Procedure for trademark assignment under Vietnamese Law

Accordingly, the procedure for trademark assignment means the transfer of ownership rights to another organization or individual. The transfer of a trademark depends on the will of the parties, however, this activity is still under the management of the state through the registration of a trademark assignment contract; with the competent state agency in charge of ownership. So, what is the procedure for trademark assignment under Vietnamese Law? Let’s find out with LSX!

Legal ground

• Law on Intellectual Property 2005, amended and supplemented in 2009

Conditions for trademark assignment

Hence the law, trademark assignment is a civil transaction; that can take many forms such as giving, buying, selling, inheriting, transferring… and under a written contract. In fact, the validity of a trademark assignment will depend on the registration procedure that an applicant carried out at the National Office of Intellectual Property of Vietnam.

Thus, unlike normal asset purchase and sale transactions, to buy and sell intellectual property assets, it is necessary to go through two steps:

• Step 1: The two parties sign a trademark assignment contract;
• Step 2: Register for the transfer of the right to use at the National Office of Intellectual Property of Vietnam.

Conditions restricting the transfer of trademarks

Basically, not all trademarks are transferable, and not all entities can transfer/receive a trademark assignment. The Intellectual Property Law stipulates a number of restrictive conditions for trademark assignment as follow:

• Trademark owners may only assign their rights within the scope of protection;
• The assignment of rights to a mark must not cause confusion about the characteristics and origin of goods or services bearing the mark;
• The right to a mark may only be transferred to an organization or individual that meets the conditions for the person having the right to register the mark.

Trademark assignment contract form

A trademark assignment contract must contain the following principal contents:

• Full name and address of the assignor and assignee;
• Transfer grounds;
• Transfer price;
• Rights and obligations of the assignor and transferee.

The parties may agree on other terms that are not contrary to the provisions of law.

Procedures for trademark assignment

Step 1: The establishment of a contract

Firstly, the parties shall agree and establish a trademark assignment contract.

Step 2: Trademark registration

Secondly, the applicant may register the trademark assignment contract at the National Office of Intellectual Property.

The transferor submits a set of applications for registration of a transfer contract at the National Office of Intellectual Property. The dossier includes the following documents:

• The registration declaration form according to the prescribed form;
• The original or valid copy of the contract;
• The original title of protection;
• The written consent of the co-owners, the written explanation of the reasons for the disagreement of any of the co-owners on the transfer of rights if the trademark owner is jointly owned;
• Proof of payment of fees and charges;

Step 3: Process the application

Then, the applicant shall receive and process the application for registration of the trademark assignment contract. In case the registration dossier is valid, the NOIP will perform the following activities:

• Issue a decision to issue a Certificate of the signing of a trademark assignment contract to an individual or organization.
• Then proceed to record and protect the new owner, record the transfer of ownership rights for the trademark and the National Register of Industrial Property Rights.
• Publish the decision on granting the Certificate of registration of an industrial property right transfer contract in the Industrial Property Official Gazette within 2 months from the date of signing the decision.

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