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The trademark assignment procedure in Vietnam is an essential process for businesses and individuals seeking to transfer ownership of their trademarks. This process ensures that trademark rights are legally reassigned from one party to another, following the specific guidelines set forth by the Vietnam Intellectual Property Office (IP Vietnam). With the recent updates to the law, the trademark transfer process has become more streamlined, providing clearer steps for the transfer of trademark ownership. This article outlines the latest procedure for transferring a trademark in Vietnam, including the necessary documents and steps to ensure compliance with the law.
What is Trademark Assignment?
Trademark assignment refers to the process of transferring ownership rights of a trademark from one individual or organization (the transferor) to another (the transferee). Once the transfer is complete, the transferee becomes the legal owner of the trademark and gains the right to use, protect, and exploit the trademark in accordance with the law.
The trademark assignment process typically involves an agreement between the two parties regarding the terms of the transfer and must comply with legal procedures such as registering the transfer with the Vietnam Intellectual Property Office (IP Vietnam). After registration, the transfer is officially recognized and legally acknowledged.
Trademark transfers may occur for various reasons, including changes in business strategy, mergers or acquisitions of companies, or resolving disputes regarding trademark ownership.
Agreement of Trademark Assignment in Vietnam
A trademark assignment agreement is a legal document that establishes the transfer of ownership rights to a trademark from the transferor (current owner of the trademark) to the transferee (the new owner). The agreement must be in writing and contain all necessary provisions to ensure the rights and obligations of both parties are protected. The basic content typically included in a trademark transfer agreement is as follows:
Parties Information: Information about the parties includes names, addresses, and establishment decisions (if an organization).
Trademark Information: The trademark information includes: trademark name, logo, product/service categories associated with the trademark, trademark registration certificate number, registration date, etc.
Transfer Value and Payment Method: The agreement must specify the trademark transfer price, payment methods, and payment schedule.
Rights and Obligations of the Parties:
- Transferee’s Rights and Obligations: Ownership rights, usage, exploitation, and protection of the trademark after transfer. Obligation to pay the transfer price to the transferor.
- Transferor’s Rights and Obligations: Ensuring the transferee’s ownership is free from disputes, assisting with legal formalities, and handing over the original trademark registration certificate. Entitled to receive the payment for the transfer price.
- Both parties agree on who will be responsible for carrying out the legal procedures for registering the trademark transfer with IP Vietnam and covering registration fees.
Other Provisions
- Compensation for damages in case of breach of contract
- Conditions for termination of the contract
- Dispute resolution procedures
- Effectiveness of the agreement
The trademark transfer agreement must be registered with IP Vietnam to ensure the transfer is legally valid.
Trademark Assignment Procedure in Vietnam
To carry out the trademark assignment procedure, the applicant must submit the trademark assignment registration documents to the Vietnam Intellectual Property Office. The trademark assignment file includes the following documents:
Application Form for the Registration of the Trademark Assignment Agreement
The application form for registering the assignment of industrial property rights, using Form No. 01 in Appendix IV of Decree No. 65/2023/ND-CP issued by the Government, is the standard form to declare information regarding the trademark assignment agreement. This form includes details about the involved parties, the assigned trademark, and related terms. You can download this form at the end of this article.
Trademark Assignment Agreement
The registration file must include the original or a notarized copy of the trademark assignment agreement. If the agreement is written in a language other than Vietnamese, a Vietnamese translation must be provided. If the agreement consists of multiple pages, each page must bear the signatures or seals of the parties to ensure its authenticity.
Original Trademark Registration Certificate
The registration file must include the original trademark registration certificate if the certificate is issued in paper form. This document proves the original ownership of the trademark by the assignor. The original certificate is essential because it confirms that the assignor (the current trademark owner) has the legal right to transfer the trademark to the assignee (the new owner). If the trademark was registered electronically or the original certificate has been lost, a certified copy confirming the trademark’s registration may be accepted. This document ensures that the legal transfer of ownership is recognized and valid under Vietnamese law.
Consent of Co-owners of the Trademark (if applicable)
If the trademark is jointly owned by multiple parties, written consent from all co-owners is required for the assignment. This ensures that all parties agree to the assignment. The written consent must be clearly documented and signed by each co-owner, indicating their explicit approval of the trademark assignment. This is especially important in cases where ownership rights are shared, as the consent of all parties involved is necessary to avoid potential disputes in the future.
In addition to the individual signatures, the consent document should specify the details of the trademark assignment, such as the identity of the assignee, the terms of the assignment, and any financial arrangements, if applicable. This ensures that all co-owners are fully informed and have agreed to the terms of the assignment.
Without this written consent from all co-owners, the assignment may be considered incomplete or legally invalid, which could result in legal complications or the reversal of the assignment. Therefore, obtaining and including this written consent from all parties is crucial to ensure the assignment process is smooth, legitimate, and enforceable under Vietnamese law.
Additional Documents for Collective and Certification Marks
For collective or certification marks, additional documents are required, including:
- The regulations for using the collective or certification mark
- Documentation proving the right of the assignee to file the application for the trademark assignment.
Complete and accurate documentation will ensure the smooth and legal assignment of the trademark, safeguarding the interests of all parties involved.
Trademark Assignment Timeframe
The trademark assignment process in Vietnam typically takes from 6 months to 1 year, depending on the number of applications submitted to the Vietnam Intellectual Property Office at any given time. After the examination of the trademark assignment registration documents, if the file is valid, the Intellectual Property Office will issue a decision to accept the registration and publish it in the Industrial Property Gazette.
Trademark Assignment Fees
DCNH Law, based in Vietnam, offers professional trademark assignment services with a comprehensive fee of 4 million VND per trademark. With a team of experienced lawyers who have a deep understanding of intellectual property law, we are committed to assisting our clients in carrying out the assignment process efficiently, accurately, and in compliance with the law.
Our services include everything from initial consultation and drafting the assignment agreement to representing clients in filing documents at the Vietnam Intellectual Property Office and monitoring the progress of the process. We understand that trademark assignment is not only a legal procedure but also an important business decision. Therefore, we always prioritize our clients’ interests, ensuring that the process runs smoothly and transparently.
For a reasonable fee of 4 million VND per trademark, clients will receive comprehensive support from document preparation to the completion of the assignment process. We take pride in providing convenience and peace of mind, helping clients save time and optimize their business effectiveness.
If you need to carry out a trademark assignment in Vietnam, contact DCNH Law. We are ready to accompany you and ensure that the assignment process proceeds smoothly, legally, and with the utmost protection of your interests.
Contact Us Now:
DCNH LAW
Address: 38B Tran Nhat Duat, Phuoc Hoa ward, Nha Trang city, Khanh Hoa province, Vietnam.
Phone: (+84) 343320223 – 974278893
Email: [email protected]
