Instructions on how to submit a direct trademark transfer application

Article overview

Submit a direct trademark transfer application brings many important benefits in the process of protecting intellectual property rights. Direct submission not only minimizes the risk of errors but also ensures transparency and legality in the transfer of ownership. In the article below, Long Phan will provide detailed information about the steps to carry out trademark transfer. Please refer!

Submit a direct trademark transfer application
Submit a direct trademark transfer application

Can the trademark owner transfer the trademark?

According to Vietnamese law, trademark owners have the right to transfer their trademarks to other organizations or individuals. This is clearly stipulated in the Law on Intellectual Property 2005 (amended and supplemented in 2022).

Specifically:

  • In Clause 4, Article 4 of the Law on Intellectual Property 2005 (amended and supplemented in 2022), it is determined that trademarks are objects of industrial property rights. This is the legal basis for transferring the trademark.
  • At the same time, according to Clause 1, Article 138 of the Law on Intellectual Property 2005 (amended and supplemented in 2022), it is stipulated that the owner of industrial property rights (including trademarks) has the right to transfer ownership rights to organizations. or other individuals.

Trademark transfer is understood as the process of transferring trademark ownership from the current owner to another entity. Trademark transfer brings many benefits, such as:

  • For the transferor: Can profit from selling the trademark.
  • For the transferee: Have the opportunity to own a brand that has been built and developed, helping to save time and costs compared to building a new brand yourself.

Therefore, the trademark owner has the complete right to transfer his trademark according to current legal regulations.

Conditions for trademark transfer

To ensure legality and protect the interests of all parties, trademark transfer needs to comply with a number of specific requirements, specified in Article 139 of the Law on Intellectual Property 2005 (amended and supplemented in 2022):

  • The owner is only allowed to transfer industrial property rights within the limits within which that right is protected.
  • Transfer of ownership rights to geographical indications is not allowed.
  • A trade name can only be transferred when accompanied by all business activities and business establishments operating under that trade name.
  • The transfer of trademark ownership must not cause confusion about the characteristics or origin of the goods or services bearing the mark.
  • Trademark ownership is only transferred to individuals and organizations that meet the conditions related to trademark registration rights.
  • Rights to inventions, industrial designs and layout designs using state budget may only be transferred to organizations or individuals established under Vietnamese law, or individuals who are Vietnamese citizens. Male and permanently residing in Vietnam. Organizations and individuals receiving the transfer must fulfill their obligations according to the provisions of law.

In addition, according to the provisions of Article 148 of the Law on Intellectual Property 2005 (amended and supplemented in 2022), there are also regulations on conditions for industrial property rights transfer contracts to be effective. Specifically, an industrial property rights transfer contract is only valid when it has been registered at the state management agency on industrial property rights.

Transfer conditions
Transfer conditions

Direct trademark transfer records

Prepare documents

Preparing trademark transfer documents is an important step in the transfer process. Complete and accurate records will help the approval process take place quickly and smoothly. Accordingly, the application for registration of an industrial property transfer contract needs to include the following documents:

  • Transfer contract registration declaration according to Form 01 Appendix IV (issued together with Decree 65/2023/ND-CP).
  • Original or notarized copy of the trademark ownership transfer contract.
  • Original trademark registration certificate.
  • Document showing the consent of co-owners (if any) to the transfer.
  • Power of attorney in case the application is submitted through a representative.
  • Document confirming payment of fees and charges.

For collective marks or certification marks, it is necessary to additionally provide:

  • Regulations on use of the transferee’s trademark.
  • Document proving the transferee’s right to apply.

CSPL: Article 49 of the Law on Intellectual Property 2005 (amended and supplemented in 2022), Article 58 of Decree 65/2023/ND-CP.

Sign a trademark transfer contract

According to Article 140 of the Law on Intellectual Property 2005 (amended and supplemented in 2022), a trademark transfer contract needs to include the following main contents:

  • Full names and addresses of the transferor and transferee: this information helps accurately identify the parties involved in the transaction
  • Transfer basis: owner’s decision or other legal reasons for the transfer.
  • Transfer price: is the amount of money that the transferee must pay to the transferor in exchange for trademark ownership.
  • Rights and obligations of the transferor and transferee: help avoid disputes that may arise in the future.

How to submit a trademark transfer application directly

Application form

Customers can choose one of the following two forms of submitting trademark transfer documents:

Submit directly:

  • Applications can be submitted online through the Online Public Service Portal of the National Office of Intellectual Property.
  • However, conditions for submitting online applications include: the applicant must have a digital certificate, digital signature or account registered on the Online Application Receiving System, and this account must be approved by the Intellectual Property Office. Intellectual approval to conduct transactions related to industrial property rights.

Submit directly: Customers can submit directly or send by post to:

  • Head office of the Department of Intellectual Property in Hanoi. Address: 384-386, Nguyen Trai Street, Thanh Xuan District, Hanoi City.
  • Representative office of the National Office of Intellectual Property in Ho Chi Minh City. Address: No. 31 Han Thuyen, Ben Nghe Ward, District 1, Ho Chi Minh City
  • Representative office of the National Office of Intellectual Property in Da Nang. Address: 1st Floor, No. 135 Minh Mang Street, Khue My Ward, Ngu Hanh Son District, Da Nang City

Competent agency receives documents

The National Office of Intellectual Property is the competent authority to receive and process trademark transfer documents. According to Clause 1, Article 58 of Decree 65/2023/ND-CP, the National Office of Intellectual Property is responsible for re-evaluating the right to file applications and regulations on trademark use.

Centralizing the authority to receive dossiers at the National Office of Intellectual Property helps ensure consistency and expertise in the processing process.

Process of processing trademark transfer documents

Applicants need to prepare all documents and submit them to the National Office of Intellectual Property or representative offices in Da Nang and Ho Chi Minh City. The application processing process is as follows:

  • Appraisal time: The dossier appraisal process lasts about 2 months from the date the dossier is received (not including the time for the submitter to supplement or correct the dossier if there are any shortcomings).
  • Results: After the appraisal process, the National Office of Intellectual Property will issue:
  1. Decision approving the registration of industrial property transfer contracts and publishing this information in the Industrial Property Official Gazette, or
  2. Decide to refuse contract registration if the dossier does not meet the requirements.

If the transfer contract is approved, the transfer content will be updated in the original protection title, and then the title will be returned to the applicant.

Processing trademark transfer documents
Processing trademark transfer documents

Consulting and instructions on how to submit a direct trademark transfer applicationy at Long Phan

Long Phan provides comprehensive services to support the direct trademark transfer application process including:

  • Provide detailed information about legal regulations related to filing direct trademark transfer application;
  • Support customers in drafting and preparing documents and records;
  • Support customers in negotiations and transfer negotiations;
  • Representing customers to submit documents and work with competent authorities;
  • Monitor application processing progress;
  • Consulting solutions when registration documents are rejected;
  • Consulting on other related issues.

The process of filing a direct trademark transfer application is a complex process that requires high accuracy. At Long Phan, we provide trademark transfer consulting services to ensure smooth, compliant and time-effective transactions. If you have any questions or need professional support, please contact Long Phan via hotline. 0906735386.