including 1 set of dossiers.

The place to submit the application

Title owners who fall into cases of amending protection titles and fully preparing documents can choose one of the following two forms of submission:

• Form of direct submission: Applicants can submit directly or send by post to the headquarters of the National Office of Intellectual Property in Hanoi or 2 representative offices of the Department in Ho Chi Minh and Da Nang city.
• Online application form: via the Online Public Service Portal of the National Office of Intellectual Property (if applicable at the time of application)

Application processing

Step 1: Prepare and submit documents to the competent authority

Step 2: The state management agency for industrial property rights receives and processes the dossier

• Within 02 months from the date of receipt of the request, the state management agency in charge of industrial property rights must consider the request to amend the protection title according to regulations.

Step 3: Announce the results

• If the request is deemed valid, the state management agency in charge of industrial property rights shall issue a decision to amend the protection title, record it in the protection title, register, and announce the decision to amend the protection title. household in the Industrial Property Official Gazette within 60 days from the date of decision.
• In case the request to amend the protection title is flawed or invalid, the state management agency in charge of industrial property rights shall issue a notice of intention to refuse the amendment request, clearly stating the reason and setting 02 months from the date of notification for the requester to correct errors or make objections.
• If at the end of the set time limit the requester does not fix the errors is unsatisfactory, there is no objection or there is an objection that is not valid, the state management agency regarding industrial property rights, issues a decision to refuse the request to amend the protection title;

Note:

• For requests to amend regulations on the use of collective marks, regulations on the use of certification marks, or requests to reduce one or several goods, services, or groups of goods and services in the list of goods and services stated in the Trademark Registration Certificate or removal of small details are excluded elements (not separately protected) but do not change the distinctiveness of the mark stated in the Trademark Registration Certificate. The corresponding application re-examination procedures are carried out by the regulations on substantive examination and other relevant legal regulations. The re-examination time limit does not count towards the time limit for processing requests to amend protection titles.
• In case of detecting an error in a protection title, the National Office of Intellectual Property shall, on its own or at the request of the person who discovered the error, revoke the defective protection certificate and issue a new protection title.

The fee for amendment of trademark registration certificate in Vietnam

• The person who requests to record changes in the information on the protection title must pay the appraisal fee for the request to amend the protection title, the registration fee, and the fee for publishing the decision to record the amendment to the protection title.
• The person requesting to narrow the scope of protection must pay the examination fee for the request to narrow the scope of protection, the registration fee, and the fee for publishing the decision to amend the protection title.

Industrial property representative – Viet An Law Firm is ready to provide services related to industrial property registration to support you, please contact us to receive the best advice.