The transfer of a trademark includes:
- Trademark assignment; and
- Trademark licensing.
Trademark assignment means the transfer of ownership rights by the trademark owner to another organization or individual.
In Trademark licensing, the trademark owner (Licensor) grants permission to another organization or individual (Licensee) to use the trademark within the scope of the owner’s right to use the trademark.
Restrictions on trademark assignment
Not all registered trademarks are transferable, and not every entity is entitled to trademark ownership transfer or receive an assignment due to certain restrictions on trademark assignment.
Trademark owners may only assign their ownership rights within the scope of protection.
The assignment of trademark ownership must not cause confusion as to the properties or origins of goods or services bearing such trademarks.
For example: The Buon Ma Thuot Coffee trademark cannot be transferred to another company to be placed on coffee products originating from the Lam Dong province.
Rights to register trademarks may only be assigned to organizations or individuals who satisfy conditions for persons having the right to register such marks.
For example: It is permitted to transfer only the right to register collective marks to another organization or individual, who is also a member of that collective organization.
Article 139 of the 2005 Law on Intellectual Property, amended in 2009
Restrictions on trademark licensing
The right to use collective trademarks must not be licensed to organizations or individuals other than the members of the owners of such collective trademarks.
For example: The collective mark ‘Cat Loc Mangos’ must not be transferred to the members of Cat Loc Cooperative to later transfer to other individuals or organizations.
Mark licensees are obliged to indicate on goods and their packages that such goods have been manufactured under a Licensing Agreement.
For example: Beiersdorf Vietnam Co., Ltd. manufactures NIVEA MEN products under the Licensing Agreement with Beiersdorf AG, Hamburg, Germany.
Clause 2 and 4 of Article 142 of the 2005 Law on Intellectual Property, amended in 2009
Things to know about Trademark Transfer Agreements
Trademark Assignment Agreements must be registered at the National Office of Intellectual Property (NOIP).
Licensing Agreements not registered with the NOIP (though non-mandatory) will only be valid for the signing parties and must be registered with the NOIP to be effective for third party(ies).
While it is not compulsory to register Licensing Agreements, parties still actually do so to ensure a smooth process in the long run.
For example: Heineken Vietnam Brewery produces and distributes Heineken products based on the Licensing Agreement with Heineken International, the Netherlands.
A trademark assignment is the transfer of all machinery, technology, production chains that create the products or services. A trademark assignment will remove the rights of its former holder.
For example: By acquiring 20th Century Fox Film Corporation, Disney owns and has the right to use all materials, movies, and characters of 20th Century Fox.
Article 143 of the 2005 Law on Intellectual Property, amended in 2009
Licensing Agreements can be annulled by the following
Provisions restricting the rights of the licensee or compelling the licensee to transfer to the licensor improvements of the object(s) bearing the trademark created by the licensee while using the trademark.
For example: “In case the licensee creates new products using the trademark of the licensor, they must be transferred to the licensor, free of charge, after the Licensing Agreement expires.” è Agreement annulled.
Provisions restricting the licensee from exporting goods produced or services provided under the Licensing Agreement to countries and territories where the licensor holds no trademark ownership.
For example: “The licensee is not permitted to export licensed goods to Thailand” while the licensor has no goods bearing such trademark in Thailand. è Agreement annulled.
Provisions compelling the licensee to purchase 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.
Provisions prohibiting the licensee from filing complaints or initiating lawsuits regarding the validity of the trademark ownership rights or the licensor’s right to license.
For example: “The licensee must not make any complaints or initiate any lawsuits on any issues related to the licensed trademark.” è Agreement annulled.
Clause 2 and 3 of Article 144 of the 2005 Law on Intellectual Property, amended in 2009
Registration of trademark transfer agreements
Order of registration
Dossier of registration
- Written declaration on the registration of Trademark Assignment Agreement or Licensing Agreement;
- Copies of the Trademark Assignment Agreement or Licensing Agreement;
- Trademark protection title;
- Power of attorney (if the dossier is filed through an Organization of Industrial Property Representation).
For registration dossiers of collective or certification trademark transfer agreements, the following documents are also required in addition to the above-mentioned:
- The licensee’s regulations on the use of the collective or certification trademarks;
- Documents proving the licensee’s right to file applications for the collective or certification trademarks.
Article 47, 48, and 49 of Circular 01/2007/TT-BKHCN
Clause 39, 40, and 41 of Article 1 Circular 16/2016/TT-BKHCN
