A trademark is a symbol used to distinguish goods and services of different organizations and individuals and it must be registered with a competent authority. During the operation, the trademark owner can gift his trademark to others. Through this article, BLawyers Vietnam will present 06 notes that protected trademarks owners should consider when gifting a trademark.
1. What is gifting the protected trademark?
Currently, the prevailing law in Vietnam does not specify the case of gifting protected trademarks. If the protected trademark owner wants to gift the trademark to another person, he/ she may consider implementing by a trademark transfer contract (“TTC“) with another person.
Trademark transfer means the transfer of ownership of the trademark to another organization or individual. Procedures for trademark transfer are under the management through the registration of trademark transfer contracts with competent state authorities (“Competent Authority”).
2. Notes for gifting the protected trademark
(i) Conditions for trademark transfer
The trademark transfer must meet some of the following restrictive conditions:
- Trademark owners may only transfer their trademarks and rights to the extent that they are legally protected;
- The transfer of trademark rights must not confuse the characteristics, origins, trade names, or associated marks of trademarked goods and services; and
- Trademark rights shall be transferred only to organizations and individuals who meet the requirements for registering such trademarks.
(ii) Validity of TTC
The trademark transfer must be carried out in the form of a written contract and is only valid after it has been registered with the Competent Authority.
(iii) The contents of the TTC
The TTC must contain the following main contents:
- Full name and address of the assignor and the assignee;
- Transfer bases;
- The TTC value; and
- Rights and obligations of the involved parties.
In addition, both parties may agree on other terms that are not contrary to the provisions of law.
(iv) Procedures for registration of TTC
- Step 1: The parties negotiate and sign the TTC;
- Step 2: The parties register the TTC with the Competent Authority;
- Step 3: The Competent Authority receives and processes the dossier of registering the TTC.
In case the registration dossier has no shortcomings:
- The Competent Authority shall issue a decision on the recognition of the trademark transfer;
- Recording the new owner into the protection certificate;
- Recording the trademark transfer into the National Registry of Industrial Property Transfer; and
- Publishing the decision on the issuance of the registration certificate of TTC in the Industrial Property Gazette.
In case the registration dossier is incomplete, the Competent Authorities issues notice to refuse the registration of the TTC, stating the shortcomings of the dossier and providing feedback on the intention to refuse the registration of the TTC.
(v) TTC registration dossier
The application for the registration of the TTC includes the following documents:
- Declaration of TTC registration;
- The TTC, if the contract is made in a language other than Vietnamese, it must be accompanied by a translation of the contract into Vietnamese;
- The original protection certificate;
- The written consent of the co-owners, the written explanation of the reasons for the disagreement of any co-owner on the transfer of rights if industrial property rights are jointly owned;
- Documents for the payment of fees; and
- Power of attorney if it is submitted through a representative.
To summarize, for the gift of a protected trademark to be effective, the trademark owner must consider some conditions and procedures for registering TTC with Competent Authority.
