Trademark license: Process and procedures you need to know

Trademark license is the trademark owner’s permission for other organizations and individuals to use the trademark within the scope of their ownership. The terms and conditions of the trademark license contract clearly stipulate the scope of rights and obligations of each party. This article will give an overview of trademark licensing and licensing contract registration procedures.

What is a trademark license?

Trademark licensing is when the trademark owner allows another individual or organization to use the trademark within the scope of his or her usage rights through a transfer contract called a trademark license contract.

Types of license contracts for trademarks

Trademark license contracts come in different forms, serving different business purposes. Specifically, according to Article 143 of the Law on Intellectual Property 2005, the following types of contracts are included:

• Exclusive license contract: Within the scope and term of transfer, the transferee has the exclusive right to use the trademark. The licensor may not enter into a contract to use the trademark with any third party and may only use it with the licensee’s permission.
• Non-exclusive license contract: Within the scope and term of the transfer of usage rights, the licensor still has the right to use the trademark and sign a non-exclusive license contract with others.
• Secondary license contract: The licensor is the person who is transferred the right to use that trademark under another contract.

Customers need to clearly determine the type of contract that suits their needs and business purposes before signing.

Procedures for registering a license contract for a trademark

After signing, the trademark license contract must be registered. Registration procedures are carried out according to the provisions of Decree 65/2023/ND-CP:

Registration documents

Dossier to register a trademark license contract includes the following documents:

• Trademark license contract registration declaration (Form No. 02 in Appendix IV of Decree 65/2023/ND-CP).
• 02 copies of trademark license contract (original or certified copy). If the contract is made in a language other than Vietnamese, it must be accompanied by a Vietnamese translation.
• Written agreement of the co-owners on trademark licensing (if the trademark is jointly owned).
• Authorization document (if applying through a representative).
• Copy of fee payment voucher.

Registration procedures

Procedures for registering a trademark license contract are carried out as follows:

Step 1: Submit application

Submit documents directly or by post to the Intellectual Property Office headquarters in Hanoi or 2 representative offices of the Department in City. Ho Chi Minh and Da Nang.

Step 2: Processing documents

In case the registration dossier is not incomplete:

• Issue a decision to issue a Certificate of Trademark License Contract Registration.
• Issue the Trademark License Contract Registration Certificate to the applicant; Seal registration on 02 copies of the contract and give 01 copy to the applicant, keep 01 copy.
• Record the transfer of trademark use rights in the National Register of Industrial Property.
• Announce the decision to grant the Certificate of registration of contract for transfer of use rights in the Industrial Property Official Gazette within 02 months from the date of decision.

In case the registration dossier has errors:

• The National Office of Intellectual Property issues a notice of intention to refuse to register the contract, clearly stating the shortcomings of the dossier so that the applicant can correct the shortcomings or give feedback on the intention to refuse to register the contract;
• Issue a decision to refuse to record the transfer if the applicant does not make corrections or the correction of errors is unsatisfactory, there is no objection or an unreasonable objection regarding the intention to refuse to register the contract within the set time limit.

Consulting services and support for trademark licensing processes and procedures

Long Phan Consulting Company provides comprehensive consulting and support services on trademark licensing. Our services include:

• Consulting on trademark license conditions;
• Consulting on restrictions when licensing trademarks;
• Consulting on types of trademark license contracts and choosing the appropriate contract type;
• Consulting on the contents that must be included in the contract and notes;
• Consulting, guidance or support in drafting trademark license contracts;
• Consulting, supporting or participating in negotiating trademark license contracts;
• Consulting and guidance on preparing documents and procedures for registering trademark licenses;
• Representing the customer to register the License contract for the trademark;
• Consulting on effective contract implementation notes;
• Consulting on dispute resolution (if any);
• Consulting and answering other related issues.

Frequently asked questions about trademark licensing

Below are some frequently asked questions about trademark licensing from customers that we synthesize during the consulting process:

Is registration required for trademark licensing?

According to the law, a trademark license contract must be registered at the National Office of Intellectual Property to have legal effect.

Is trademark licensing different from trademark transfer?

Licensing a trademark is allowing others to use the trademark within a certain scope and period of time, while transferring a trademark is transferring the entire ownership of the trademark to another person.

Can a trademark be licensed to part of a product or service?

The License Contract may clearly stipulate the scope of the license for one or several specific products and services.

What content does a trademark license contract need to contain?

The contract needs to clearly stipulate information of the parties, the subject of the license, scope of rights and obligations, term, license fee, and other terms.

What happens if either party violates the trademark license contract?

The parties can resolve disputes through negotiation, conciliation or lawsuit in court according to the provisions of law.

What potential risks are there when licensing a trademark?

Risks may include the licensee improperly using the trademark, affecting the reputation of the trademark, or disputes over usage rights.

Can a trademark license contract be terminated before its expiration date?

Yes, if agreed in the contract or according to the law.

What notes are necessary when negotiating a trademark license contract?

It is necessary to check the legal status of the parties, ensure that the trademark is still protected, and clearly define the terms of the scope, time, and fee of the contract.

Trademark licensing is a useful tool to expand the scope of use of a trademark and generate income for the owner. Customers need to pay attention to the legal regulations on trademark licensing to ensure their rights. If you have any questions, please contact Long Phan Consulting Company immediately via the hotline: 0906735386 for the best advice and support.