Changing applicant of IP registration in Vietnam

Navigating IP registration changes in Vietnam is the key considerations for businesses. The objects of intellectual property relate to patents, useful solutions, meaning solutions to technical problems, or industrial designs, meaning aesthetic creations that determine the external appearance of industrial products. Industrial property is also related to trademarks, trade indications, geographical indications (indications of origin and appellation of origin of goods) as well as the right to prevent unfair competition. Registering industrial property with these subjects is to protect the reputation of the enterprises. In the article below, Viet An Law Firm will summarize the regulations on changing applicant of IP registration in Vietnam.

Regulations on industrial property rights

According to Clause 4 Article 4 Intellectual Property Law industrial property rights means the rights of an organization or individual to inventions, industrial designs, designs of semi-conducting closed circuits, trade secrets, marks, trade names, and geographical indications which such organization or individual created or owns, and the right to prevent unfair competition.

Is it possible to amend the applicant’s industrial property registration?

Amendments to the applicant’s name occur in the following cases:

According to Article 115 of Intellectual Property Law regulating the amendment of applications for registration of industrial property:

• An applicant shall have the right to request the recording of changes in the applicant’s name industrial property registration before the competent State administrative body for industrial property rights notifies a refusal or decides to grant a protection title.
• The applicants for completion of the procedures must pay the state fee.
• Any amendment or supplementation of an application for registration of industrial property must not expand the scope of the subject matter already disclosed or stated in such application, must not change the nature of the subject matter subject to registration stated in the application, and must ensure the uniformity of the application.

Dossier to request a recording of changing applicant of IP registration in Vietnam

In this article, the requirements for recording changes to applicants apply to domestic applications, not to international applications (for example, Madrid applications for trademark registration).

In case of errors or changes in applicant information

According 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 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 Firm);
• Copies of payment invoices of state fees (if any);
• For requests for amendments the application content: 05 samples of marks, the list of goods and services with such marks that meet the formality regulations.
• For requests to change the name, address, and country code of the applicant, the applicant shall submit a confirmation document (original or certified copy) or a legal document (certified copy) proving the changes (decision on changes to the name, address; enterprise registration certificate recording the changes to name, address,…).
• Regarding cases of changing the industrial property representative, the applicant shall submit a statement on changing the industrial property representative.

In case of changing applicant due to transfer the application

According to Article 18 of Decree 65/2023/ND-CP, the dossier for recording changing applicants due to applicant transfer shall be performed as follows:

• A request for the recording of the application transfer following Form 05 Appendix II of Decree 65/2023/ND-CP;
• The industrial property registration application transfer document (original or certified copy) must have the main contents including the names and addresses of the transferor and the transferee; the transferred application number or information sufficient to identify that application;
• Copies of payment invoices of state fee as per regulation (in cases of paying state fees via postal services or directly to the account of the industrial property right authority);
• Request for the recording of changes due to the transfer of several applications of the same applicant may be carried out in the same statement, providing that the payment for examination state fees under regulations corresponding to the number of applications requested for transfer recording is made;
• Request for the recording of changes due to application transfer shall be processed similarly to the processing of a request for amendments or supplements to the application according to Article 16 of Decree 65/2023/ND-CP. If the request for the recording of changes due to the transfer of the mark registration application is submitted after the issuance of the notification of the intended issuance of the protection title, the mark registration application shall be re-examined, and disclosure of the transfer content shall be made. The petitioner shall pay the application examination state fees and disclosure state fees as per regulation.
• Power of attorney for Viet An Law Firm (if applying through industrial property representative Viet An Law Firm);

In case of changing applicant due to inheritance or decision of a competent authority

The recording of changing applicant due to the inheritance or decision of the competent authority shall be performed according to a request based on the asset inheritance during 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. Procedures for requesting the recording of changing applicants in the mentioned cases shall be prescribed in Article 18 of Decree 65/2023/ND-CP.

Therefore, in this case, the applicant proactively amends or supplements the application after the industrial property rights authority approves the valid application, including changes to the legal representative in Vietnam. Procedures for requesting the recording of changing applicants in the mentioned cases shall be performed similarly to the procedures for amending or supplementing applications prescribed in Article 16 of Decree 65/2023/ND-CP regulating cases of errors or changes in applicant information.

How to submit a request recording of changing applicant of industrial property registration

Procedure

Step 1: Receive application

Organizations and individuals apply 01 dossier to request for recording of changing applicants for registration of industrial property objects to the National Office of Intellectual Property.

Step 2: Processing the application

• In case the application has no errors, the National Office of Intellectual Property shall issue a notice of recording the change of applicant and publish it in the Industrial Property Official Gazette if the application has been accepted validly;
• In case the application has errors or is invalid, the National Office of Intellectual Property shall issue a notice of intention to refuse recording of changing applicant, clearly stating the reasons for the requester to correct the errors or express objections. If the requester does not correct the errors or the correction is unsatisfactory, there is no objection or the objection is not valid, the National Office of Intellectual Property shall issue a notice refusing to record the change in the applicant.

Address to apply

• Online through the Information System for handling administrative procedures of the Ministry of Science and Technology;
• Directly or via postal service to the headquarters of the National Office of Intellectual Property in Hanoi or 02 representative offices of the Department in Ho Chi Minh and Da Nang.

State fees

• Charge for assessment of the application for transfer of an application: 160.000 VND.
• Charge for declaration for transfer of an application: 120.000 VND.
• Charge for amendment and supplement applications: 160.000 VND.
• Charge for declaration of the amendment and supplement of an applications: 120.000 VND.

Clients who have related questions or need legal support regarding changing applicant of IP registration in Vietnam in particular and learning more about industrial property applications in general, patent registration, and trademark registration in particular, please contact Viet An Law Firm for the best support!