Conditions for trademark transfer is the deciding factor in the legality of this transaction. Businesses need to master the legal regulations on trademark transfer to ensure their rights and avoid legal risks. Follow Long Phan’s article for more detailed information on conditions, procedures and important notes when transferring trademarks in Vietnam.
Regulations on trademark transfer conditions
What is trademark transfer?
Trademark transfer is when the original owner transfers ownership of his trademark to the new owner.
Conditions for trademark transfer
According to the provisions of the Law on Intellectual Property 2005, amended and supplemented in 2022, in order to transfer a trademark, the following conditions must be met:
Comply with conditions restricting the transfer of industrial property rights, specifically including:
Owners of industrial property rights may only transfer their rights within the scope of protection.
The transfer of trademark rights must not cause confusion about the characteristics and origin of the goods or services bearing the mark.
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.
In addition, the following conditions are also met:
Trademark transfer must be done through a written contract;
The trademark transfer contract is only effective after completing the registration at the industrial property management agency in Vietnam, namely the National Office of Intellectual Property;
In case the trademark transferor has a trade name similar to the trademark being transferred, it is necessary to adjust the trade name before transferring the trademark.
Thus, in order for the legal transfer of trademarks as well as the transfer process to take place smoothly and conveniently, businesses need to meet the above conditions.
Note when transferring trademarks
Trademark transfer procedures
Profile components
Pursuant to STT 17, subsection A, Section 1, Part I of Decision 2060/QD-BKHCN on newly issued administrative procedures in the field of intellectual property within the scope of management functions of the Ministry of Science and Technology. When transferring a trademark, you need to prepare the following documents:
Trademark transfer contract registration declaration according to Form No. 01 in Appendix IV of Decree No. 65/2023/ND-CP;
01 contract (original or certified copy according to regulations); If the contract is made in a language other than Vietnamese, it must be accompanied by a translation of the contract into Vietnamese; If the contract has many pages, each page must have the parties’ signatures or seals;
Original certificate of protection in case the certificate of protection is issued in paper form;
Written agreement of the co-owners on the transfer of the trademark, if ownership of the respective trademark is jointly owned;
Authorization document (in case the request is submitted through a representative);
Copy of fee and charge payment voucher (in case of payment of fees and charges via postal service or direct payment to the Intellectual Property Department’s account);
For dossiers to register contracts for transfer of collective marks or certification marks, additional documents are required: Regulations on use of collective marks, regulations on use of certification marks and documents proving rights. submit the application from the Transferee (in this case, the National Office of Intellectual Property will re-examine the right to file and regulations on using the trademark; the applicant must pay the application examination fee in addition to the fees and charges for the transferee). with the application for registration of industrial property rights transfer contract according to regulations).
Execution order
The trademark transfer registration process is carried out according to the following steps:
Step 1: Receive documents
Organizations and individuals submit 01 dossier to register a trademark transfer contract to the National Office of Intellectual Property.
How to do it:
Submit online via the Administrative Procedures Information System of the Ministry of Science and Technology.
Directly or via postal service to the headquarters of the National Office of Intellectual Property in Hanoi or 2 representative offices of the Department in the city. Ho Chi Minh and Da Nang.
Step 2: Process documents
Case 1: The registration dossier has no errors:
The National Office of Intellectual Property issues a decision to record the transfer of industrial property rights;
Recorded in the new owner’s Protection Certificate; In case of transferring a part of the list of goods and services bearing a protected trademark, a new Trademark Registration Certificate will be issued to the receiving party and the limit of the list of goods/services in the Protection Certificate will be determined. original to that transfer;
Recorded in the National Register of Transfer of Industrial Property Rights;
Announce the decision to record the transfer of industrial property rights in the Industrial Property Official Gazette within 02 months from the date of decision.
Case 2: The registration dossier has errors:
The National Office of Intellectual Property issues a notice of intention to refuse registration of the contract, clearly stating the shortcomings of the dossier, setting a period of 02 months from the date of signing the notice for the applicant to correct the shortcomings or errors. Feedback on the intention to refuse contract registration;
Issuing 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 prescribed time limit.
Legal basis: STT 17, subsection A, Section 1, Part I Decision 2060/QD-BKHCN.
Steps to transfer a trademark
Consulting services and support for standard trademark transfer
Using consulting services during the trademark transfer process can help businesses save time, avoid errors that can lead to refusal of registration, and ensure the rights of all parties in the transaction. At Long Phan, we provide comprehensive solutions for customers and help you feel secure in transferring trademarks professionally and legally. Consulting and support services at Long Phan include:
Consulting on transfer conditions
Evaluate the validity of the transfer.
Draft, review, amend and supplement transfer contracts.
Assist customers in preparing and submitting registration documents.
Customer representative carries out procedures.
Monitor and handle issues that arise during the approval process.
Brand transfer is a strategic step, opening up many development opportunities for businesses. With careful preparation and compliance with legal regulations, this process will go smoothly, bringing great benefits to the parties involved. Long Phan is proud to be a reliable partner, ready to support customers in every step of the trademark transfer process. Please contact Long Phan via hotline 0906735386to receive free consultation and start your successful trademark transfer journey.
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Dương Thị Kim Ngân
Jurist Ngan Duong Thi Kim - Partner of Long Phan, Ms. Ngan possesses profound knowledge in business consulting, labor, and contracts. With dedication and creativity, Ms. Ngân has achieved significant success in advising and supporting businesses in critical areas such as legal matters, finance, management, and contracts. She is committed to providing optimal solutions and helping clients succeed in the business environment.