Late renewal of the trademark registration in Vietnam

A trademark is a valuable intangible asset of an enterprise. Protecting a trademark is one of the top priorities to ensure sustainable development. A trademark is not only a name but also a symbol representing the reputation and quality of products and services. Losing a trademark means losing part of the core value of the enterprise. A trademark is registered and exists under state protection for a certain period. At the end of this period, the enterprise must renew the trademark, but many enterprises are in a situation of renewing their trademarks late. What are the legal consequences of late renewal of the trademark registration in Vietnam? Viet An Law will advise you through the article below.

Validity of Trademark in Vietnam

According to Articles 93, and 94 of the Law on Intellectual Property 2005, amended and supplemented in 2022, the validity of a trademark is stipulated as follows:

Spatial validity

The trademark is valid throughout the territory of Vietnam.

Time validity

• Commencing from the date of issue and lasting until the end of 10 years from the date of application.
• Can be renewed multiple times, each renewal for 10 years.

Trademark renewal period

Standard time as prescribed by law

To extend the validity of the Certificate of Trademark Registration, within 06 months from the date of expiration of the Certificate of Trademark Registration, the joint stock company must submit an application for renewal to the National Office of Intellectual Property.

Late submission may be acceptable

In case the enterprise forgets to apply for renewal within the above-mentioned time limit, the joint stock company can still submit a late renewal application, but not later than 06 months from the date the Certificate of Trademark Registration expires.

Are trademark expirations notified?

The trademark owners are obliged to monitor the status of their trademark and proactively carry out the renewal procedure within 6 months before the Certificate of Trademark Registration expires. Failure to renew after 6 months from the date of expiration of the certificate will not be accepted, at which time the owner will have to bear the legal consequences of not renewing the trademark.

Legal consequences of late renewal of the trademark registration in Vietnam

Pay an additional late renewal fee

• Trademark renewal fee: 100,000 VND/Trademark;
• Fee for assessment of renewal request: 160,000 VND/Trademark;
• Fee for publishing information on industrial property: 120,000 VND/01 renewal application;
• Fee for registering information on industrial property: 120,000 VND/Trademark;
• Trademark usage fee: 700,000 VND/01 class of products, and services.

If an enterprise renews late, it will have to bear the legal consequences of late renewal of trademark, which is to pay an additional 10% late renewal fee for each month of late payment.

Risk of losing trademark ownership

If an enterprise fails to fulfill its obligation to renew its trademark within the time allowed by law, it may suffer the most serious legal consequences, which is the loss of ownership of the trademark:

• Expiration: When the registration expires without being renewed, the trademark will automatically become invalid and become public property, and anyone can register to use it.
• Loss of exclusivity: The enterprise will lose the exclusive right to use the trademark and will not be able to prevent competitors from using the same or similar trademark.

In case of exceeding the allowed late extension period

After the statutory extension period, the owner will be considered to have lost ownership of the registered trademark. However, the trademark is still protected for 03 years after the trademark expires (the old regulation before 2022 was 05 years). In this case, if the owner wants to continue using his trademark, he must re-register the trademark within the above 03-year period.

Procedures for filing for renewal when renewing trademark late

Trademark renewal dossier when renewing trademark late

Implementation agency

National Office of Intellectual Property – Ministry of Science and Technology

Submit application

• Submit online via the Administrative Procedure Information System of the Ministry of Science and Technology.
• Directly or by postal service to the headquarters of the National Office of Intellectual Property in Hanoi or the Office’s 2 representative offices in Ho Chi Minh City and Da Nang.

Process deadline

01 month from the date of receipt of the renewal request:

In case the application is valid, the National Office of Intellectual Property shall issue a decision to extend the validity of the trademark, record it on the trademark (if required), register and publish the decision to extend the validity of the Certificate of Trademark Registration in the Industrial Property Gazette within 60 days from the date of issuance of the decision.

• The National Office of Intellectual Property shall issue a notice of intended refusal to renew, stating the reasons and setting a deadline of 02 months from the date of issuance of the notice for the applicant to correct any deficiencies or to object if one of the following cases occurs: The renewal application is invalid or not submitted under prescribed procedures; The applicant for renewal is not the owner of the corresponding Certificate of Trademark Registration.
• If at the end of the specified period, the applicant fails to correct the deficiencies or fails to correct the deficiencies satisfactorily, has no objections, or has objections that are not valid, the state management agency of industrial property rights shall issue a decision refusing to extend the validity of the Certificate of Trademark Registration.

Note: After the renewal procedure has been completed, in case the joint stock company (owner of Trademark Registration Certificate) requests the state management agency of industrial property rights to record the decision to renew the validity of the trademark, the joint stock company must carry out the trademark amendment procedure and pay state fees according to regulations.

Notes when renewing trademark registration

• Renewal can be done for all product/service classes at the time of registration or only for product/service classes that are still being offered.
• For organizations and individuals who need to renew the trademark protection for many different trademarks at the same time, with one renewal application, organizations, and individuals can register to renew many different Trademark Registration Certificates.

Above is the advice of Viet An Law on late renewal of the trademark registration in Vietnam. If there are any other legal problems related to trademark renewal, please contact Viet An Law for more specific and detailed advice. Sincerely thank you!