Amendment of trademark protection title in Vietnam

A trademark registration certificate is a title recording information about the trademark owner issued by the Vietnamese National Office of Intellectual Property after submitting a registration application and going through the examination process according to regulations. In many cases, the owner of a protection title needs to change information on the trademark protection title. At that time, it is necessary to carry out procedures to amend the trademark protection title. Viet An Law – Vietnam IP Firm provides trademark registration and trademark renewal services in Vietnam. In this article, we will advise regulations on the amendment of trademark protection titles in Vietnam at a reasonable cost for clients all around the world.

When to amend trademark protection title?

According to the provisions of Article 97 of the Intellectual Property Law 2005, as amended and supplemented in 2022 and Article 29 of Decree 65/2023/ND-CP, the owner of a trademark protection title has the right to request an amendment to the protection title trademark in the following cases:

Modify information on the trademark protection title

• Change in name and address of the owner of the trademark protection title.
• Change of owner of protection title (transfer of ownership due to 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 the decision of the Court or other competent authority).
• Amend regulations on the use of collective marks and regulations on the use of certification marks.

Amendments narrow the scope of protection

The owner of a protection title has the right to request to narrow the scope of industrial property rights: Request to reduce one or several goods, services, or groups of goods and services in the list of goods and services recorded in the Trademark Registration Certificate or removal of small details that are excluded elements (not separately protected) but do not change the distinctiveness of the mark stated in the Trademark Registration Certificate.

Requirements and conditions when amending trademark protection titles

The person requesting to record changes in the information on the Trademark Registration Certificate must pay the examination fee for the request to amend the protection title, the registration fee, and the fee for publishing the decision to record the amendment to the protection title.

In case the amendment narrows the scope of protection, the corresponding industrial property registration application must be re-examined in terms of content and the requester must pay a substantive examination fee.

Specifically, the owner must pay the fee as prescribed in Circular 263/2016/TT-BTC 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-examination fee (if requesting to narrow the scope of protection) corresponding to the first examination fee: 550,000 VND/class.

Dossier requesting amendment of trademark protection title

Dossier requesting amendment of protection title according to Clause 4, Article 29 of Decree 65/2023/ND-CP is as follows:

• The declaration requesting amendment is made according to Form 06 in Appendix II of Decree 65/2023/ND-CP, which clearly states the request for recording changes;
• Original certificate of protection in case the protection title is issued in paper form;
• Documents confirming the change of name and address (original or certified copy): decision on change of name and address; Business registration license records the change of name and address; Other legal documents proving the change of name and address (original or certified copy) if the content requested to be amended is name and address;
• Documents proving the transfer of ownership: documents proving the inheritance, inheritance, merger, division, separation, consolidation, joint venture, association, establishment of a new legal entity of the same owner, transfer change the form of business or according to the decision of the Court or other competent authority if requesting to change the owner of the protection title;
• Documents detailing the revised content;
• 02 copies of regulations on use of collective marks, 02 copies of regulations on use of amended certification marks: If requesting to amend collective marks or certification marks;
• Authorization document: In case the request is submitted through a representative;
• Copy of fee payment voucher: In case of payment of state fees via postal service or directly into the account of the National Office of Intellectual Property.

Procedures for providing services to amend trademark protection titles

Step 1: Clients provide documents and papers

Clients who need it can use Viet An Law’s service of amending trademark protection titles at a good cost.

For Viet An Law to complete the dossier to carry out the service of amending the trademark protection title, clients need to pay attention to providing the following information and documents:

• A trademark registration certificate has been issued.
• Content requested to be amended, what content is proposed to be amended.
• Document detailing the revised content.
• Documents confirming the change of name and address: the decision 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.
• Documents proving the transfer of ownership: documents proving the inheritance, inheritance, merger, division, separation, consolidation, joint venture, association, establishment of a new legal entity of the same owner, transfer change the form of business or according to the decision of the Court or other competent authority.

Step 2: Viet An Law completes and submits application to the National Office of Intellectual Property

Documents submitted directly or via postal service or online to the Vietnam National Office of Intellectual Property or the Department’s Representative Office to request amendments to the protection title.

Methods of filing applications

Paper application form:

The applicant can submit a request to amend the application directly or via postal service to one of the application receiving points of the National Office of Intellectual Property, specifically:

• 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, 135 Minh Mang, Khue My ward, Ngu Hanh Son district, Da Nang City.

Apply by post:

• The applicant needs to transfer money through the postal service, then photocopy the Money Transfer Receipt and send it along with the application dossier to one of the above application receiving points of the National Office of Intellectual Property to prove the amount paid.
• Note: When transferring state fees to one of the above application receiving points of the National Office of Intellectual Property, the applicant needs to send the documents via the corresponding post office to that application receiving point.

Online application form:

• Conditions to apply online: Applicants need to have a digital certificate and digital signature, register an account on the Online Application Receiving System, and have their account approved by the National Office of Intellectual Property to perform transactions and register industrial property rights.
• The applicant needs to declare and submit a request to amend the application on the Online Application Receiving System of the National Office of Intellectual Property, after completing the declaration and submitting the application on the Online Application Receiving System. The system will return to the applicant a Confirmation of online document submission.
• Within 01 month from the date of submitting the online application, the applicant must go to one of the application receiving points of the National Office of Intellectual Property on working days during business hours to present the Confirmation of documents submitted online. route and accompanying documents (if any) and pay state fees as prescribed.

Step 3: The National Office of Intellectual Property reviews and examinates the amendment request

Within 02 months from the date of receipt of the request, the National Office of Intellectual Property must consider the request to amend the protection title.

Step 4: Issue a decision to recognize amendments to the protection title

In case the application is valid:

• If the request is deemed valid, the National Office of Intellectual Property issues a decision to amend the protection title, record it in the protection title, and register it.
• Announce the decision to amend the protection title in the Industrial Property Official Gazette within 60 days from the date of the decision.

In case the documents are incomplete or invalid:

• The National Office of Intellectual Property issues a notice of intention to refuse the request for amendment, clearly stating the reason and setting 02 months from the date of notice for the requester to correct errors or express objections.
• If at the end of the set time limit the requester does not correct the errors or the errors are not corrected unsatisfactorily, there is no objection or there is an objection that is not valid, the National Office of Intellectual Property shall issue a decision to refuse the request to amend the protection title.

Time for processing a dossier for registration of a trademark application amendments request:

02 months.

Amendment of trademark protection title in Vietnam with good cost-effective from Viet An Law

• Search and notify clients in writing of the trademark search results;
• Consulting on cases of amending trademark protection titles;
• Drafting documents to amend trademark registration;
• Representing clients to carry out procedures at the National Office of Intellectual Property;
• Support in monitoring, representing, and resolving objections and feedback to trademark owners;
• Receive official dispatches and certificates and hand them over to clients (if any).

For all questions related to trademark application, trademark registration & trademark renewal in Vietnam, please contact Viet An Law’s low-cost trademark modification service for the best advice and support.