Dossier for trademark transfer in Vietnam

Legal grounds

• Law on Intellectual Property 2005 (amended and supplemented in 2009 and 2019);
• Decree 103/2006/ND-CP;
• Circular No. 01/2007/TT-BKHCN;
• Circular No. 16/2016/TT-BKHCN.

Trademark concept in Vietnam

Mark means any sign used to distinguish goods or services of different organizations or individuals. Specifically, a mark is a sign (including a combination of elements such as letters, words, drawings, images, including holograms represented by colors…) used to distinguish goods and services of these organizations and individuals with other organizations and individuals.

Trademark transfer in Vietnam

Concept of trademark transfer in Vietnam

Trademark transfer in Vietnam means the transfer of ownership rights by a trademark owner to another organization or individual.

Form of trademark transfer in Vietnam

An assignment of trademark in Vietnam must be established in the form of a written contract (hereinafter referred to as trademark transfer contract). Contents of a trademark assignment contract include: Full names and addresses of the assignor and of the assignee; Grounds for the assignment; Assignment price; Rights and obligations of the assignor and the assignee.

Conditions for trademark transfer in Vietnam

• Trademark owners may only assign their rights within the scope of protection.
• The assignment of the rights to marks must not cause confusion as to properties or origins of goods or services bearing such marks.
• Rights to marks may only be assigned to organizations or individuals who satisfy conditions for persons having the right to register such marks.

Dossier for trademark transfer in Vietnam

Dossier for transfer of common trademark in Vietnam

To perform a trademark assignment, the parties must first agree and establish a transfer contract. After that, the trademark assignment contract will be registered at the National Office of Intellectual Property (NOIP). Registration documents include:

• Two copies of the written declaration for registration of the contract on transfer of industrial property rights, made according to a set form (not printed herein);
• Two originals or two valid copies of the contract; if the contract is made in a language other than Vietnamese, it must be enclosed with its Vietnamese translation; if the contract consists of many pages, each page must be appended with the parties signatures for certification or every two adjoining pages must be appended with a seal on their inner edges;
• Original protection title;
• Written consent of co-owners to the transfer of industrial property rights, if those industrial property rights are under common ownership;
• Power of attorney (if the dossier is filed through a representative);
• Fee and charge receipts.

Dossier for transfer of collective mark, certification mark in Vietnam

In addition to the above-mentioned documents, an application for registration of a contract for transfer of industrial property rights shall include the following documents: The transferee’s regulations on the use of the collective or certification trademarks;

The regulations on use of collective marks shall contain the following principal contents:

• Name, address, grounds of establishment and operation of the collective organization being the owner of the mark;
• Criteria for becoming a member of the collective organization;
• List of organizations and individuals permitted to use the mark;
• Conditions for use of the mark;
• Measures for dealing with breaches of regulations on use of the mark.

The regulations on use of certification marks shall contain the following principal contents:

• The organization or individual being the mark owner;
• Conditions for using the mark;
• Characteristics of goods or services certified by the mark;
• Methods of evaluating characteristics of goods or services and methods of controlling the use of the mark;
• Expenses to be paid by the mark user for certification and protection of the mark, if any.

Documentary evidences for the transferee’s right to file application in respect to certification or collective trademarks prescribed in Clauses 3 and 4, Article 87 of the Law on Intellectual Property.

In this case, the NOIP shall re-examine the request for right to file applications and regulations on use of trademarks. The applicant must pay fees for application examination in addition to charges and fees for application for registration of contracts for transfer of industrial property rights according to regulations.

File a trademark transfer application in Vietnam

After fully preparing the above documents, the transferor will submit 1 set of these dossiers to the NOIP by direct submission or by post. NOIP will receive and process trademark transfer contract registration applications according to normal order and procedures, completion time from 4 to 6 months.

Customers wishing to register for trademark transfer in Vietnam, please contact Viet An Law Firm for detailed support!