Requirement of recordal

Under the current IP Law of Vietnam, the assignment of registered trademarks must be made in writing and shall be effective only when it is recorded with the Vietnam Intellectual Property Office (“VNIPO”).

Accordingly, the assignment of both registered trademarks under International Registrations designating  Vietnam (“IR marks”) and national registrations (“Vietnamese marks”) must be recorded at the VNIPO so as to be valid and enforceable. However, while the request for recordal of assignment of IR marks must be filed with WIPO, the request for recordal of assignment of Vietnamese marks must be filed directly with VNIPO.

The assignment of  trademarks under pending international applications is filed with and recorded at WIPO in compliance with the Madrid system. Whereas, the assignment of trademarks under pending Vietnamese applications is filed with and processed by the VNIPO in compliance with the Vietnamese IP Law.

Required documents

The dossiers for recordal of the assignment of Vietnamese registered trademarks at the VNIPO must comprise of the following documents:

• An original Assignment Agreement that is simply signed by hand on every single page of the agreement by both parties, or a notarized true copy of such Assignment Agreement;
• The original Certificate of the relevant trademark registration;
• Written consent of the co-owners to the assignment, if the assigned trademark is under joint ownership;
• An original Power of Attorney simply signed by the Assignor or Assignee. Neither legalization nor notarization is required.
• For the assignment of a collective mark or certification mark, in addition to those listed above, the following documents will also be required:

+ Regulations on the use of the assigned collective mark or certification mark established by the Assignee under Article 105 of the IP Law;

+ The documents proving the Assignee’s right to register the mark under Clauses 3 and 4 of Article 87 of the IP Law.

The dossiers for recordal of the assignment of Vietnamese pending trademark applications at the VNIPO must comprise of the following documents:

• An original Assignment Agreement that is simply signed by hand on every single page of the agreement by both parties, or a notarized true copy of such Assignment Agreement;
• An original Power of Attorney simply signed by the Assignor or Assignee. Neither legalization nor notarization is required.

Typical restrictions of trademark assignment by law

As long as the trademark application is still pending for registration, its applicant has not been granted the respective industrial property rights. Accordingly, the assignment of a pending trademark application is considered a type of “amendment of application” for which the requirements are quite simple.

On the contrary, once the trademark has been granted registration, the assignment thereof must comply with a number of provisions of the IP Law, especially, as stipulated at Article 139 of the IP law, a trademark assignment will not be allowed if it is considered causing “confusion as to the peculiar characteristics or origin of the goods/services bearing the trademark”.

Under the VNIPO’s Guideline on the examination of the dossiers for recordal of assignment agreement of industrial property rights, effective as of 31 December 2020, the above provision concerning the confusion resulted from the trademark assignment is clarified in a number of specific cases; two of the most typical ones, among others, are as follows:

• The assigned trademark is confusingly similar with the remaining registered trademark(s) in the name of the Assignor;
• The assigned trademark is identical with or confusingly similar to the trade name of the Assignor.

As such, it is highly recommended that the parties to the assignment agreement take a good review of their trademark portfolio before deciding to proceed with the assignment of any specific trademark.

Please contact our trademark attorneys for appropriate advice that apply to your specific matters.

to be updated soon…

to be updated soon…