Non-recordal of trademark license
The IP Law of Vietnam stipulates that a trademark licensing agreement (“trademark license”) must be made in writing.
Previously, a trademark license must be recorded with the Vietnam Intellectual Property Office (“VNIPO”) so as to be effective against third parties. Under this old provision, serious questions were raised without final answers as to the understanding and application of the law such as “Who are the third parties meant by the law?” or “In cases where a trademark license has not been recorded at the VNIPO, would the use of the licensed trademark by the licensee be considered the legal use of that trademark by its owner in defense against a non-use cancellation filed by a third party?” etc.
The current IP Law recently amended and effective in 2019 in accordance with the effective CPTPP has helped solved such issues. Accordingly, (i) a trademark license is now effective upon agreement between the parties and also effective against third parties (fully effective and enforceable), not dependent on whether or not it is recorded at the VNIPO (Article 148.3 of the amended IP Law), and (ii) the use of the trademark by the licensee under a trademark license is also considered as the use of the trademark by its owner (Article 136.2 of the amended IP law).
Required documents in case of voluntary recordal
As informed above, recordal of trademark licenses at the VNIPO is not mandatory. However, in case the parties wish to proceed with the voluntary recordal, the following documents will be required:
– Two (2) originals of the License Agreement which are simply signed by hand on every single page by both parties, OR two (2) notarized true copies of such License Agreement;
– Written consent of the co-owners to the trademark license, if the licensed trademark is under joint ownership;
– An original Power of Attorney simply signed by the Licensor or Licensee. Neither legalization nor notarization is required.
Requests for voluntary recordal of trademark licenses will be examined and determined by the Post Registration Examination Center (“PREC”) of the VNIPO.
Typical restrictions of trademark licenses by law
As stipulated at Article 142 of the IP law, a trademark license shall be subject to the following restriction:
- The right to use a collective mark must not be licensed to organizations or individuals other than members of the owner of such collective mark;
- The licensee must not enter into a sub-license agreement with a third party, unless it is so permitted by the licensor;
- The licensee shall be obliged to indicate on the relevant goods and packaging of goods that such goods are manufactured under trademark license contracts.
As stipulated at Article 144 of the IP law, a trademark license must not include provisions which unreasonably restrict the right of the licensee, particularly the following provisions which do not derive from the rights of the licensor:
- Directly or indirectly restricting the licensee from exporting goods produced or services provided under the trademark license to the territories where the licensor neither holds the respective trademark rights nor has the exclusive right to import such goods;
- Compelling the licensee to buy all or a certain portion of raw materials, components or equipment from the licensor or a third party designated by the licensor not for the purpose of ensuring the quality of goods produced or services provided by the licensee;
- Forbidding the licensee to initiate lawsuits with regard to the validity of the industrial property rights or the licensor’s right to license.
Violations of the above provisions may lead to the risk of the trademark license being void or the parties to the licenses being administratively sanctioned. Please contact our trademark attorneys for appropriate advice that apply to your specific matters.
to be updated soon…
to be updated soon…