Procedures for registration of a trademark assignment contract in Vietnam

Grounds for the establishment of intellectual property rights to mark in Vietnam

Industrial property rights to mark shall be established on the basis of a decision of the competent State body to grant a protection title in accordance with the registration procedures stipulated in this Law or the recognition of international registration pursuant to an international treaty of which the Socialist Republic of Vietnam is a member. In the case of a well known mark, industrial property rights shall be established on the basis of use and shall not be dependent on registration procedures.

Trademark transfer contract in Vietnam

Grounds for the establishment of trademark transfer contract in Vietnam

After being granted a protection title, the trademark owner has the right to transfer his/her trademark to other organizations or individuals through the form of trademark assignment. The transfer must be made in the form of a written contract. Therefore, when transferring a trademark, the parties will have to negotiate and establish a trademark assignment contract.

Validity of trademark transfer contract in Vietnam

A trademark assignment contract in Vietnam is only valid when it has been registered at the state management agency in charge of industrial property rights. After the parties have agreed on a contract, the transfer contract must be registered at the National Office of Intellectual Property in accordance with law.

Contents of the trademark assignment contract in Vietnam

A trademark assignment contract in Vietnam must contain the following principal contents:

• Full names and addresses of the assignor and of the assignee;
• Grounds for the assignment;
• Assignment price;
• Rights and obligations of the assignor and the assignee.

Procedures for registration of a trademark assignment contract in Vietnam

Step 1: Prepare documents

Dossier for registration of a trademark assignment contract in Vietnam include:

• Two copies of the written declaration for registration of the contract on transfer of industrial property rights, made according to a set form prescribed in Circular No. 01/2007/TT-BKHCN;
• Two originals or two valid copies of the contract; if the contract is made in a language other than Vietnamese, it must be enclosed with its Vietnamese translation; if the contract consists of many pages, each page must be appended with the parties signatures for certification or every two adjoining pages must be appended with a seal on their inner edges;
• Original protection title;
• Written consent of co-owners to the transfer of industrial property rights, if those industrial property rights are under common ownership;
• Power of attorney (if the dossier is filed through a representative);
• Fee and charge receipts;
• The transferee’s regulations on the use of the collective or certification trademarks and documentary evidences for the transferee’s right to file application in case of assignment of certification marks or collective marks.

Step 2: File a trademark assignment contract in Vietnam

Submit 1 set of application for registration of the transfer contract as above by submitting online or by post to the National Office of Intellectual Property in Hanoi or 2 representative offices of the Department in Ho Chi Minh City and Da Nang.

Step 3: Receive and process the application for registration of a trademark assignment contract in Vietnam

In case a dossier for registration of a trademark assignment contract in Vietnam does not contain errors

If a dossier for registration of a a trademark assignment contract in Vietnam does not contain errors, the NOIP shall carry out the following activities:

• To issue a decision to issue a transfer contract registration certificate;
• To record in the new owner’s protection title;
• To record the assignment of industrial property rights in the national register of assignment of industrial property rights;
• To publish the decision on grant of a certificate of registration of the contract on assignment of industrial property rights in the Industrial Property Official Gazette within two months from the date of signing the decision.

In case a dossier for registration of a trademark assignment contract in Vietnam contain errors

If a dossier for registration of a trademark assignment contract in Vietnam contain errors, the NOIP shall carry out the following activities:

• To issue a notice on its intended refusal of registration of the contract, stating errors of the filing and setting a time limit of one month from the date of the signing of the notice for the filing-filing person to correct the errors and make an opposition to the intended refusal of registration of the contract;
• To issue a notice on its refusal of registration of the contract if the filing-filing person fails to correct or unsatisfactorily corrects the errors, makes no opposition or an opposition to the intended refusal of registration of the contract within the set time limit.

Errors in a trademark assignment contract in Vietnam are specified at Point 48.3 of Circular 01/2007, including:

• The written declaration is invalid;
• One of the documents on the list of required documents is absent;
• The power of attorney is invalid;
• The copy of the contract is not properly certified;
• The name and address of the assignor stated in the contract are not consistent with the relevant information in the protection title or the contract based on which the assigned rights arise, or in the power of attorney or written declaration; the name and address of the assignee stated in the contract are not consistent with those stated in the power of attorney or written declaration;
• The contract does not contain all signatures (and seals, if any) of the assignor and the assignee;
• The transferor is not the protection title holder;
• The term of protection of the concerned industrial property object has expired or there is a dispute over that object;
• The assignment contract lacks required contents specified in Article 140 or Clause 1, Article 144 of the Intellectual Property Law;
• The contract contains a content incompliant with the provisions on conditions for restriction of transfer of industrial property rights specified in Article 139 of the Intellectual Property Law or contains clauses on unreasonable restriction of rights of the industirial property object licensee specified in Clause 2, Article 144 of the Intellectual Property Law;
• There is a ground to confirm that the transfer of industrial property rights infringes upon industrial property rights of a third party.

Time limit for processing trademark transfer contract registration dossiers in Vietnam: 02 months (excluding time for application owner to correct errors).

Customers wishing to register a trademark transfer contract in Vietnam, please contact Viet An Law Firm for detailed support!