Who has the right to request to narrow the scope of trademark protection?

Article overview

The right to request to narrow the scope of trademark protection is the right of the protection title holder to adjust the scope of industrial property rights to a trademark when necessary. This includes reducing groups of goods or services or eliminating small unnecessary details that do not affect the distinctiveness of the mark. In the following article, Long Phan will provide specific instructions on the process and related legal regulations.

Right to request to narrow the scope of trademark protection?
Right to request to narrow the scope of trademark protection?

Right to request narrow the scope of trademark protection

The owner’s right to request to narrow the scope of trademark protection is the legal right of the protection title holder to adjust the scope of registered trademark protection, to ensure the trademark is more suitable to real needs, or meet other specific conditions.

The main cases to request narrowing the scope of trademark protection include:

  • Reduction of goods or services: Request to remove one or several goods or services from the registered list, or remove unprotected details without changing the distinctiveness of the mark.
  • Reduction of protection points: Request to reduce one or more independent or dependent points in the scope of protection stated in the Patent or Utility Solution Patent.
  • Removal of industrial design: Request to remove one or several industrial designs or products in a set of products that have been granted an industrial design patent.

CSPL: Clause 3, Article 97 of the Law on Intellectual Property 2005 (amended and supplemented in 2022) and Clause 3, Article 29 of Decree 65/2023/ND-CP.

Procedure for requesting narrowing of the scope of trademark protection

To narrow the scope of trademark protection, customers need to comply with the application process and procedural steps according to current regulations.

Required documents

Dossier requesting narrowing the scope of trademark protection includes:

  • Declaration request for amendment: According to Model number 06 in Appendix II, clearly state the change request.
  • Original certificate of protection: The original must be submitted if the certificate is issued in paper form.
  • Documents confirming change of name, address: Includes original or certified copy of decision to change name, address, business registration license or other legal documents.
  • Documents proving ownership transfer: Need to provide documents related to inheritance, merger, division, separation, consolidation, or decision of a competent authority.
  • Document explaining the content of the amendment: Details of the amendment that needs to be made.
  • Industrial design photos and drawings: 05 sets if requesting to modify the industrial design; 02 copies describing the specific characteristics of the product bearing the geographical indication, and a map of the corresponding geographical area; 02 copies of regulations on use of collective marks and certification marks if any amendment is required.
  • Trademark samples: 05 samples if you request to amend the brand sample.
  • Authorization document: If a request is submitted through a representative.
  • Copy of fee and fee payment voucher: If submitted via postal service or directly to the account of the state management agency on industrial property rights.

How to submit request documents

Documents requesting narrowing the scope of trademark protection can be submitted in the following forms:

  • Submit online: You can submit via the Administrative Procedures Information System of the Ministry of Science and Technology.
  • Submit in person or by post: Submit documents at the Intellectual Property Department in Hanoi, or representative offices in the city. Ho Chi Minh and Da Nang.

After receiving the dossier, the National Office of Intellectual Property will review and appraise the request to narrow the scope of protection. Review time depends on the complexity of the request and the completeness of the documents.

Procedure for requesting narrowing of the scope of trademark protection
Procedure for requesting narrowing of the scope of trademark protection

Fees required to narrow the scope of trademark protection

Fees and charges to request narrow the scope of trademark protection in Vietnam include:

  • Examination fee for narrowing request: 550,000 VND for each Trademark Registration Certificate requested to be narrowed.
  • Fee for publishing the Decision recording amendments to the protection title: 120,000 VND.
  • Registration fee for Decision to record amendments to protection title: 120,000 VND.

This fee is based on Section 1.1 and Section 4, Part B of the Industrial Property Fees and Charges Table issued with Circular 263/2016/TT-BTC on the schedule of industrial property fees and charges. You can pay via postal service or directly into the Intellectual Property Department’s account.

Fees required to narrow the scope of trademark protection
Fees required to narrow the scope of trademark protection

Consulting services on the right to request narrow the scope of trademark protection at Long Phan

Long Phan supports you in carrying out procedures to request narrowing the scope of trademark protection in accordance with the law, with a team of experienced legal experts in the field of intellectual property. Services include:

  • Consulting on the process of implementing requests to narrow the scope of trademark protection.
  • Assist customers in preparing and completing necessary documents for narrowing the scope of protection.
  • Analyze and evaluate relevant factors to determine the likelihood of success of the downsizing request.
  • Customer representative submits documents to the authorities and monitors the processing progress.
  • Consulting and providing information on regulations related to narrowing the scope of trademark protection.
  • Consulting and supporting customers in disputes related to trademarks after narrowing.
  • Inform customers about changes in laws and regulations related to trademark protection.

In the process of requesting to narrow the scope of trademark protection, understanding the process and preparing accurate documents is very important to ensure the interests of the business. At Long Phan, with a team of experienced experts, we will provide customers with the service of narrowing the scope of trademark protection, ensuring the process goes smoothly and successfully. If you need more information or support, don’t hesitate to contact us via the hotline 0906735386 for quick advice and support.