According to Article 93 in Law on Intellectual property, Protection titles are the legal basis arising, it also helps to establish the exclusive ownership of the title of the holder with the marks. Protection titles shall be valid throughout the entire territory of Vietnam. It also shall be valid from the grant date until the end of ten (10) years after the filling date. The validity period shall be extended for many consecutive times and the unlimited number of extension, each extensions is 10 years. (Notes: In case if the trademark holder fails to renew the Certificate within the prescribed time, the Certificate will expire, then the trademark holder shall no longer have the industrial property rights to the trademark according to Law. Trademark has a permanent term of protection, but if the holder wants to protect permanently, the protection title owner shall carry out the procedure for renewal upon 10 years expiration of protection. So how to carry out these procedures? Viet An Law Company shall guide in detail notices of renewing trademark registration in Vietnam below.
When do you need to renew a trademark registration certificate in Vietnam?
According to Circular 01/2007/TT-BKHCN – Article 20.4.b, Modification, change of title holder, narrowing of the protection scope, maintenance validity extension of protection titles with the following notices on the renewal of trademark registration:
- Within 06 months until the expiration date, the Certificate holder shall submit a request for renewal to the intellectual Property Office of Vietnam.
- The Certificate holder shall apply for a late extension, but the deadline for extension shall not exceed 06 months from the date of expiration of the protection term. In this case, the Cerificate holder has to pay the renewal fee, also a late renewal fee (10% of the renewal fee for each late month). The trademark holder should pay attention when need to renew the trademark registration on time to avoid the expiration of the trademark protection title, which can affect the production and business activities.
What do you need to carry out procedure of trademark renewals registration Certificate in Vietnam?
Legal basis in Vietnam law
- Law on Intellectual property, amended and issued in 2019.
- Decree No.103/2006/ND-CP on September, 2006 detailing and guiding the implementation of a number of articles of the law on Intellectual property regarding industrial property.
- Circular No.01/2007/TT-BKHCN on February, 2007 guiding the implementation of the government decree No.103/2006/ND-CP of September 22th ,2006 detailing and guiding the implementation of a number of articles of the law on Intellectual property regarding industrial property.
- Circular No.263/2016/TT-BTC on fees and charges for industrial property and the collection, transfer, management and use thereof.
- Written declaration to request an extension of the protection title validity, made according to a set form (not printed herein) (this document form is in 02-GHVB specified in Appendix C of Circular 01/2007/TT-BKHCN).
- Original Certificate of Trademark Registration (in case it shall be required to record renewal in the Certificate of Trademark registration).
- Receipt of fee payments or charges.
- Power of Attorney (in case of submitting through industrial property representative organization).
Agency where receive and process the documents in Vietnam
- Application for renewal trademark registration Certificate shall be directly submitted at Intellectual Property Office of Vietnam in Hanoi or 02 representative offices in Ho Chi Minh city and Da Nang city. This application also shall be submitted by online.
The time limit for processing an application in Vietnam: 01 month.
Intellectual Property office of Vietnam shall consider the application for extension within 01 month from the date of receipt. However, curently, the actual time to verify a trademark renewal application is about 02 – 04 months.
- In case the application has no deficiencies, Intellectual Property office shall issue a decision on extension, then record it in the protection title, register it and publish it in the Industrial Property office Gazette.
- In case the application for extension is invalid or submitted in contravention of the prescribed procedures, if the applicant is not the protection titleholder, Intellectual Property shall issue a notice of intention to refuse the extension, clearly state the reason and set a period of 01 month from the date of the notice. The applicant needs to correct it and has an objection or not. In within a set time limit, the application can not meet requirements or the applicant has no objection, Intellectual Property shall issue a refusing to extend notice.
The result: The trademark registration certificate is extended for 10 years from the date of expiration of the protection term.
- Renewal shall be done for all product/service groups at the time of registration or only for groups of product/service which are being currently offered.
- Organizations, individuals need to renew the validity of trademark protection for different trademarks at the same time, by an extension application, the organization or individual can apply for renewal for different trademark registration Certificates.
Renewal trademark registration Certificate in Vietnam
Documents that customers need to provide
- Original of the trademark registration Certificate needs renewing (in case the renewal is required to be recorded in the Certificate of Trademark registration).
- Power of Attorney: customers authorized to Viet An Law (provided by Viet An Law).
Documents required when renewing the trademark
- Declaration of validity extension of trademark protection title (02 copies);
- Original trademark registration Certificate;
- In case the application for extension is submitted through Intellectual Property office, the application shall be accompanied by authorization;
- Receipt of fee payments.
Services on procedures for renewing trademark protection titles of Viet An Law
- Advice on procedures and conditions for an extension of trademark protection;
- Draft trademark renewal documents;
- Represent for customers to carry out legal procedures at the Intellectual Property office;
- Apply and track the trademark renewal process;
- Represent for customers in the whole process of establishing and responding to the Intelllectual Property office about renewing the trademark.