Trademark transfer: Procedures and processes

Trademark transfer is the transfer of trademark ownership by the owner to the transferee. To carry out transfer transactions smoothly and effectively, a clear understanding of regulations and procedures is essential. In this article, Long Phan will provide detailed information about the process and conditions of trademark transfer, to help you seize opportunities to develop your brand confidently and legally.

Are all trademarks transferable?

According to the provisions of Article 139 of the Law on Intellectual Property 2005, the transfer of industrial property rights to a trademark requires meeting certain conditions to ensure transparency and avoid misunderstandings about the product or service bearing the trademark. Specifically, conditions to note when transferring trademarks include:

1. Owners of industrial property rights may only transfer their rights within the scope of protection.
2. The transfer of trademark rights must not cause confusion about the characteristics and origin of the goods or services bearing the mark.
3. Rights to trademarks can only be transferred to organizations and individuals that meet the conditions for those who have the right to register that trademark.

Content of trademark transfer contract

Pursuant to Article 140 of the Law on Intellectual Property 2005, it is stipulated that a trademark transfer contract must have the following main contents:

• Full names and addresses of the transferor and transferee;
• Transfer basis;
• Transfer price;
• Rights and obligations of the transferor and transferee;
• The parties may agree on other terms that are not contrary to the law.

Trademark transfer procedures

The trademark transfer process needs to follow the following specific steps:

Step 1: Sign a trademark transfer agreement

Related parties must agree and make a written trademark transfer contract. According to Clause 2, Article 138 of the Law on Intellectual Property 2005, a trademark transfer contract must be signed in writing and clearly establish the rights and obligations of each party, the content and scope of the trademark transfer.

Step 2: Prepare documents to register a trademark transfer contract

The application needs to include the following documents:

• Trademark transfer contract registration declaration form 02 Appendix IV Decree 65/2023/ND-CP;
• 02 originals or valid certified copies of the contract;
• Original certificate of protection;
• Written consent of the co-owners, written explanation of the reason for any co-owner’s disagreement on the transfer of rights if the trademark ownership is jointly owned;
• Proof of payment of fees and charges;
• Authorization letter to submit documents if submitting documents through a representative.

Step 3: Submit application to register trademark transfer contract

Transfer contract registration documents can be submitted directly or by post to the Intellectual Property Department in Hanoi, or the Department’s Representative Offices in the City. Ho Chi Minh and Da Nang.

Step 4: Resolve the application for trademark transfer contract registration

After receiving the registration dossier, the National Office of Intellectual Property will evaluate and process the dossier according to the following process:

In case the documents are valid:

The Department of Intellectual Property will carry out:

• Issue a decision to issue a Certificate of signing a trademark transfer contract to an individual or organization.
• Then proceed to record the new owner’s protection certificate, record the transfer of ownership rights to the trademark and the National Register of Transfer of Industrial Property Rights.
• Announce the decision to grant the Certificate of registration of industrial property rights transfer contract in the Industrial Property Official Gazette within 02 months from the date of signing the decision.

In case the profile is not valid:

• If the application does not meet the requirements, the National Office of Intellectual Property will send a notice clearly stating the shortcomings and set a period of 2 months from the date of signing the notice for the applicant to correct or respond.
• If after the 2-month period, the applicant does not complete the correction or does not give feedback or has an unwarranted objection to the intention to refuse to register the contract within the set time limit. The National Office of Intellectual Property will issue a decision to refuse to register the contract.

Consulting on the trademark transfer process at long Phan

With a team of experienced and deep understanding of Law on Intellectual Property, Long Phan provides professional and comprehensive trademark transfer services in every process from preparation, implementation to completion. Consulting and support services at Long Phan include:

• Support drafting transfer contracts with strict, clear terms;
• Support the preparation and submission of registration dossiers to ensure that the dossiers meet the requirements when submitted to the National Office of Intellectual Property;
• Monitor application processing progress and notify customers of results quickly;
• Support explanations and additional documents to provide necessary information to meet the requirements of state agencies;
• Consulting on issues arising after completion of transfer, including additional procedures or disputes related to trademark ownership.

Trademark transfer provides opportunities to develop brands and optimize intellectual property value for businesses. Long Phan offers comprehensive solutions, implemented by an experienced and dedicated team. With Long Phan, customers will not only complete the procedure quickly, but will also be guaranteed to optimize their benefits and avoid any risks. Please contact us via the hotline 0906735386 to receive the most detailed advice.