SBLAW would like to advise you on procedure for recordal of trademark license agreement and the related matters as follows:
1.BRIEF ON PROCEDURE
Licensing means the trademark owner (the Licensor) grants a permit to a third party (the Licensee) in order to commercially use the trademark legally1 grant a permit to one or various individuals/legal entities to use his mark while the ownership towards the licensed trademark is still belong to the Licensor.
The License Agreement should be in written form. To be effective to any third party, the License Agreement must be recorded with the competent authority (Trademark Office of Vietnam – NOIP).
The most important condition for such a recordal is that the licensed trademark acquires protection in Vietnam and only when the registration certificate for the licensed mark is issued, can the recordal be proceeded before the NOIP.
As stipulated, the License Agreement should include but not limited to the following contents:
– Name and address of the Licensor and Licensee;
– Details of the Licensed Trademark including trademark, registration number, class of goods/services, issuance date of the registration;
– Scope of license including type of contract (exclusive or non exclusive); territory the license covers, period for the license;
– License fee (actual or nominal fee are both acceptable)
– Rights and obligations of involved parties;
– Regulations on amendment, termination, dispute settlement;
– Time and place of signing the Agreement.
2.REQUIRED INFORMATION/DOCUMENTS
To proceed with the recordal of license agreement, the following information/documents must be provided:
• 02 original copies of the License Agreement;
• A simple copy of the registration certificate of licensed mark;
• An original Power of Attorney signed by the Requester.
Notes: In the Agreement, the Licensor (oversea company/individual) is required to sign only (on each page of the Agreement). No notarization or legalization is required. For the Licensee (local company), the Agreement should be signed and sealed (also in every pages of the Agreement).
3.TIME LINE
As stipulated, the statutory time for recordal of a Licensed Agreement is 5-6 months from the filing date. It however may take longer in practice due to the backlog of the NOIP (1-2 months). During the prosecution, we will follow up the case, dealing with any office action (if any) and report to you once the recordal completes.
