Trademark assignment in Vietnam

Assignment of the industrial property rights to a trademark means the trademark owner transferring/assigning its ownership of the trademark to another person. Under the current IP Law of Vietnam, a trademark assignment must be made in writing, i.e. a trademark assignment agreement, which shall be effective only when it is recorded with the IP Office of Vietnam (IPVN).

1. Required documents

You are required to provide us the following documents:

(i) One executed original of Deed of Assignment, which must be signed and sealed (if any) by both Assignor and Assignee. (the parties’ signature must be shown on each page of the contract and no further notarization or legalization is required);

(ii) A Power of Attorney (POA) that should only be signed by the Representative of Assignee; 

(iii) The relevant original Certificate of Trademark Registration.

2. Procedures and time

After the recordal of assignment is completed, the IPVN will affix a assignment note (including the name and address of the Asignee) directly at the last page of the original Trademark Registration and return it to the trademark owner upon completion of the assignment.

In theory, it only takes 2 months for the IPVN 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 IPVN time to time.

3. Notes for trademark assignment

Not every trademark transfer agreement can be successfully registered. In practice, the IPVN 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:

a. 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);

b. The assignor still owns one or few trademarks other than the transferred trademark and these trademarks 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.

In case you need assistance on trademark assignment in Vietnam, please do not hesitate to contact us via email: rubby@ipcells.com