Submit original certificate for trademark assignment in Vietnam

The certificate of trademark protection recognizes the ownership rights of the holder over the trademark. When assigning a trademark, the owner relinquishes their rights to the trademark while establishing the rights of another party to that trademark. As a result, many people are concerned about the submission of the original certificate of trademark protection during the assignment process. In the following article, Viet An Law Firm will provide clients with some legal information to submit original certificate for trademark assignment in Vietnam.

Some regulations on the assignment of trademark in Vietnam

Trademark assignment is a common activity in the field of commerce. The assignment of a trademark is conducted for various purposes and reasons by the parties involved in the transaction.

Assignment of trademark rights

According to Clause 1, Article 138 of the Intellectual Property Law 2005 (as amended and supplemented in 2009, 2019, and 2023), the assignment of trademark rights means transfering ownership rights by the owner of such trademark right to another organization or individual.

Upon completing the trademark assignment, the assignor will terminate their ownership rights to the trademark and establish trademark ownership for the assignee.

What conditions have to be met for trademark assignment?

Trademark ownership is a property right established based on registration with the competent authority. Therefore, the trademark assignment has to be controlled and meet the conditions stipulated in Clause 2 Article 138 and Article 139 of the Intellectual Property Law 2005 (as amended and supplemented in 2009, 2019, and 2023) as follows:

• An assignment of an industrial property right has to be established in the form of a written contract and contain the following principal contents:
  • Full names and addresses of the assignor and the assignee;
  • Grounds for the assignment;
  • Assignment price;
  • Rights and obligations of the assignor and the assignee.
• Trademark right owners may only assign their rights within the scope of protection;
• The right to assign must not confused with to properties or origins of goods or services bearing such trademarks;
• Rights to marks may only be assigned to organizations or individuals who satisfy conditions for persons having the right to register such marks according to Article 87 of the Intellectual Property Law 2005 (as amended and supplemented in 2009, 2019, and 2023).

Submit original certificate for trademark assignment in Vietnam

According to Clause 25, Article 3 of the Intellectual Property Law 2005 (as amended and supplemented in 2009, 2019, and 2023), protection title means a document granted by the competent state body to an organization or individual to establish industrial property rights to an invention, industrial design, layout design, trademark or geographical indication or rights to a plant variety.

For trademarks, the protection title is called a Trademark Registration Certificate, according to Clause 6, Article 93 of the Intellectual Property Law 2005 (as amended and supplemented in 2009, 2019, and 2023). The Trademark Registration Certificate is effective from the filing date and may be renewed for many consecutive terms, each of ten years.

When assigning a trademark, the owner also assigns ownership rights to the assignee; therefore, the granted protection title has to reflect the change of ownership with the competent state authority to prove that the assignment is legal. According to Article 148 of the Intellectual Property Law 2005 (as amended and supplemented in 2009, 2019, and 2023), the trademark assignment contract only takes effect when registered with the competent authority.

Assignment registration dossier

After signing the trademark assignment contract, individuals or organizations need to prepare the registration dossier as listed in Article 149 of the Intellectual Property Law 2005 (as amended and supplemented in 2009, 2019, and 2023), including:

• The written declaration for registration;
• The original or a valid copy of the contract;
• The original certificate in the case of an industrial property right assignment;
• The co-owners written consent, or a written explanation of the reason for disagreement of any co-owner with the right assignment where the industrial property right is under joint ownership;
• Receipt for payment of state fees;
• A power of attorney, if the application file is filed by a representative.

Thus, when assigning a trademark, the original certificate must be submitted to register the assignment contract and issue a new certificate to the assignee.

Trademark assignment registration procedure in Vietnam

Step 1: Prepare and submit the registration dossier

Individuals or organizations prepare the necessary documents as mentioned above.

Submit the dossier to the Intellectual Property Office.

Step 2: Process the registration dossier

• Valid dossier:
  • Record in the protection certificate the new owner. In case of partial assignment of the list of goods/services bearing the protected trademark: Grant a new certificate of trademark registration to the assignee and confine the list of goods/services in the original protection certificate for the assigned part.
  • Record the assignment of trademark in the National Register of Assignment of Industrial Property Rights.
  • Publish the decision on grant of a Certificate of registration of the contract for licensing of an industrial property object in the Industrial Property Official Gazette within 02 months from the day on which the decision is signed.
• Invalid dossier:
  • Issue a notice on its intended refusal of registration of the contract (setting a time limit of 01 month from the date of the signing of the notice).
  • Issue a notice on its refusal of registration of the contract if the applicant fails to correct or unsatisfactorily corrects the errors, makes no opposition or opposition to the intended refusal of registration of the contract within the set time limit.

Processing time

02 months (excluding time for the applicant to correct the errors).

Note on invalid dossiers

• 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 assignor 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 the required contents specified in Article 140 or Clause 1, Article 144 of the Intellectual Property Law;
• The contract contains 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 industrial property object licensee specified in Clause 2, Article 144 of the Intellectual Property Law;
• There is a ground to confirm that the assignment of industrial property rights infringes upon the industrial property rights of a third party.

Thus, according to current regulations, it is mandatory to submit the original certificate when assigning a trademark to complete the procedure for registering a trademark assignment contract. Clients who have related questions or need legal support to submit original certificate for trademark assignment in Vietnam, please contact Viet An Law Firm for the best support.

Update: 8/2024