How to amend IP protection titles in Vietnam

Amending intellectual property (IP) protection titles is an important procedure to update information and an effective tool for protecting owners’ rights. Possessing an accurate and complete title will help clients avoid many unnecessary legal risks. The article below from Viet An Law will help clients better understand the procedures for how to amend IP protection titles in Vietnam.

Cases of amending intellectual property protection titles in Vietnam

Clause 1, Article 97 of the Intellectual Property Law 2005 (as amended and supplemented in 2022) stipulates:

“With the condition of paying fees, the owner of a geographical indication as prescribed in Article 88 of this Law has the right to request the state management agency to amend the information on the protection title”.

Accordingly, cases of amending intellectual property protection titles include:

• Change and correct errors related to the name and nationality of the author, name, and address of the protection title holder, and geographical indication management organization;
• Amend the description of specific characteristics, qualities, and geographical areas bearing geographical indications;
• Amend the regulations on the use of collective marks and the regulations on the use of certification marks;
• Correcting errors in the protection title due to the agency’s fault (in this case, no fees or charges must be paid);
• Narrowing the scope of industrial property rights (in this case, the corresponding industrial property registration application must be re-evaluated for content and the requester must pay a content examination fee).

Dossier for amending intellectual property protection titles

A dossier for amending intellectual property protection titles is a collection of necessary documents to request a competent authority performing how to amend IP protection titles in Vietnam. The dossier requesting to amend IP protection titles includes the following documents:

General Dossier

• Declaration to amend the title of protection of industrial property objects according to Form No. 06 in Appendix II of Decree No. 65/2023/ND-CP: This is the form prescribed by the intellectual property agency, the client must clearly state information about the document that needs to be amended, the content that needs to be amended and the reason for the amendment;
• Original IP protection titles in IP protection title are issued in paper form, in case the applicant only has an electronic copy, there is no need to submit it. The old copy will automatically lose its validity after the amendment is made;
• Power of attorney (in case the request is submitted through a representative);
• Proof of payment of fees (in case of payment of fees via postal service or direct payment to the National Office of Intellectual Property’s account).

Private Dossier

• In case the content requested to be amended is name and address: Document confirming the change of name and address (original or certified copy); decide to change name and address; business registration license records the change of name and address; other legal documents proving the change of name and address);
• In case of a request to change the owner of the Protection Title: Documents proving the transfer of ownership rights (documents proving inheritance, merger, division, separation, consolidation, joint venture, association, establishment of a new legal entity of the same owner, conversion of business form or according to a decision of the Court or another competent state agency);
• In case of a request to change the industrial design: 05 sets of photos or revised drawings;
• In case of a request to change trademark samples: 05 revised trademark samples;
• In case of a request to change a geographical indication: 02 copies describing the nature, quality, and reputation of the product bearing the geographical indication, a map of the geographical area corresponding to the revised geographical indication;
• In case of a request to change a collective mark or certification mark: 02 copies of regulations on the use of collective marks; 02 copies of regulations on the use of revised title marks;
• Documents detailing other amendments.

How to amend IP protection titles in Vietnam

Step 1: Receive dossier to amend IP protection titles

The owner of the IP protection title will prepare 01 set of dossier including the documents as prescribed above.

Step 2: Submit dossier

After fully preparing, the client proceeds to submit the dossier requesting a copy of the trademark document by submitting it directly or by post to the headquarters of the National Office of Intellectual Property.

Step 3: The National Office of Intellectual Property receives and reviews

Within 02 months from the date of receipt of the dossier, the National Office of Intellectual Property will consider the request to amend the IP protection title for the client.

• In case the dossier to amend the protection title is valid: the National Office of Intellectual Property will issue a decision to amend the protection title, and register and publish the Decision to amend the IP protection title in the Property Official Gazette within 60 days from the date of the decision;
• In case the dossier requesting amendment to the protection title is incomplete or invalid: The National Office of Intellectual Property will issue a notice of intention to refuse to accept the amendment, clearly stating the reason and setting a time limit of 02 months from the date of notification for the requester to correct errors or make objections.

Although the procedure for amending IP protection titles objects (patents, industrial designs, trademarks…) has the same purpose of updating information on the titles, still there are certain differences due to the characteristics of each type of protection:

• For patents: Procedures are often more complicated than other types due to the high technical requirements of the invention. The examination and decision time may be longer;
• For industrial designs: Procedures are often simpler than for inventions but still require accuracy in describing the design. Processing times are often faster than inventions;
• For trademarks: Procedures are often more flexible than other types, but need to ensure not to violate the rights of others. Processing time is relatively fast.

State fees for amending protection titles

To complete and be granted a new trademark or brand registration title (after carrying out procedures to amend the certificate), the owner needs to pay all kinds of state fees (applicable to 1 group of a maximum 6 products/service) as specified in Circular 263/2016/TT-BTC, specifically as follows:

• Fee for examination of request to amend protection title: 160,000 VND/protection title;
• Fee for publishing the Decision to amend the protection title: 120,000 VND/application;
• Registration fee for Decision to amend protection title: 120,000 VND/protection title;
• Re-evaluation fee (if requesting to narrow the scope of protection): corresponding to the first examination fee: 550,000 VND/group.

Information clients need to provide when using Viet An Law’s service

When using Viet An Law’s amending IP protection titles service, clients need to provide some important information to ensure the process goes smoothly and accurately. Below is the basic information that clients need to provide:

• Information about titles: Type of title (titles protecting trademarks, patents, industrial designs, integrated circuit layout designs…), registration number, name and address of owner… ;
• Content that needs to be amended: Specifically, what information needs to be amended (name, address, protection products/services,…);
• Reason for amending: Clearly explain why the information needs to be amended;
• Related documents: Notarized copy of an original title or degree, power of attorney (if any)…;
• Other documents: Viet An Law may require additional documents depending on the nature of the case.

To best protect your interests, businesses need a trustworthy client companion. Viet An Law, with a team of experienced lawyers, will support clients in implementing procedures to amend protection titles, helping clients save time, and costs and minimize risks. Viet An Law Firm will provide comprehensive support services, including:

• Legal advice on procedures for amending protection titles; Drafting documents to amend protection titles;
• Submit documents and monitor progress at the National Office of Intellectual Property;
• Exchange and provide information to clients during the process of completing how to amend IP protection titles in VietNam.

Any difficulties and problems related to how to amend IP protection titles in VietNam, please contact Viet An Law for the advice!

Update: 9/2024