How to license Trademark in Vietnam?

21/03/2017 - 1526 views

1. What Lisence trademark in Vietnam?

License trademark in Vietnam means the permission by the owner of such trademark for another organization or individual to use the trademark within the scope of Vietnam. Licensing of the trademark must be established in the form of written agreement.

 

2. Types of lisence trademark in Vietnam

According to Vietnam trademark system, Trademark license agreement shall be of the following types:

  • Exclusive agreement means an agreement under which, within licensing scope and term, the licensee shall have an exclusive right to use the licensed trademark while the licensor may neither enter into any trademark license agreement with any third party nor, without permission of the licensee, use such trademark;
  • Non-exclusive agreement means an agreement under which, within licensing scope and term, the licensor shall still have the rights to use the trademark and to enter into non-exclusive trademark license agreements with others.

Trademark sub-license agreement means an agreement under which the licensor is a licensee of the right to use a trademark under another agreement.

 

License trademark in Vietnam must be established in the form of written agreement

 

3. The necessary contents of trademark license agreement in Vietnam

There is no a standard form of license agreement. However, under Vietnam regulations, the trademark license agreement must include the following necessary contents and provisions:

  • Full name and address of the Licensor and the Licensee
  • Bases of the license;
  • Type of the agreement;
  • Scope of the license (limitations to use; territorial limitations);
  • Term of license;
  • Price for the license;
  • Rights and obligations of the Licensor and the Licensee.

 

4. Benefits of recording a agreement of license trademark in Vietnam

Accordingly to Vietnam’s current IP Law, it is not mandatory to record a trademark license agreement with the IP Ofice of Vietnam (IPVN). However, the concerning parties are highly recommended to do so owing to the subsequent reasons:

  • A recorded license agreement has a certain meaning to non-use cancellation procedure against the licensed trademark in Vietnam

As you may be aware, in Vietnam, a registered trademark that has not been used for 05 consecutive years may be canceled at the request of a third party; and it is acceptable to produce trademark usage proof by the licensee(s) as if the trademark proprietor in order to overcome the cancellation.

When reviewing the trademark usage proof submitted by the licensee, the IPVN would undoubtedly confirm the parties’ connection. If the license trademark in Vietnam is already recorded, i.e., the licensee is recognized by the IPVN, the Examiner will have a solid foundation to assess and accept the licensee’s usage proof and reject the cancellation request.

In contrast, if the license trademark in Vietnam is not recorded in advance, it will take time for the Examiner to verify the transparency and faith of the license contract, primarily by requesting supporting materials from the parties involved to ensure that the contract is not fabricated to defend against the cancellation request. As a result, the client will waste time, and the licensing contract, as well as the licensee’s use evidence, may be denied.

  • That a license agreement is recorded means it complies with Vietnam legal system

According to our IP Law, a license agreement shall include compulsory provisions that make it valid. Moreover, if there is any invalid term, it will not be based on to solve relevant problems, if any. Thinking of a dispute arising between the parties but their dispute settlement terms do not work under our jurisdiction, it is not possible for the courts/arbitration to settle the case based on the contract.

With a request for a license recordal, the client’s license contract would be reviewed by the IPVN in accordance with the Vietnam law system and get a certification on the contract, which is a significant advantage to the concerning parties.

On the one hand, with the IPVN’s feedback, the client will have a chance to perfect their contract. Therefore, letting the IPVN review the contract in advance would give the client a chance to supplement appropriate terms or revise the invalid ones on time, if any.

Through our experience, that a contract is recognized and recorded by a National Office like IPVN has significance to other Competent Authorities. It contributes a solid foundation for other Officials to believe that the contract fully complies with the related regulations and is practically applied in Vietnam.

  • With a recorded license agreement, the right of the licensee will not be questioned and automatically recognized by the local Competent Authorities

A license trademark in Vietnam may necessitate procedures with other Competent Authorities, in addition to the IPVN, such as the Tax Office, Customs Authority, Market Surveillance Department, Advertising, Bank (that executes the authorization to pay the license fees), etc., and it would be simple and convenient for these bodies to consider and accept a recorded license.

On the contrary, the aforementioned authorities, who are unfamiliar with IP law, are likely to question the transparency of an unrecorded license before taking the appropriate procedures. As a result, the licensee may be asked to present supporting documentation to confirm the legality of the contract. Therefore, should the client facilitate the official’s duty by recording the trademark license in advance, they will also help themselves save a significant amount of time in the relevant procedures.

 

5. Requirements for license trademark in Vietnam

For the recordal of a license agreement trademark in Vietnam, the following documents are required:

  • One original executed Power of Attorney, which should be signed and sealed (if the seal is available) by either Licensor or Licensee;
  • Two duly executed originals or Two valid copies of the agreement; of the License Agreement which must be signed and sealed (if the seal is available) by both Licensor and Licensee. If the agreement has more than one page, both parties should sign on each page or inter-cross seal over all pages (if the seal is available).

The above documents are NOT required to be notarized or legalized.

 

6. Time frame

The whole duration for recordal of license trademark in Vietnam will in straightforward case is 2 months counted from the filing date. However, in practice, this duration can be extended to 4-6 months.

 

More information about trademark practice in Vietnam can be found HERE.

 

Should you need more information or further advice on Trademark in Vietnam, Laos, Cambodia and Myanmar, please do not hesitate to contact us via email at info@ageless.vn