Change IP representative of trademark application in Vietnam

A trademark is a sign to distinguish the products and services of different individuals. The establishment of trademark rights is based on the decision to grant a protection title to the trademark. The process of registering a trademark until the date of the result is a relatively long period (about 10-24 months or more), so the applicant inevitably changes the content in the previous application. In the article below, Viet An Law will answer clients’ questions about the procedure to change IP representative of trademark application 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 implement the Intellectual Property Law on industrial property, protection of industrial property rights, rights to plant varieties, and State management regulations on intellectual property.
• Circular 23/2023/TT-BKHCN detailing several articles of the Intellectual Property Law and measures to implement Decree 65/2023/ND-CP

What is a trademark application representative?

Usually, the person who applies for trademark registration is the trademark owner. When a trademark protection title is granted, the applicant will be recorded as the owner of the trademark protection title. However, in some cases, the application owner authorizes the legal representative, through the intermediary service of an industrial property representation service organization, to make, submit the application, and monitor the status of the application on his/her behalf.

It can be understood that a trademark application representative is an individual or organization recognized by the National Office of Intellectual Property on behalf of the actual application owner to prepare the trademark registration application, submit it, and monitor the status of the application.

Scope of rights and obligations of a trademark application representative and the owner

When applying to register trademark ownership through an authorized representative, the application owner and representative have the same status as the applicant. Therefore, the application owner and the representative are jointly responsible for ensuring the truthfulness of the information and documents provided to the National Office of Intellectual Property during the registration process and the application owner is also responsible for all consequences and obligations arising from the application owner’s representative in transactions with the National Office of Intellectual Property.

According to the provisions of the Law on Intellectual Property, only organizations that have a certificate and are recognized by the National Office of Intellectual Property as intellectual property representatives are considered legal representatives of the application owner through authorized representation. Viet An Law has been recognized as a legal intellectual property representative, clients completely trust Viet An as a representative for trademark registration applications.

Note:

If a trademark protection registration application is submitted through a representative, the application must fill in all required information about the representative along with the representative’s signature and submit a representative authorization according to regulations.

Time to change the representative of a trademark registration application

Article 115 of the Intellectual Property Law 2005, as amended and supplemented in 2022 stipulates that the applicant can amend and supplement the application before the National Office of Intellectual Property issues a notice of refusal to grant a protection title or decides to grant a protection title. Thus, the applicant can change the representative from the time the trademark registration application is submitted until before the National Office of Intellectual Property issues a refusal notice or decides to grant a protection title.

Changing representatives can be understood in the following cases:

• The original trademark registration declaration does not have an industrial property representative, so an amended declaration must be made to add a representative for the applicant.
• The original trademark registration declaration had a representative for the applicant but it was a different organization and the applicant wanted to change to another representative;
• The original trademark registration application had a representative for the applicant, but the real application owner wanted to remove the representative.

According to Point b, Clause 1, Article 16 of Decree 65/2023/ND-CP stipulates that in cases of change IP representative of the trademark application in Vietnam, the applicant will carry out procedures to amend the trademark application.

Procedures for change IP representative of trademark application in Vietnam

Dossier components

Under Clause 2, Article 16 of Decree 65/2023/ND-CP regulating amendments to trademark registration applications, including the following documents:

• 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 state fee payment;
• In case of modifying the industrial property representative, the applicant must submit a declaration of change to the industrial property representative (under Point 2, Clause 2, Article 16 of Decree No. 65/2023/ND-CP)

Fees for requests to change representatives

According to the provisions of Decree 65/2023/ND-CP and Circular 263/2016/TT-BTC, the person requesting to amend or supplement 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 content must be announced: 120,000 VND;

Note: In case an organization or individual applies to amend or supplement an application before receiving notice of acceptance of a valid application, they are not required to pay a publication fee. 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.

Methods of submitting dossier

Direct application form

Applicants can submit a trademark registration 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 National Office 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: 8A/1 Nguyen Canh Chan, Nguyen Cu Trinh Ward, District 1, Ho Chi Minh City.
• Representative office of the National Office 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 trademark application by post, the applicant needs to transfer money through the postal service, then photocopy the Money Transfer Receipt and send it along with the application dossier to one of the above application receiving points of the National Office of Intellectual Property to prove the amount of money paid.

Note:

When transferring fees and charges to one of the above application receiving points of the National Office of Intellectual Property, the applicant needs to send documents via the corresponding post office to that application receiving point.

Online application form

Conditions to apply online: The applicant needs to have a digital certificate and digital signature, register an account on the Online Application Receiving System, and have the account approved by the National Office of Intellectual Property to perform industrial property rights registration transactions.

Online application procedure: The applicant needs to declare and submit a trademark application on the online application receiving system of the National Office of Intellectual Property, after completing the declaration and submitting the application on the Online Application Receiving System, the System will return to the applicant a Confirmation of online document submission. Within 01 month from the date of submitting the online application, the applicant must go to one of the National Office of Intellectual Property’s application reception points on working days during business hours to present the online document confirmation form and accompanying documents (if any) and pay fees as prescribed. If the documents and fees/fees are complete as prescribed, the officer receiving the application will assign an application number to the Declaration on the online application receiving system. If there are not enough documents and fees as prescribed, the application will be refused.

In case the applicant does not complete the application procedure as prescribed, the online documents will be canceled and a notice of online document cancellation will be sent to the applicant on the Online Application Receiving System.

Procedure for handling representative change requests

Step 1: Apply to amend the trademark registration application to the National Office of Intellectual Property.

Step 2: After applicant pay state fees, the National Office of Intellectual Property receives the application to amend the trademark registration application and processes it.

Step 3: Processing results

• In case the dossier has no errors, the National Office of Intellectual Property will issue a notice recording amendments and supplements to the trademark registration application.
• In case the application has errors or is invalid, the National Office of Intellectual Property will issue a notice of intention to refuse to record amendments and supplements to the trademark application. It clearly states the reasons so that the applicant can correct errors or have objections. If the applicant does not correct errors or the correction is unsatisfactory, there are no objections or the objections are not valid, the National Office of Intellectual Property will issue a notice of refusal to amend or supplement the trademark registration application.

Services of Viet An Law in the field of representing intellectual property applications.

• Consulting on establishing rights for trademark registration applications, copyrights, industrial designs, inventions, utility solutions, geographical indications,… in Vietnam and abroad;
• Consulting on extending protection titles for trademarks, industrial designs, inventions, and utility solutions;
• Consulting on assessment of intellectual property infringement;
• Consulting on procedures for transferring applications and transferring diplomas related to trademarks, industrial designs, inventions, and utility solutions;
• Opposing applications for granting certificates for applications for registration of trademarks, industrial designs, inventions, and utility solutions;
• Search the status of trademark use, and declare trademark invalidation in Vietnam;
• Consulting and representing owners to complain and handle violations related to ownership of trademarks, industrial designs, inventions, and utility solutions;
• Consulting on licensing/technology transfer contracts related to intellectual property rights;
• Commercial franchising and transfer of ownership rights related to trademarks, industrial designs, inventions, and utility solutions;

Above is information about the change IP representative of trademark application in Vietnam. If you have any questions or need answers, please contact Viet An Law Firm – IP Representative in Vietnam to receive the best support. Best regards!