TRANSFER THE RIGHTS TO USE MARK

Along with the development of the market economy, commodity transactions are increasingly interesting and focused. Accordingly, the objects of intellectual property are also considered as a form of “goods” that can be. traded on the market through forms such as transfer of ownership rights, use rights, especially “mark”. The exploitation and use of marks bring many benefits to individuals and organizations operating in the market. This is evidenced by the increasing number of .transactions related to mark licensing taking place in the market.

With many years of experience in the field of intellectual property, especially on marks, .LawPlus would like to refer to some critical legal issues related to the transfer of the right to use marks.

>>> TRADEMARK REGISTRATION 

I. OVERVIEW OF TRANSFER OF THE RIGHTS TO USE MARK

1.1. The concept of “mark” under the Intellectual Property Law

According to Clause 16, Article 4 of the Intellectual Property Law 2005, a “mark” is a sign used to distinguish .the goods and services of different organizations and individuals. 

Accordingly, signs used as marks must be visible signs in .the form of letters, words, images, drawings, or a combination of those elements represented by one or more colors. At the same time, these signs must be able to distinguish the goods .and services of the mark owner from those of other subjects.

1.2. The concept of transfer of the right to use the mark  

According to the provisions of clause 1, Article 141 of the Intellectual Property .Law 2005, the transfer of the right to use an industrial property object is the permission by the owner of an industrial .property object to organize, other individuals, to use industrial property objects within .the scope of their use rights. Thus, the transfer of the right to use a mark can be understood. as the permission of the owner of the mark to allow an individual or organization to exploit and use the mark within the. scope of his use right in a defined territory. and for a certain period as .agreed by the parties. The identification of the mark owner is based on the mark registration .certificate issued by the competent authority for the protected mark. 

Note:

It is necessary to distinguish between the transfer of the right to use and the transfer of ownership rights to the mark. Transfer of industrial property rights means that the owner transfers all his rights to the transferee. The transferee will be the new owner of the industrial property object. The transferor will terminate ownership of the object. TRANSFER THE RIGHTS TO USE MARK

Unlike the transfer of ownership, the transfer of the right to use a mark is the act by which the owner of the mark allows another individual or organization to exploit the use of the mark to serve the needs and interests of the transferee concession. The transfer of the right to use must be demonstrated by the licensor allowing the transferee to affix the protected mark on the goods, goods packaging means of business, service, and delivery papers. translation in business activities; circulate, offer for sale, advertise for sale, store for sale goods bearing the protected mark; import of goods and services bearing the protected mark. The licensor may also not transfer all of the above content, but only transfer to the transferee a part of the right to use the mark.

1.3. Limitations in the transfer of the right to use a mark 

The transfer of the right to use a mark still has certain restrictive conditions as prescribed by law, specifically:

– The owner may not transfer the right to use the collective mark to an organization or individual that is not a member of that collective mark owner.

– The licensee of the right to use the mark is obliged to write instructions on the goods and goods packaging that such goods are produced under the contract to use the mark and must not enter into a second contract with a third party unless otherwise permitted by the licensor. 

II. FORM OF TRANSFER OF THE RIGHT TO USE MARK  

According to Vietnamese law, the transfer of the right to use industrial property objects is in the form of a written contract. It is the mark transfer agreement

2.1. Types of mark  use contracts

According to Article 143 of the Intellectual Property Law, which regulates the types of contracts for the use of industrial property objects, the contracts for the use of industrial property objects include the following forms:

Exclusive contract: this is a contract under which, within the scope and term of assignment, the licensee has the exclusive right to use the mark, the licensor may not enter into a contract to use the mark with any other party any third party and may use such mark  only with the permission of the licensee;

Non-exclusive contract: this is a contract under which, within the scope and term of licensing, the licensor still has the right to use the mark, and the right to enter into a non-exclusive contract to use the mark  with the other party other;

Contract for using secondary industrial property object: this is a contract under which the licensor is the person who is assigned the right to use that mark under another contract. TRANSFER THE RIGHTS TO USE MARK

2.2. Contents of the contract for transferring the right to use the mark 

The parties to the contract of licensing the right to use the mark can freely agree on the terms of the contract. However, such terms must ensure to fully express the following contents:

1)    Full names and addresses of the licensor and the licensee;

2)    Grounds for licensing;

3)    Contract types;

4) Licensing scope includes limitations on use rights and territorial limitations; 

5)    Contract term;

6)    Price for licensing the right to use;

7)    Rights and obligations of the licensor and the licensee.

III. THE PROCEDURES FOR TRANSFERRING THE RIGHTS TO USE mark S AS VIETNAM’S LAW

3.1. Dossier for registration of a mark  transferring contract

To carry out the registration of the transfer of mark use rights, individuals .and organizations holding ownership rights to a mark need to prepare a full set of documents. by the provisions of the law. Accordingly, the application file for registration of a mark  license agreement must include:

– 02 copies of the registration declaration for the contract for the transfer of the right to use industrial property objects, made according to to form 02-HDSD in Schedule D issued together with Circular No. 16/2016/TT-BKHCN

– 01 copy of ownership transfer contract (original or certified copy); if the contract is made in a language .other than Vietnamese, it must be accompanied by a Vietnamese translation of the contract; If a contract has many pages, each page must have the .signatures of the parties or affixed with a border seal

– Original title of protection

– Written consent of the co-owners (In case of joint ownership)

 Power of Attorney (In case of filing through a representative)

– Copy of fee and fee payment voucher (In case of payment of fees via postal service .or directly into the account of the National Office of Intellectual Property).

3.2. Steps to carry out the transfer of mark  ownership

Step 1: Receipt of

dossiers Registration dossiers can be submitted in person or by post to the headquarters of the .National Office of Intellectual Property in Hanoi or at representative offices Department in Ho Chi Minh City and Da Nang.

Step 2: Processing records

– In case the dossier contains errors: NOIP shall issue a notice of its intention to refuse to register the contract, clearly stating the shortcomings of the dossier, setting a time limit of 2 months (point b, Clause 40, Article 1 of Circular No. 16/2016/TT-BKHCN) from the date of signing the notice for the applicant to correct errors or make objections about the intended refusal to register the contract or issue a decision to refuse registration of the contract if the applicant fails to correct or unsatisfactorily corrects deficiencies, has no objections or unwarranted objections to the intended refusal to register the contract. within the specified period.

– If there are no errors in the dossier: NOIP shall issue a decision to grant a certificate of registration .of a contract to use an industrial property object, and record it in the National Register of Public Property Rights, and publish the decision on granting .the Certificate of registration of the contract of licensing the industrial property object in the .Industrial Property Official Gazette within 2 months from the date of signing.

Mark licensing is gradually becoming a special transaction in today’s market. The transfer of mark use rights creates opportunities for individuals and organizations to earn profits. in their business activities while ensuring that the mark owner’s ownership rights are not infringe.

To understand more clearly the regulations on transferring marks, such as the order and procedures for registration of the licensing agreement, customers can contact the hotline +84 2862 779 399; +84 3939 30 522 or email info@lawplus.vn to get advice from the LawPlus team directly. 

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