Procedure for splitting trademark application in Vietnam

The procedure for splitting a trademark registration application is a legal procedure that is proactively carried out by the application owner or at the request of the National Office of Intellectual Property before this agency issues a decision to refuse to accept the application or decision to grant or refuse to grant protection titles. In the following article, Viet An Law will present the legal provisions related to this procedure.

Legal basis

• Law on Intellectual Property 2005, as amended and supplemented in 2009, 2019, 2022;
• Decree 65/2023/ND-CP detailing several articles and measures to implement the Intellectual Property Law on industrial property, protection of industrial property rights, rights to plant varieties, and State management on intellectual property;
• Circular 23/2023/TT-BKHCN guiding the Intellectual Property Law and Decree 65/2023/ND-CP guiding the Intellectual Property Law on industrial property.

What is a trademark application splitting?

Splitting a trademark registration application is understood as a procedure in which the applicant splits one or several trademarks in the original industrial design registration application on the initiative of the applicant or at the request of the National Office of Intellectual Property dividing one or several industrial designs into one or more new applications is called a division application.

Time to request splitting of application

Before the National Office of Intellectual Property issues a decision to refuse to accept an application, a decision to refuse to grant a protection title, or a decision to grant a protection title, the applicant has the right to split the trademark application.

Characteristics of splitting trademark application in Vietnam

• Splitting an application applies to part of the list of goods and services in the original trademark registration application into one or more new applications, called split applications.
• The splitting application procedure is carried out concurrently with the procedure for amending the original trademark registration application. The process of processing a split application is carried out by the National Office of Intellectual Property independently of the original application (in addition to the procedures already carried out in the original application that do not need to be performed again in the split application).
• The split application carries a new application number and is given the filing date of the original application or the priority dates of the original application (if any).
• For each split application, the applicant must pay the filing fee and any fees and charges for procedures carried out independently of the original application (other than procedures carried out in the original application without the need to do it again in the split application) but do not have to pay the examination fee to request priority rights.
• The splitting application is assessed for formality and continues to be processed according to the procedures that have not been completed for the original application. The splitting application must be announced according to regulations.
• The original application (after splitting) continues to be processed according to the application processing procedure or according to the application amendment procedure.

Dossier for splitting trademark application

• Trademark registration declaration according to Form No. 08, Appendix I, Decree 65/2023/ND-CP, on the split trademark registration declaration, must specifically state the application number and filing date of the original application;
• Explanation of the subject matter requested for protection and the content of changes compared to the original application when filing a split application;
• Power of attorney (if the application is filed through an industrial property representation such as Viet An Law);
• Copy of fee payment voucher (in case of payment of fees and charges via postal service or direct payment to the National Office of Intellectual Property account).

Procedure for splitting trademark applications

Step 1: Submit a splitting application and appraise the form of the application

• In case the application has no errors, the split application will be assessed for form and continue to be processed according to the procedures that have not been completed for the original application.
• The original application (after splitting) continues to be processed according to the application processing procedure or according to the application amendment procedure. A notice recording amendments to the original application will be issued if the requirements are met.
• In case the application has errors or is invalid, requests to correct errors or objections will be made as with the original application.
• Notice of acceptance of valid application is issued within 01 month from the date of filing the split application.

Step 2: Publication of the application

• The split application will be re-published if the split application is made after there has been a notice of acceptance of a valid application for the original application. The National Office of Intellectual Property shall publish the split trademark in the Industrial Property Official Gazette within 02 months from the date of the Notice of acceptance of the valid application.
• In addition to the information published for an original trademark application filed for the first time (trademark sample and list of goods and services bearing the mark; international classification of goods and services; and other information (if any); regulations on the use of collective marks and certification marks), the published information also includes information related to valid applications (split application, original application number of split application, etc.);

Step 3: Substantive examination of the application

• The National Office of Intellectual Property examines the content of a split trademark application within 09 months from the date of publication of the application similar to an original application.
• During the content examination process, if there is an objection from a third party, the handling procedures are carried out as with the original trademark registration application.

Step 4: Decide to grant or refuse to grant a degree

• In case the application does not meet the protection requirements, the National Office of Intellectual Property shall issue a Notice of refusal to record the industrial property registration application and set a response time for the applicant to object with valid arguments. within the specified time.
• In case the protection requirements have been met or there has been a valid response, the National Office of Intellectual Property shall issue a Notice of recognition of splitting trademark applications together with a Certificate of trademark registration for each division application within 02-03 months from the date of payment of fees according to the Notice of intention to grant a protection title.

Form of application for splitting of trademark registration application

Direct application form

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

Filling by postal

• In case of submitting a split application by post, the applicant needs to transfer money through the post office service, then photocopy the Money Transfer Receipt and send it along with the application to one of the above application receiving points of the National Office of Intellectual Property to prove the amount paid.
• When transferring fees and charges to one of the above application receiving points of the National Office of Intellectual Property, the applicant needs to send the dossier via corresponding post office to that application receiving point.

Online application form

Conditions for online application

• Applicants need to have a digital certificate and digital signature and register an account on the Online Application Receiving System
• Have your account approved by the National Office of Intellectual Property to carry out industrial property registration transactions.

Online application process

Step 1: The applicant needs to declare and submit a split application on the online application receiving system of the National Office of Intellectual Property.

Step 2: After completing the declaration and submitting the application on the online application receiving system.

Step 3: The system will send the applicant a Confirmation of online document submission.

Step 4: 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 Document Confirmation. Submit documents online and accompanying documents (if any) and pay fees/charges according to regulations.

Step 5: If the documents and fees/fees are complete as prescribed, the application receiving officer will issue the application number to the Declaration on the Online Application Receiving System and vice versa if the documents and fees/fees are insufficient. prescribed fees, the application will be refused.

In case the applicant does not complete the application procedure as prescribed, the online documents will be canceled and a Notice of Cancellation of Online Documents will be sent to the applicant on the Online Application Receiving System.

Fees and charges for splitting trademark registration applications

The procedures for processing a split application are carried out independently of the procedures for processing the original application, so the fees and charges are also independent of the fees and charges payable for the initial application processing process, except for the examination fee for priority claim (Article 17 of Decree 65/2023/ND-CP).

In case the initial registration application has had substantive examination results

• Application fee (including split application): 150,000 VND;
• Application publication fee: 120,000 VND.
• Fee for registering information on industrial property: 120,000 VND.
• Examination fee for requesting amendments to the original trademark registration application (for each amended content of each application): 160,000 VND
• Information research fee to serve examination (for trademarks for each class of up to 6 goods/services): 180,000 VND. If the object of the search is a trademark with more than 6 goods/services in a class, an additional fee of 30,000 VND must be paid for each good/service from the 7th onwards.

In the case of splitting the list of goods and services for the original application, there are no results of substantive examination

• Application fee (including split application): 150,000 VND;

• Application publication fee: 120,000 VND.
• Fee for registering information on industrial property: 120,000 VND.
• Examination fee for requesting amendments to the original trademark registration application (for each amended content of each application): 160,000 VND
• Substantive examination fee (for trademarks for each class of up to 6 goods/services): 550.00 VND. If each class has more than 6 goods/services, an additional 20,000 VND must be paid for each good/service from the 7^th onwards.
• Information research fee to serve examination (for trademarks for each class of up to 6 goods/services): 180,000 VND. If the object of the search is a trademark with more than 6 goods/services in a class, an additional fee of 30,000 VND must be paid for each good/service from the 7th onwards.

Viet An Law’s service of splitting trademark application in Vietnam

• Legal advice on procedures for amending, supplementing, and splitting industrial property registration applications;
• Drafting documents for amendments, supplements, and splitting of industrial property registration applications;
• Representative submits documents and monitors progress at the National Office of Intellectual Property;
• Exchange and provide information to customers during the process of completing procedures for amending, supplementing, and splitting industrial property registration applications.

Clients who need to advice on procedure for splitting trademark application in Vietnam, please contact Viet An law firm for specific instructions!