Assignment of International Trademark Registration

In the progress of world integration, goods trading activities between countries and regions are becoming more and more developed, then the matters related to intellectual property is gradually being focused.

Recordal of Trademark Assignment in Vietnam

The individuals and organizations are aware of the benefit of registration the intellectual property subjects. In particular, they registered internationally for their trademark when widen their business abroad. After that, when trademark owner might wish to assign that granted certiicate trademark to others for economic or other reasons.

What is the assignment of international trademark process?

In this case, international trademark was registered under Madrid agreement and Madrid Protocol, established under decision on acceptance for protection or international registration protected in Vietnam issued by National office of Intellectual property Vietnam (NOIP). Accordingly, the trademark application originated from Vietnam submitted to International office via NOIP. Thus, trademark owner whom wish to assign or register their trademark internationally pursuant to Madrid system would submit application via NOIP. However, for the application which appointed in the country which is the member of Madrid agreement, parties may request the international office to conduct the assignment procedure.

When conducting the assignment procedure via NOIP, applicant needs to prepare following documents:

-Declaration for international trademark assignment;

-Declaration of international office;

-The copy of international trademark certificate in Vietnam;

-The copy record of assignment to the local trademark;

Besides, other documents will be required based on specific cases.

If Client needs any other information or requires for further advice, our IP attorney in Vietnam at ANT Lawyers, the IP agent in Vietnam will be available for service.

ANT Lawyers is a law firm in Vietnam located in the business centers of Hanoi, Danang, Ho Chi Minh city. We provide convenient access to our clients. Please contact our lawyers in Vietnam for advice via email ant@antlawyers.vn or call our office at +84 28 730 86 529.

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What is a Trademark?

A trademark is a type of intellectual property. A trademark also commonly known as a trademark, trade-mark or a mark. A trademark consists of a recognizable sign, design, or expression which identifies products or services of a particular company and helps in distinguishing the products from those of others.The symbols ® ‘the registered trademark symbol’ and ™ ‘the trademark symbol’ are generally used to indicate trademarks; the former is only for use by the owner of a trademark which is registered.

Register trademark in Vietnam

The trademark can be owned by:

-An individual,

-Business organization,

-Or any legal entity

When a trademark is registered, it confers an exclusive right to the owner to use the registered trademark. Thus it can be said that the trademark can be used by his owner exclusively, or it can be used by a person licensed for use in return of valid consideration.

Complete assignment

In this type of assignment, all the rights are completely transferred by the owner to the assignee.

The assignee has got all the rights including rights such right to further transfer and right to earn royalties.

Partial assignment

In this type, the assignment of the trademark is made to the assignee, but with respect to only some of the goods/ services, the transfer of ownership of the trademark is restricted to specific goods or services only. The rights are not transferred completely.

Assignment with goodwill

In this type of assignment, there is also a transfer of goodwill of the product with the trademark. In this, the valuation of goodwill is calculated differently in the agreement.

Assignment without goodwill

 In this type of assignment, goodwill of the product is not transferred along with the assignment of the trademark; in this, the owner of the brand restricts the rights of the assignee and does not allow him to use such trademark of the brand for the products being used by the assignor. Such an assignment is also referred to as a gross assignment.

When can a Trademark be assignerd?

A trademark can be assigned in the following situations

The Death of the Trademark Owner

Whenever the owner of the trademark i.e. the assignor dies, its ownership is passed on to the successors of the previous owners in a will or intestate. The condition is that the Trademark must be valid and should not have been abandoned by the previous owner.

Sale of Business

 Intellectual properties are assets for the company, just like all properties, even the trademark can be sold with the company. Provided it is registered under the company’s name. If a party acquires trademark rights of a company by acquiring a business with regard to the sale of assets of the company, the intellectual properties are also said to be transferred.

Change of the owner of businesses

When two companies decide on having a merger or an amalgamation of the company, a notification is sent to the registry. All the intellectual property of the acquired company are transferred to the new owner through the trademark assignment agreement between the parties.

Change in Form of Business

Whenever a business plan on changing its form of business or its business structure an assignment is a boon for those businesses.

If you are looking for an experienced trademark attorneys in Vietnam to help you with your trademark application, you should visit ANT Lawyers.vn. Our attorneys have experience with the trademark process and will work closely with you as you apply for your trademark.

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Assignment of International Trademark Registration

In the progress of world integration, goods trading activities between countries and regions are becoming more and more developed, then the matters related to intellectual property is gradually being focused.

Assignment of International Trademark Registration

The individuals and organizations are aware of the benefit of registration the intellectual property subjects. In particular, they registered internationally for their trademark when widen their business abroad. After that, when trademark owner might wish to assign that granted certificate trademark to others for economic or other reasons.

What is the assignment of international trademark process?

In this case, international trademark was registered under Madrid agreement and Madrid Protocol, established under decision on acceptance for protection or international registration protected in Vietnam issued by National office of Intellectual property Vietnam (NOIP). Accordingly, the trademark application originated from Vietnam submitted to International office via NOIP. Thus, trademark owner whom wish to assign or register their trademark internationally pursuant to Madrid system would submit application via NOIP. However, for the application which appointed in the country which is the member of Madrid agreement, parties may request the international office to conduct the assignment procedure.

When conducting the assignment procedure via NOIP, applicant needs to prepare following documents:

-        Declaration for international trademark assignment;

-        Declaration of international office;

-        The copy of international trademark certificate in Vietnam;

-        The copy record of assignment to the local trademark;

Besides, other documents will be required based on specific cases.

If Client needs any other information or requires for further advice, our IP attorney in Vietnam at ANT Lawyers, the IP agent in Vietnam will be available for service.

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Recordal of Trademark Assignment in Vietnam

Assignment of a trademark right means the transfer of ownership right by owner of such trademark right to another organization or individual.

Trademark Assignment in Vietnam be established in the form of written agreement. Oral agreements, letters or telegrams shall not be accepted and have no legal effect.

Recordalof Trademark Assignment in Vietnam

Required documents

You are required to provide us the following documents:

• One executed original of Deed of Assignment, which must be signed and sealed by both Assignor and Assignee. Since the Deed of Assignment has two pages, both Assignor and Assignee should sign on each page or use company stamp to inter-cross seal over all pages (NO      further notarization or legalization is required);
• A Power of Attorney (POA) that should only be signed by the Representative of Assignee; 
• The relevant original Certificate of Trademark Registration (if recording the assignment for a registered one).

Procedures and time

After the recordal of assignment is completed, the NOIP will issue the following documents:

• The Notice of Assignment Recordal in case of a pending Trademark Application.
• The Certificate for Registration of Deed of Assignment in case ofTrademark Registration. In addition, the name and address of new owner will be endorsed on the last page of this Certificate of Trademark Registration.

The whole duration for recordal of assignment will in straightforward case is 2 months counted from the filing date. However, in practice, this duration can be extended from 3-6 months.

Other matters

Under Vietnam Intellectual Property Law, the trademark assignment will not be approved in the following cases:

• The subject mark for assignment identical/confusingly similar to the trade name of assignor as it shall cause the confusion as to the origin of goods or services with those of assignor. 

• The subject mark for assignment similar or identical to other trademarks but not for assignment of Assignor in respect of similar goods or services as it shall cause the confusion as to the origin of goods or services with the rest of assignor.

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