Question: We are a Germany company and is developing a Network of Trademark Licenses in Germany and in foreign countries in order to sell cases for mobile phones, Smartphones, tablet computers, headsets, accessories for phones, Smartphones and tablet computers as well as customization services under our trademark.

Formalities for registration of this trademark in Vietnam have been engaged by our client with WIPO.

Our company plans to quickly develop its activity in Vietnam. In this context, our company is already in contact with a Vietnamese company to conclude a trademark master license agreement.

We have already drafted this agreement but we need to know if it is in compliance with theVietnamese public order rules and if there is any clause which could imply that these Agreements or some provisions of it would be ineffective in your country.

The review of this agreement would need to be done as soon as possible. We have also prepared a brief questionnaire of issues that might trigger comments but of course would appreciate any additional comments based on your experience.

We thank you to confirm that you can assist us with regard to the review of this agreement and to send us your best fee quote for your review of the document to ensure it does not infringe any public order rules in Vietnam and can be enforced if required. Ideally we would appreciate your comments and suggestions to be included directly in the draft documents. We would appreciate your fee quote include normal follow up conversations or clarifications further to your initial feedback.

Answen: We refer with thanks to your email concerning the aforementioned subject matter.

Our fee for reviewing the master franchise agreement for 82 pages is US$3,200.00 (By word: Three thousand and two hundred US Dollars).

Please be noted that this fee is inclusive 10% VAT.

Our legal opinion will be sent to you within 6-10 working days after receiving your instruction on this matter.

We do hope that the aforementioned advice will be useful for you. Should you have any enquiry, please do not hesitate to contact us.

DECLARATION OF OWNERSHIP OF TRADEMARK

I.  _______, Authorised person of __________ a Company incorporated in the ________ and having its executive office at _______  (hereinafter referred to as “the Company”) do solemnly and sincerely declare as follows:-

1. That the Company is the Owner and Sole Proprietor of the Trademark viz:

Instert trademark here 

That the said Trademark consists of the word “Instert trademark here

2. ” and the devices of______.”

3. That the above-mentioned Trademark is used in respect of – Define your class and products within the class.

Manufactured, imported and / or sold by or on behalf of the Company in the Union of Myanmar since_________.(if available)

4.  That the Company reserves the right to use the above-mentioned mark in any color or combination of colors.

5.  That the Company claims the exclusive right of trademark ownership in the Republic of the Union of Myanmar.

Declared at _________on the _______day of ___________2013 .

(Insert name of declarant)

Authorised Person Witnesses:

(1)________________                               (2)_________________

Question: We would like to register trademark in Asean, please provide us the legal procedure and your fee?

Answen: At your enquiry, we would like to send you our advice on this matter as below:

1. The time frame for procedure for registering trademark in ASEAN

In order to register a trademark in ASEAN, we file the application directly with the Intellectual Property Office of such countries.

The time frame for conducting a search and registration a trademark (with one class) will be estimated as below:

2. Estimated fee for searching and registering a trademark in ASEAN

Note:

–         The above mentioned fees are exclusive 5% VAT and other disbursements such as fee for responding to Office Action in each country, fee for counter-responding to the opposition of any parties;

–         Agency fee is our service fee while official fee includes fee for Office of Intellectual Property and service fee of Law firm at each country;

–         The search is not compulsory, but the search result will show the chance of success in registering the trademark at such countries. The search result is for reference only. It is not the conclusion of Intellectual Property Office.

–         The above mentioned fees are estimated for 01 trademark with 01 class. The exact fees for taking the above mentioned action at ASEAN will be provided with you upon receiving the detail of goods/service of your company.

3. The procedure for registering trademark at ASEAN

Your trademark application will be examined following the below procedures:

–         Formality examination: Your application will be examined whether it meets the formality conditions of a trademark application according to the regulation of each countries or not.

–         Substantive examination: In this step, your application will be examined whether it could be protected as a trademark or not?

–         Publication: Your application will be published on a Official Gazette of such country;

–         Granting the certificate: In case your application meets all requirements for protecting a trademark and there are not any opposition of third party against your trademark application, the Office of Intellectual Property of each country will grant the certificate of trademark for your application.

Question: Our firm wants to register trademark in Hong Kong and Vietnam, please provide us the fee?

Answen: SBLAW would like to send you the final advice for registering trademark in Hong Kong and Vietnam for your kind consideration:

Trademark in Hong Kong

 Trademark in Vietnam

Other notes: in order to file your trademark through Madrid system, you are required to file a trademark in Vietnam first. Then, your trademark through Madrid system shall be based on Vietnamese application.

Should you have any inquiry, please do not hesitate to contact us.

We look forward to hearing from you soon.

Question: Our company would like to register trademark in US, Singapore and Hongkong, please provide us the fee (including attorney fee)?

Answer:  SBLAW would like to advise you on the fee for registering trademark in US, Singapore and Vietnam.

1.Trademark in US and Singapore

2. Trademark in Vietnam

Total of fee: 58,364,000 VND. 

This fee excludes 5%VAT and appeal to office action to any fault no caused by SB LAW (if any)

Other notes: in order to file your trademark through Madrid system, you are required to file a trademark in Vietnam first. Then, your trademark through Madrid system shall be based on Vietnamese application.

Should you have any inquiry, please do not hesitate to contact us.

In case your company will use our services in registration of 01 trademark in Vietnam and USA for 01 class.    

SBLAW would like to set out the guidelines steps as follows:

1. We will draft a Consultancy Contact on IP (by English/Vietnamese version) and revert a soft copy to your company for reviewing before both of us signing and sealing .
2. When the Consultancy Contact on IP has been signed and sealed by both of us, we will provide you with the related document for your execution meanwhile your company carry out the first payment item which was set out on the Contract.
3. After receiving your executed document as well as the amount of the fist payment, we will arrange and filling the trademark applications in Vietnam as well as in the US soon and keep you informed of the filling detail in due course.

For purpose of drafting the Contract, please kindly provide us with the below information:

– Full name and address of applicant

– Marks (soft version)

– List of goods/services (in detail)

– Full name and address of the entity which will sign the Contact with SB Law

– Tax code of the entity which will sign the Contact with SB Law

– Tel/email of of the entity which will sign the Contact with SB Law

– Representative of the entity which will sign the Contact with SB Law (as well as position)

SBLAW would like to advise you on the procedure and our fee schedule in relation to the trademark registration proceeding in Vietnam and the The United States of America as follows:

1. FEE SCHEDULE

In Vietnam and The United States of America, multi-class application is applicable. The basic fees are calculated based on the number of class of goods/services (G/S) in each application as well as the number of products designated in each class in the application.

As provided information in your email:

Trademark:  (unknown)

Classification: 01 class

We would like to provide you about fees and procedure for registration of trademark in each country as below:

Time for conducting trademark search and registration

Even though, conducting a trademark search is optional, but you could conduct a trademark search to save the time and fee (in case of search report showing that your mark is not available to filling in Vietnam, SB Law will consult for you how to overcome the cited mark or proportion of chance to overcome )

In words: Six hundred and thirty US dollars only

Below is the breakdown of charges for registering a trademark in Vietnam and the United States of America, in a smooth case, for your consideration:

 In words: One thousand and two hundred and fifty five US dollars only.

Note: The above-quoted fees do not include 5% VAT of our service charge, bank charges ($US30) and actual communication costs ($US30-$US 40). In case of any office action or any possible opposition which may occur during the application proceedings, an additional charge may be incurred, upon the your approval.

 2.  REQUIRED DOCUMENTS AND INFORMATION

– Name and address of the Applicant;

– List of Goods/Services;

– Specimen of the applied mark;

– An original Power of Attorney which is simply signed by the Applicant

We hope the above is of your assistance. Should you have any inquiry, please do not hesitate to contact us. We look forward to hearing from you very soon.

SBLAW would like to provide client the form of trademark license agreement for your kind consideration:

TRADEMARK LICENSE AGREEMENT

This AGREEMENT is entered into as of {                           ], by and between [                                ], a corporation organized and existing under the laws of [______       ], having offices at [_____________] (“Licensor”) and [__________], a corporation organized and existing under the laws of [________], having offices at [_______________] ( Licensee”).

WHEREAS, the Licensor is the owner of all right, title and interest in and to the trademarks of which the details are specified in Appendix 1 hereto (the “Trademarks”).

WHEREAS, the Licensee desires to acquire from the Licensor, and the Licensor is willing to grant to the Licensee, the license to use, utilize and/or exploit the Trademarks in the territory of Vietnam for the goods as specified in Appendix 1 hereto (the “Goods”).

NOW, THEREFORE, the Licensor and the Licensee agrees as follows:

1.     Scope of License.

The Licensor hereby grants the Licensee an ____________(exclusive or non-exclusive) license during the term described hereinbelow to use (and to sublicense the use of) the Trademarks within the territory of Vietnam for use on or in connection with the Goods.

2.    Fee of License

The Licensee shall pay the Licensor the sum of ___________(the amount of money shall be specified) as the License fee. Such License fee shall be remitted to the Licensor in the manner of (lump-sum or royalty) payment.

3.    Term.

3.1       The term of the license herein granted shall commence from the date on which it is decided by the National Office of Industrial Property of Vietnam (the “NOIP”) for registration through [_______________] (the date on which both sides wish to terminate the License)

3.2.      Any amendment and extension of this Agreement shall be made by a written agreement duly executed by authorized representatives of the parties hereto.

4.    Warrants and Representations.

The Licensor hereby warrants and represents that it is the sole owner of all right, title and interest in and to the Trademarks in the territory of Vietnam, and that the license granted herein shall not cause any infringement of industrial property rights of any third party in the territory of Vietnam.

5.    Obligations of the Parties.

5.1.      The Licensor agrees:

(i)        To take action it deems appropriate to resolve disputes with third parties if that dispute is caused from the license granted herein; and

(ii)        To take action it deems appropriate against acts of infringement by third parties which may cause damage to the Licensee, provided however, that if the Licensor fails to do so within three (3) months from its receipt of notice of infringement given by the Licensee, the Licensee can itself request the State competent authority to handle that infringement.

5.2       The Licensee agrees:

(i)         To register this Agreement with the relevant State Authority (NOIP)

(ii)        To be inspected by the Licensor in respect of quality of products bearing the Trademarks if so required by the Licensor; and

(iii)       To indicate the Licensor’s name on products or product packages bearing the Trademarks.

6.     Quality/Use of Marks.

The Licensee acknowledges that uniform and high standards of quality and service are necessary to maintain the public image and widespread acceptance associated with the Trademarks. Therefore. the Licensee shall produce only products meeting the quality control and other standards previously maintained by the Licensor and which may he adopted from time to time by the Licensor.

7      Governing Law.

This Agreement shall he governed by and interpreted according to the laws of [_______________________](country). Any dispute, controversy or claim arising out of or pertaining to this Agreement, or breach and termination of this Agreement, shall he settled by bona fide negotiations by the Parties hereto.

8.     Signing Authority.

The parties represent and warrant that their representatives signing this Agreement have full power and authority to sign this Agreement and to bind the parties.

IN WITNESS WHEREOF, the parties have executed this Agreement in______copies, as of the date set forth above.

FOR LICENSOR                                                                                            FOR LICENSEE

By:                                                                                                                     By:

Name:                                                                                                               Name:

Title:                                                                                                                  Title:

Notary Public                                                                                          Notary Public

Appendix  

Q: Now we are a USA company who would like to file one trademark application under four classes without claiming priority in USA. Before their formal application, we would like to perform a trademark availability search for the four classes first. And we would like to entrust your esteemed firm – SBLAW to help us handle the case. Thus, we would like to know your best cooperative fees and needing documents for the search (needing time and fees are sufficient) and application procedure respectively in reply to this email.

 A: Thank you very much for your request regarding the subject matter. Regarding your enquiries concerning the subject matter, we would like to advise you on the procedure and our fee schedule in relation to the trademark registration proceeding in Vietnam as follows:

1. FEE SCHEDULE

In Vietnam, multi-class application is applicable. The basic fees are calculated based on the number of class of goods/services (G/S) in each application as well as the number of products designated in each class in the application.

Fee for searching 01 trademark for 04 classes

In words: Two hundred and eighty

Note: The aforementioned quotation excludes 5%VAT.

Fee for registration of 01 trademark for 04 classes

Note: The above-quoted fees do not include 5% VAT of our service charge and actual communication costs ($US30-$US40) as well bank charge ($US20). In case of any office action or any possible opposition which may occur during the application proceedings, an additional charge may be incurred, upon your approval.

2. TIME FRAME

Time frame for trademark registration and conducting trademark search are broken as below:

3.  REQUIRED DOCUMENTS AND INFORMATION

–       Name and address of the Applicant;

–       List of Goods/Services;

–       Specimen of the applied mark;

–       Notarized Power of Attorney.

We hope the above is of your assistance. Should you have any inquiry, please do not hesitate to contact us. We look forward to hearing from you very soon.