Cases of amendment of Trademark Registration Certificate in Vietnam

During the process of registering and using a trademark, the Trademark Registration Certificate may have to be amended according to the provisions of law. However, in reality, many clients have difficulty determining when amendments must be made. In the article below, to answer our clients’ questions, Viet An Law Firm would like to present the following cases of amendment of Trademark Registration Certificate in Vietnam.

Legal basis

• Law on Intellectual Property 2005, as amended and supplemented in 2009, 2019, 2022.
• Decree 65/2023/ND-CP has detailed several articles and measures to implement the Intellectual Property Law on industrial property, protection of industrial property rights, rights to plant varieties, and state management of intellectual property.

Trademark registration certificate in Vietnam

A trademark registration certificate (also known as a trademark protection certificate) is the final result of the trademark registration procedure at the National Office of Intellectual Property of Vietnam. This is considered a legal document proving the owner’s ownership of the trademark. After being granted a Trademark Registration Certificate, organizations and individuals will have their trademark rights protected by the state within a certain scope and time.

The trademark registration certificate is valid throughout the territory of Vietnam, from the date of issuance until the end of 10 years from the date of application, and can be renewed many times in a row, each time for 10 years.

The trademark registration certificate stipulates information about:

• Certificate number;
• Owner’s certificate includes information: Owner’s name and address;
• Information about the application number and filing date of the trademark registration application;
• Information about registered product/service classes
• Information about the number of the decision to issue the trademark registration certificate;
• Information about the validity period of the trademark registration certificate

Cases of amendment of Trademark Registration Certificate in Vietnam

Amendments to the Trademark Registration Certificate must be made by the provisions of law. Accordingly, based on Article 29 of Decree 65/2023/ND-CP, only in the following cases can the registrant amend the Trademark Registration Certificate:

Amending information on protection titles

The trademark registration certificate regulates the information content related to the trademark. Accordingly, when amending the following information, the Trademark Registration Certificate must be amended in the following cases:

• Changes to the name and address of the owner of the protection title; organization managing geographical indications; name and nationality of the author of the invention, industrial design, or layout design;
• Changes to the owner of the protection title (transfer of ownership due to the merger, division, and splitting of juridical persons or joint venture, association, and establishment of new juridical persons of the same owner, trading form conversion, or decision of the Court or other competent authorities);
• Amendments to the description of the specific characteristics of the product with geographical indications, the geographical area corresponding to the geographical indications, regulations on the use of the collective mark, and regulations on the use of the certification mark.

Narrow the scope of protection

The owner of the protection title may request the industrial property right authority to narrow the scope of protection according to Clause 3 Article 97 of the Law on Intellectual Property in the following cases:

• Request for reduction of one or several goods and services from the list of goods and services specified in the Trademark Registration Certificate or elimination of small details that are exclusion elements (not separately protected) not affecting the distinctiveness of the mark specified in the Trademark Registration Certificate;
• Request for reduction of one or several independent points depending on the scope (request) of protection specified in the invention patent or utility solution patent;
• Request for elimination of one or several industrial design schemes, one or several products in the product set in the industrial design patent.

Correct deficiencies

If any deficiency is detected in the protection title, the industrial property right authority shall revoke the protection title with deficiencies and re-issue it with amended information itself or based on the request of the person who detects the deficiency.

Note: According to Clause 6, Article 29 of Decree 65/2023/ND-CP, the owner of the protection title shall pay the fees for the appraisal of the request for amendments to the protection title according to Clause 1 Article 97 of the Law on Intellectual Property and the fees for disclosure of amendment information in case the protection title has deficiencies that have been disclosed if the deficiencies are caused by the owner. If the deficiencies are caused by the industrial property right authority, the owner shall not pay the disclosure fees.

Dossier for amendment of Trademark Registration Certificate

According to the provisions of the law on Intellectual Property, the dossier to amend the Trademark Registration Certificate includes:

Some questions related to cases of amendment of Trademark Registration Certificate in Vietnam

What is the order for amending the Trademark Registration Certificate in the case of changing the name and address of the protection title holder?

• Within 02 months from the date of receiving the owner’s request to amend the protection title, the state management authority on industrial property rights must consider the request to amend the protection title.
• If the request is deemed valid, the state management authority 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 in the Industrial Property Official Gazette within 60 days from the date of the decision.
• In case the request to amend the protection title is flawed or invalid, the state management authority in charge of industrial property rights shall issue a notice of intention to refuse the amendment request, clearly stating the reason, and set a time limit of 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 correct the errors or the errors are unsatisfactorily corrected, there is no objection or there is an objection that is not valid, the state management authority in charge of industrial property rights issues a decision to refuse the request to amend the protection title.

What are the re-examination procedures for requests to amend protection titles in cases of amending regulations on the use of collective marks or regulations on the use of certification marks?

For requests to amend protection titles in cases of amending regulations on the use of collective marks or regulations on the use of certification marks, the law stipulates procedures for re-examination of the corresponding application to be conducted according to the provisions of Article 114 of the Intellectual Property Law and other relevant legal regulations. The re-evaluation time limit does not count toward the time limit for processing requests to amend protection certificates;

Clients who need advice on cases of amendment of Trademark Registration Certificate in Vietnam, please contact Viet An Law Firm – IP Representative in Vietnam for the best support.