Splitting trademark registration in Vietnam

Splitting a trademark application is the application owner dividing one or several components of the trademark or part of the list of goods and services in the trademark application into one or more new applications. Within the prescribed time limit, the trademark applicant can proactively or at the request of the Intellectual Property Office split the application. To provide clients with essential information about this procedure, in the article below, Viet An law firm will provide detailed regulation of splitting trademark registration in Vietnam.

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 263/2016/TT-BTC regulates the collection rates, collection regime, payment, management, and use of industrial property fees and charges.

What is a splitting trademark registration in Vietnam?

Pursuant to the Intellectual Property Law, the applicant for trademark registration can split the application on their initiative or at the request of the Intellectual Property Office. Splitting a trademark application may include: splitting one or several technical solutions; one or several industrial designs; one or several components of the trademark or part of the list of goods or services in the trademark registration application to one or more new applications. The new application is called a split application.

Split applications are assigned a new application number and retain the filing date of the original application, or retain the priority date of the original application. After the National Office of Intellectual Property confirms the validity of the application, the split applications will be announced. During this time, the original application (after being split) continues through the normal processing process.

Principles for separating trademark applications

During the application processing process (both the formality and substantive examination stages), the applicant can request to carry out application splitting procedures. A new application filed according to this procedure is called a split application.

• The split of the registration application can be carried out for one or several components of the trademark sample or a part of the good/service list in the original application.
• For each split application, the applicant needs to supplement the application filing fee and application publication fee equivalent to the case of an application filed for the first time for 01 class with a quantity of not more than 6 goods/services (regardless of the number of goods/services in each class as well as the number of good/service class in the split application) if the original application has all the prescribed fees/charges. The applicant must pay the title issuance fee as in the case of a regular application if the split application is granted a protection title.
• The split application carries a new application number and is given the filing date of the original application or receives the priority date(s) of the original application (if the original application is entitled to a priority date).
• The splitting application is assessed for formality and announced according to regulations after a Decision accepting a valid application is issued.

Note: In all cases, the splitting application must be published.

• The original application must proceed according to the application amendment procedure. The applicant must pay the necessary fees.
• The splitting application continues to be processed according to the procedures that have not been completed for the original application. The original application continues to be processed according to procedures that have not been completed at the time of splitting.
• In case the original application already has a Notice of substantive examination results (intended to refuse protection) and the split application only includes parts of the mark sample that are not expected to refuse protection and only includes goods/services not subject to the expected refusal of protection: the content examiner prepares the Notice of grant of protection title for the splitting application immediately after the splitting application is validly accepted.
• In case the original application already has a Notice of results of substantive examination (intent to refuse protection) and the split application is not in the case: the content examiner will process the split application based on preserving the conclusion related to the part (trademark sample, list of good and service) that is intended to be rejected as well as preserving the processing time limit of the original application (no preparation for Notification of results of new substantive examination for split application).

Trademark splitting dossier

Clients apply for trademark registration to carry out procedures that require preparing documents, including:

• Trademark registration declaration according to Form No. 08 Appendix I Decree 65/2023/ND-CP, on the trademark registration declaration, it is necessary to specifically state the application number and filing date of the original application;
• Trademark sample for goods/services;
• Explanation of the subject matter requested for protection and the content of changes compared to the original application when filing a split application;
• Documents and fee payment receipts;
• Power of Attorney for Viet An Law to carry out the procedure.

Procedures for splitting trademark application in Vietnam

Step 1: Submit application

After fully preparing a set of dossiers to amend the address of a trademark registration application, the trademark owner can submit the dossier himself or authorize an organization providing industrial property representation services.

The applicant can submit a split 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 Department 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 Bright.
• Representative office of the Department of Intellectual Property in Da Nang City, address: 3rd floor, 135 Minh Mang, Khue My ward, Ngu Hanh Son district, Da Nang City.

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 State. Department of Intellectual Property to prove the amount paid.

Step 2: Process dossier

The examiner splits the application and examines it according to the continuing procedures that have not been completed for the application as an initial new trademark registration application. At that time, the processing time is calculated as in the original application processing time.

Fees and charges for splitting of applications

According to the provisions of Circular 263/2016/TT-BTC, specific fees and charges for the splitting of applications are as follows:

In case the initial application has had results of substantive examination of the application:

• Application fee: 150,000 VND;
• Publication fee: 120,000 VND.

In case of separating the list of goods and services for the initial application without results of substantive examination:

• Application fee: 150,000 VND;
• Publication fee: 120,000 VND.

In case the trademark sample is splitd from the original application without results of substantive examination of the application: the applicant needs to pay the same fees and charges as the original new application.

Some notes after registering a trademark split

When separating registration applications, trademark owners should note the following:

• The application must be published in all cases;
• The initial application needs to be processed according to the application amendment procedure and the applicant must complete the prescribed fees;
• The splitting application is processed according to procedures that have not been completed compared to the original registration application;
• The original application is processed according to procedures that have not been completed since the time of the split of the application.

For the original application that has announced the results of the substantive examination (intended refusal of protection), in case the split application only includes parts of the trademark sample or goods/services that are not subject to the expected refusal of protection, the staff will prepare a notice of granting a certificate of protection for the splitting application immediately after the application is duly approved.

For the initial application that has notified the results of the substantive examination, the examining officer will process the split application based on the preservation of the content of the conclusion related to the part intended to be rejected, as well as preserving the relevant part of the application after the processing deadline of the original application.

For trademark registration applications:

• The initial registration application and the split application must be processed in the same Trademark Office;
• In case of split of application after receipt of notice of intention to refuse protection, the original application and split application need to be performed by the same examiner;
• It is necessary to get opinions from the relevant Trademark Office before splitting the trademark application at the Registration Office to receive the application.

Trademark registration services of Viet An Intellectual Property Representative

• Consulting, evaluating the usability and registration of trademark protection in Vietnam and abroad;
• Informally or officially look up trademark information at the National Office of Intellectual Property – Independent costs;
• Complete the application file for a trademark protection certificate;
• Representing clients in filing applications for protection certificates in Vietnam and abroad;
• Monitor application processing progress at the National Office of Intellectual Property, draft documents and documents for transactions with the National Office of Intellectual Property;
• Representing clients throughout the entire process of establishing rights and responding to official correspondence with the Intellectual Property Office on trademark registration;
• Exchange and provide information to clients during the trademark protection registration process.
• Consulting and implementing services to maintain the validity of trademark protection certificates granted in Vietnam and abroad;
• Consulting and evaluating the possibility of violating protected trademark rights;
• Evaluate the effectiveness of trademark protection certificates granted in Vietnam and abroad;
• Negotiate, draft, appraise, and register contracts to transfer use rights or ownership of trademarks in Vietnam and abroad.

If you have any questions related to trademark registration, please contact Viet An law firm for quick and timely support. Best regards!