Legal regulations on trademark assignment in Vietnam

In order for customers to better understand the legal provisions on trademark assignment, Siglaw would like to guide the conditions, procedures, documents as well as some notes when assigning trademarks as follows:

1. Conditions for trademark assignment

In order to perform a trademark assignment, in addition to the terms agreed upon by the two parties, the assignor and assignee also need to satisfy the following conditions:

• The trademark assignment must be made in writing contract.

• A trademark assignment contract is only valid when it has been registered at the state management agency in charge of industrial property rights.

Conditions for restricting the assignment of trademarks:

Not all trademarks registered with a competent state agency are transferable and not all entities can transfer/receive a trademark assignment. The Intellectual Property Law has a number of restrictive conditions for trademark assignment that must be followed:

• Trademark owners may only assign their rights within the scope of protection.

• The assignment of rights to the mark must not cause confusion about the characteristics and origin of the goods or services bearing the mark.

• The right to a mark shall only be transferred to an organization or individual that meets the conditions for the person having the right to register the mark.

2. Procedures for trademark assignment in Vietnam

a. Trademark assignment contract

A trademark assignment contract must contain the following principal contents:

• Full name and address of the assignor and assignee.

• Grounds for the assignment.

• Price and method of payment.

• Rights and obligations of the parties.

• Liability for contractual breach.

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

b. Procedures for registration of assignment of industrial property rights to trademarks

Step 1: The parties agree and establish a trademark assignment contract.

Step 2: Register the trademark assignment contract at the National Office of Intellectual Property.

The transferor submits a set of applications for registration of an assignment contract at the National Office of Intellectual Property. The application file includes the following documents:

• 02 copies of the declaration of registration of industrial property right assignment contract, made according to form 01-HDCN specified in Appendix D of Circular 01/2007/TT-BKHCN.

• 01 copy of the contract (original or certified copy as prescribed); if the contract is made in a language other than Vietnamese, it must be accompanied by a Vietnamese translation of the contract; If a contract has many pages, each page must have the signatures of the parties or a cross-border stamp.

• Original file of protection title.

• The written consent of the co-owners on the assignment of industrial property rights, if the respective industrial property rights are under common ownership.

• A letter of authorization (if applying through a representative).

• A copy of the fee and fee payment receipt (in case of payment of fees and charges via postal service or directly into the account of the National Office of Intellectual Property).

• For an application file for registration of a contract on assignment of a collective mark or certification mark, in addition to the above documents, the following additional documents are required:

  • Regulations on the use of collective marks and regulations on the use of certification marks of the assignee.

  • Documents proving the transferee's right to file an application for a certification mark or collective mark.

Step 3: Receive and process the application for registration of a trademark assignment contract

If the application file is valid, the NOIP will perform the following activities:

• To issue a decision to grant a certificate of signing a trademark assignment contract to an individual or organization.

• Proceed to record and protect the new owner, record the assignment of ownership rights for the trademark and the National Register of Industrial Property Rights Transfer.

• Publicize the decision on granting the Certificate of registration of industrial property right assignment contract in the Industrial Property Official Gazette within 2 months from the date of signing the decision.

Therefore, the assignment of industrial property rights to a trademark is a very difficult process, requiring both parties to have a thorough understanding of the law.

To help enterprises to assign intellectual property objects, Siglaw provides trademark assignment services, Siglaw will answer questions, as well as carry out all necessary procedures for clients.

3. Legal basis

• Law on Intellectual Property 2005 amended and supplemented in 2009 and 2019.

• Circular 01/2007/TT-BKHCN guiding the implementation of the Government's Decree No. 103/2006/ND-cp dated September 22, 2006 detailing and guiding the implementation of a number of articles of the intellectual property law intellectual property rights.

• Circular 18/2011/TT-BKHCN Amending and supplementing a number of provisions of Circular No. 01/2007/TT-BKHCN dated February 14, 2007, as amended and supplemented according to Circular No. 13/2010 /TT-BKHCN dated July 31, 2010 and Circular No. 01/2008/TT-BKHCN dated February 25, 2008, as amended and supplemented according to Circular No. 04/2009/TT-BKHCN dated March 27/ 2009.

• Circular 16/2016/TT-BKHCN Amending and supplementing a number of articles of Circular No. 01/2007/TT-BKHCN dated February 14, 2007 guiding the implementation of Decree No. 103/2006/ND-CP dated February 14, 2007 September 22, 2006 of the Government detailing and guiding the implementation of a number of articles of the intellectual property law on industrial property, as amended and supplemented according to the Circular No. 13/2010/TT-BKHCN dated September 22, 2006 July 30, 2010, Circular No. 18/2011/TT-BKHCN dated July 22, 2011 and Circular No. 05/2013/TT-BKHCN dated February 20, 2013.