Trademark registration amendment in Vietnam due to change of company name

A trademark is one of the objects of industrial property rights, a container for commercial instructions, and a bridge between the manufacturer or service provider and the consumer. Trademarks are important signs to distinguish the goods and services of one individual or business organization from those of another. During the trademark registration process, the applicant can proceed to make amendments to the trademark application by changing the company name according to the provisions of the law. To support clients, Viet An Law Firm would like to issue the following article about trademark registration amendment in Vietnam due to change of company name under the current law.

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.

What is a trademark in Vietnam?

The World Intellectual Property Organization (WIPO) defines trademarks as “signs used to distinguish goods and services of the same or similar type from different production and business establishments”.

Vietnamese IP law defines a trademark as follows: “A trademark is a sign used to distinguish goods and services of different organizations and individuals.” The above definition emphasizes the distinctiveness of the mark. The purpose of a trademark is nothing more than to instruct users which goods and services originate from which manufacturer or supplier.

In addition to the basic function of a trademark, which is to distinguish the origin of goods and services, a trademark also has other functions such as:

• Trademarks are used as a means of advertising for consumers to associate a product or service being offered with the brand (for example, when users see a picture of a bitten apple, they think of Apple Inc. with iPhone smartphone products).
• Trademarks allow consumers to reasonably infer that a good or service provided under the brand is of consistent quality; helping consumers save search costs when they want to purchase goods and services.

Why must we register trademark protection?

If an organization or individual builds a trademark and does not register for protection, it can lead to legal risks such as the trademark being duplicated or other individuals or organizations taking advantage of the trademark for profit illegally.

Registering trademark protection gives the trademark owner the exclusive right to use and dispose of protected signs. The exclusive right to exploit allows the owner to prevent others from using his trademark without permission. In addition, the trademark owner also has the right to prohibit unfair competition practices using trade indications that may be confused with his trademark.

The need for trademark registration amendment in Vietnam due to change of company name

During the operation of the business, due to needs or a change of business owner, the company name changes. When there is a name change, it means changing the name of the applicant in the trademark registration application. Therefore, businesses need to carry out the necessary procedures according to the provisions of law to adjust their trademark registration applications, so that the company’s information is consistent across documents.

Time limit for amending trademark registration applications

Pursuant to Clause 1, Article 16 of Decree 65/2023/ND-CP, before the state management agency in charge of industrial property rights issues a decision to refuse to accept the application, decide to grant or refuse to grant a protection title, applicants can:

• Amending and supplementing documents in the application, provided that the amendments and supplements do not expand the scope (volume) of protection disclosed in the description of the patent application, set of photos, drawings and descriptions of industrial designs are shown in a set of photos and drawings for industrial design registration applications, in trademark samples and lists of goods and services for trademark registration applications, and must not change the nature of the subject stated in the application;
• Amendments to the name, address, country code of the applicant, name, nationality, address of the inventor, layout design, and industrial design; industrial property representative organization.

Thus, before the state management agency decides to refuse to accept the application, grant, or refuse to grant a protection title, the applicant can proceed to amend the trademark application due to changing the company name.

Fees payable due to amendments to trademark applications

According to the provisions of Circular No. 263/2016/TT-BTC, a person requesting to amend a trademark application due to a change in company name must pay the following fees and charges:

Application for trademark registration amendment due to change of company name

Documents needed to amend a trademark application due to a change in company name include:

• Declaration to amend trademark application;
• Certified copy of new business registration with record of company name change;
• Copy of the old Business Registration Certificate, recording the old name of the company;
• Power of attorney (in case the client authorizes);
• Proof of payment of fees to the Intellectual Property Department.

Trademark registration service of Viet An Law Firm – IP Representative

With extensive experience, Viet An Law can assist you in amending your trademark application, services include:

• Advise businesses on legal regulations on trademarks, including trademark protection conditions, signs prohibiting trademark registration, and trademark registration procedures.
• Perform a trademark search to determine that the intended trademark is not identical or similar to a previously registered trademark.
• Drafting trademark registration documents following the law.
• Submit trademark registration application.
• Monitor the process of processing trademark registration applications and notify businesses about the results of application processing.
• Resolve issues that arise during the trademark registration process, such as opposition to trademark registration applications, extension of trademark validity, transfer of trademark ownership, etc.
• Legal advice on procedures and conditions for amending trademark applications;
• Drafting documents to amend trademark applications;
• Submit documents and monitor progress at the National Office of Intellectual Property;
• Exchange and provide information to clients during the process of amending trademark applications.

Trademarks are considered industrial property objects that bring the greatest commercial exploitation value to the owner. Clients who need advice on amending trademark registration applications due to changing the company name, please contact Viet An Law for the best support.