Trademark Renewal in Vietnam

Under the Law on Intellectual Property (Article 93), Protection title is a document granted by the competent State body to an organization or individual in order to establish the industrial property exclusive rights to a trademark. Trademark shall be valid throughout the territory of Vietnam from the date of granting until the end of ten (10) years counting from the filing date and may be renewed for ten consecutive years. (Note: in cases the trademark owner fails to renew the trademark registration certificate within the prescribed time limit, the certificate shall be expired, then the trademark owner shall no longer have the industrial property exclusive rights to the trade marks as prescribed by law). It can be understood that a trademark has a permanent term of protection. However, in order to be protected permanently, the title owner must carry out the renewal procedure within 10 years of protection under the Law. So how the renewal procedure is conducted? Viet An Law Firm would like to guide you in detail the notes on the renewal of trademark registration in accordance with the current law as from below.

When do clients need to carry out the procedures for renewal of trademark registration in Vietnam?

Under Circular No 01/2007/TT-BKHCN (Article 20.4.b), Clients should note the following provisions when renewing trademark registration:

Pursuant to Circular 01/2007 / TT-BKHCN – Article 20, Clause 20.4. item b. Amendment, changing of protection title holder, narrowing of the scope of protection, maintenance, and extension of validity of a protection title must note the renewal of trademark registration in Vietnam as follows:

• – Within 06 months prior to the expiration date, the Certificate holder must submit an extension request to the NOIP.
• The Certificate holder can renew it late, but the deadline for renewing is not more than 06 months from the date of expiration of the protection term. In this case, in addition to having to pay the renewal fee, the Certificate holder has to pay a late renewal fee (10% of the renewal fee for each late month). Therefore, trademark owners should pay attention when renewing the trademark registration on time to avoid the expiration of the trademark protection title, affecting production and business activities.

What are the steps in the renewal procedure of a Trademark Registration Certificate?

 Legal Basis:

– Law No. 50/2005/QH11 of November 29, 2005, on Intellectual Property;

– Decree No. 103/2006 / ND-CP dated September 22, 2006 detailing and guiding the implementation of a number of articles of the law on intellectual property regarding industrial property;

– Circular No. 01/2007 / TT-BKHCN dated February 14, 2007 of the Ministry of Science and Technology guiding the implementation of the governments decree no. 103/2006/ nd-cp of september 22, 2006, detailing and guiding the implementation of a number of articles of the law on intellectual property regarding industrial property

– Circular 263/2016 / TT-BTC of the Ministry of Finance on fees and charges for industrial property and the collection, transfer, management and use thereof.

Required documents and information:

• 01 Declaration requesting renewal of protection title validity (according to form 02-GH/DTVB Appendix C of Circular No. 01/2007/ TT-BKHCN);
• Original protection title (if the extension is requested to be recorded in the protection title);
• A copy of the receipt of fees and charges;
• Power of Attorney (in case the request is filed through a representative);

The Competent Authority receiving and processing dossiers:

• The applicant may submit a request for application amendments directly to Head Office of NOIP or via 02 Representative Office of NOIP in Ho Chi Minh City and Da Nang City.

 The time limit for processing a dossier is 01month.

The NOIP shall consider the application for renewal within 01month from the date of receipt. However, the actual time to process a trademark renewal application is now 2 – 4 months.

• If the request is considered valid, the NOIP shall issue a decision on renewal of the protection title, register and publish it in the Industrial Property Official Gazette.
• If the request is considered invalid, the NOIP shall issue a decision on its rejection of the request for protection title renewal, clearly stating the reasons therefor and setting a time-limit of 01 month from the date of notification for the requester to correct errors or oppose the intended refusal. If, within a fixed time limit, the requester fails to correct the error or the error correction fails to meet the requirements, has no objection or an inaccurate objection, NOIP shall issue a notice from refuse to extend.

Result: Trademark registration certificate is extended for an additional 10 years from the mandated expiration date.

Some notes for renewal of trademark registration in Vietnam

• Renewal can be conducted for all product / service classes at the time of registration or only renew with product / service classes currently being requested.
• For organizations and individuals that need to extend the trademark protection validity for many different trademarks at the same time, a declaration requesting renewal of protection titles, the organization or individual can apply for renewal of multiple protection titles at once.

Required documents for renewal of Trademark Registration Certificate in Vietnam

Documents clients need to provide

• Original protection title (if the extension is requested to be recorded in the protection title);
• Power of Attorney (in case the request is filed through a representative);

Required documents for renewal of trademark registration in Vietnam

• 02 Declaration requesting renewal of protection titles’ validity;
• Original protection title;
• Power of Attorney (in case the request is filed through a representative);
• A copy of the receipt of fees and charges;

Our consultation service of renewal of trademark registration in Vietnam includes:

• Providing consultation about procedure and conditions relating to renewal of trademark;
• Drafting a trademark renewal dossier;
• Representing clients to carry out legal procedures at the National Office of Intellectual Property;
• Submitting dossier and supervising the process of renewal of trademark registration;
• Represent the clients during the whole process of establishing right and responding to National Office of Intellectual Property relating to renewal of trademark;