Fee for trademark application assignment in Vietnam

Trademark – a strategic intangible asset of a business, plays an important role in building trademark image, building trust with clients and creating a competitive advantage in the market. Therefore, the transfer of a trademark, whether for the purpose of merger, business sale, change of business direction or any other reason, requires the client to carry out the procedures for transferring the trademark application if any. Trademark assignment is not merely a sale and purchase transaction, but also involves the legal transfer of intellectual property rights. Improper implementation of procedures can lead to serious consequences such as legal disputes, loss of trademark ownership, affecting the reputation of the business and causing economic damage. Viet An Law would like to guide clients about examination fee for trademark application assignment in Vietnam under current law through the article below.

Legal Basis

• Current Intellectual Property Law;
• Decree No. 65/2023/ND-CP stipulates the implementation of the IP law.

What is a Trademark Application?

Assignment of a trademark application is a legal procedure whereby the owner of a trademark in the process of registering a certain trademark decides to transfer the entire ownership of that trademark to another organization or individual. In other words, it is the process of changing the owner of a trademark that is in the process of being registered.

Why is it necessary to transfer a trademark?

There are many reasons for the transfer of a trademark, such as:

• Merger and acquisition of businesses: When a business acquires another business, they will usually transfer the trademarks of the acquired business to themselves to unify the trademark.
• Change in business strategy: A business may decide to stop selling a certain good or service and transfer the trademark associated with that good or service.
• Corporate restructuring: The transfer of a trademark can be part of the corporate restructuring process, in order to optimize operations and enhance business efficiency.

When can a dossier of request for transfer of a trademark registration application be filed?

According to Clause 1, Article 115 of the Intellectual Property Law, it is stipulated as follows:

“Before the State management agency in charge of industrial property rights announces the refusal to grant a protection title or a decision on grant of a protection title, the applicant has the following rights:

a) To amend and supplement the application;

b) Division of applications;

c) Request for recording of changes in the name and address of the applicant;

d) Request for recording of the change of the applicant due to the transfer of the application under a contract, inheritance or inheritance or under a decision of a competent agency;

dd) Converting an application for registration of an invention requiring an invention patent into an application for registration of an invention requiring a utility solution patent and vice versa.”

Thus, the applicant can only transfer the trademark registration application in case the trademark protection title has not been granted

Dossier of request for transfer of trademark registration application

• The request for recording the transfer of the application is made according to Form No. 05 in Appendix II of Decree No. 65/2023/ND-CP regulating the implementation of the IP law.
• The trademark application assignment document (original or certified copy) must contain the principal contents including the name and address of the transferor and the transferee; the number of the application to be transferred or information sufficient to identify it;
• A copy of the charge and fee payment voucher as prescribed (in case of payment of charges and fees via postal service or directly to the account of the state management agency in charge of industrial property rights);
• Power of attorney (in case of filing through an intellectual property representative)

Filing a dossier of request for transfer of a trademark registration application

After preparing the dossier as above, you can apply directly at the Office of the National Office of Intellectual Property in Hanoi or the representative office of the Office in Ho Chi Minh City or Da Nang.

• 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: 7th Floor, Ha Phan Building, 17/19 Ton That Tung, Pham Ngu Lao Ward, District 1, Ho Chi Minh City.
• Representative Office of the National Office of Intellectual Property in Da Nang City, address: 3rd Floor, No. 135 Minh Mang, Khue My Ward, Ngu Hanh Son District, Da Nang City.

Examination fee for trademark application assignment in Vietnam

Process of a trademark application assignment in Vietnam

Receipt of Application and Transfer Documents

• Checking documents: The National Office of Intellectual Property will fully check all documents as prescribed, including the transfer contract and documents proving the transferor’s ownership.
• Determine the time of transfer: The Bureau will determine when to file the transfer application compared to the stages of the initial application process. This will affect the subsequent processing process.

In case of filing a transfer application before publication

• Update Information: The Bureau will update the new owner information to the registration dossier.
• Continued due diligence: The process of due diligence on form and content will continue with the new owner.

In case of filing a transfer application after publication

• Re-examination: The application will have to be re-evaluated from the beginning, including the disclosure of information about the transfer.

Decision-making

• Issuance of protection titles: If all conditions are met, the National Office of Intellectual Property will grant protection titles to new owners.
• Refusal of issuance: If the conditions are not met, the Bureau will issue a decision to refuse the issuance and notify the reason to the new owner.

Clients who need to support the procedures or examination fee for trademark application assignment in Vietnam, trademark registration or trademark renewal, please contact Viet An Law for the fastest support!

Update: 9/2024