Right to assign  trademark to other organizations, individuals after being granted protection title

I. Applicable laws

• Law on Intellectual property;
• Decree No. 103/2006/ND-CP;
• Circular No. 01/2007/TT-BKHCN; and
• Circular No. 16/2016/TT-BKHCN,

II. Right to assign trademark to other organizations, individuals after being granted protection title

The assignment of industrial property right means assignment of the owner’s ownership of the industrial property to another organization or individual.

In accordance with the Vietnamese laws, ” trademark” is considered as a type of property. Ownership of trademark is determined after the protection title is granted, except for well-know trademarks, specifically as follows:

• Ownership of the normal trademark is determined after the Intellectual property office of Vietnam (“IP Vietnam”) issues the protection title to the applicant.
• Ownership of Internationally registered trademark, according to Madrid Agreement and Madrid Protocol) is determined after IP Vietnam acknowledges the protection of the internationally registered trademark based on:

(1) The copy of the official Gazette regarding the Internationally registered trademark (issued by International Bureau); or

(2) The certificate of the internationally registered trademark protected in Vietnam (issued by IP Vietnam at the request of the trademark owner).

• Ownership of well-known trademark is determined after it is widely used until it becomes famous and its owner does not carry out registration procedures with IP Vietnam

III. Conditions for trademark assignment

• The assignment of the industrial property right (trademark) must be established in the form of a written contract.
• The trademark assignment contract shall only take effect when it has been registered with IP Vietnam

IV. Limitations on trademark assignment

• The owner of the trademark may only assign their rights within the scope of protection.
• The trademark assignment must not cause confusion related to features or origins of goods or services having the trademark.
• The trademark is only assigned to organizations or individuals who satisfy conditions for registering this trademark

V. Main contents of the trademark assignment contract

Although, the contents of the trademark assignment contract are established by parties, the law also requires some main contents, specifically:

• Full names and addresses of the assignor and the assignee;
• Grounds for the assignment;
• Assignment price; and
• Rights and obligations of the assignor and the assignee.

VI. Procedures for registration of trademark assignment contract

The assignor shall submit application for registration of the trademark assignment contract to IP Vietnam. The application includes the following documents:

• 02 copies of the written declaration for registration of the trademark assignment contract;
• 01 contract (the original or the notarized copy); if the contract is not made in Vietnamese, it must be enclosed with its Vietnamese translation; if the contract consists of many pages, each page must has the parties’ signatures or the pages are sealed on their’s edges;
• The original protection title;
• The written consent of co-owners to the assignment (if the trademark are under common ownership);
• The power of attorney (in case of applying through a representative); and
• The notarized copies of receipts for fees and/or charges (in case of paying fee and charge via postal services or directly into account of IP Vietnam)