Procedure for change in ownership of a trademark (brand name)

  and circumstances of trademark assignment are rejected in Vietnam

Email to: vinh@bross.vn

Assignment of a trademark means recordal of new owner

Rights to a registered trademark (brand name) are the legally recognized exclusive rights to use such trademark in commerce granted by the National Office of Intellectual Property of Vietnam (NOIP) in favor of only registrant (also known as right holder or owner as recorded on a certificate of trademark registration). The above-said monopoly right is recognized by the civil law as one of "property rights" in addition to other assets whereby the owner of that exclusive right has always had three types of right: possession, use and disposition, that is, he has the sole discretion to bring that exclusive right into the transaction in the form of a lease (grant of license) or change in owner (assignment or ownership right transfer).

Is a trademark assignment agreement mandatory to record?

The law does not recognize any assignee as new owners of assigned trademark as long as the transfer contract signed by the assignor and assignee has been not yet registered with the NOIP. Therefore, recordal of trademark assignment contract is a required procedure.

An assignment agreement must include four main contents: (i) the full name and address of the assignor and assignee; (ii) grounds for assignment (number of protection titles, date of issue, class and term of protection); (iii) transfer price (specific amount in VND required, or free of charge); and (iv) the rights and obligations of the assignor and assignee.

Subject to category of trademark subject to assignment, a required dossier consists of:

(a) An original version of registration of trademark to be transferred;

(b) A trademark assignment contract signed by the assignor and assignee (the parties’ signature must be shown on each page of the contract);

(c) A written agreement of co-owners of the assigned trademark if such trademark is jointly owned by more than one owner,

(d) Power of Attorney in favor of a trademark agent (eg. Bross & Partners) on behalf of the parties to proceed with recordal of change in ownership;

(e) Regulations on the use of collective mark or regulations on the use of certification mark provided by the assignee if the assigned trademark are collective trademark or certification trademark respectively;

(f) Documents proving that the assignee is eligible to apply for certification or collective marks.

Since the vast majority of existing trademarks in Vietnam are common trademarks, only documents (a) and (b) above are sufficient.

In theory, it only takes 2 months for the NOIP to issue and return a decision on recordation of agreement on industrial property right transfer together with the trademark registration certificate on which new owner has been endorsed unless there are shortcomings needed to be amended or supplemented. But in fact this term can be more extended from 4 to 6 months depending on the busyness or overload of the NOIP time to time.

Is there any possibility that a trademark assignment contract is likely rejected?

Yes. Not every trademark transfer agreement can be successfully registered. In practice, the NOIP may refuse to register a new owner if the assigned trademark falls into the following circumstances prohibited or restricted by the laws: (i) transfer of the right to a trademark may cause confusion about the characteristics, origin of the trademarked goods or services; (ii) right to a trademark may only be transferred to new organization or individual assumed as new assigness do not meet entitlement to register that trademark..

With respect to circumstances of denial of recordal of assignment of trademark, in our experience, they may be:

1. The assigned trademark is regarded identical with or confusingly similar to the assignor's trade name (i.e. this may make consumer believe into thinking that the assigned trademark and trade name has the same origin of commerce derived from the assignor because that trade name was not subject of assignment);
2. The assignor still owns one or few trademarks other than the transferred trademark and these trademark are likely to cause confusion with one other, resulting in the fact that customer may associate that the assignee is still the owner or the original source of commerce.

Should you have any query, please contact us at vinh@bross.vn or 84-903 287 057

Bross & Partners, a renowned and qualified Patent, Design, Trademark and Copyright agent of Vietnam, constantly ranked and recommended by the Managing Intellectual Property (MIP), World Trademark Review (WTR), Legal 500 Asia Pacific, AsiaLaw Profiles, Asia IP and Asian Legal Business, is providing clients all over the world with the reliable, affordable contentious and non-contentious IP services including enforcement, anti-counterfeiting,  litigation regarding trademark, trade name, industrial design, patent, copyright and domain name.