Question: Please kindly advise us of your total charges for filing a renewal request and a recordal of applicant’s name change for a trademark registration, including your official fees, attorney fees, approximate disbursements, and taxes, if any. 

Please also kindly provide us with all the documents needed for filing such requests and advise us that if notarization/legalization will be required.

Answer: Thanks for your letter regarding the aforementioned subject matter.

As your request, we would like to advise you on the procedures and fees for changing address of owner and renewal of trademark registration certification in Vietnam as follows: 

1. Renewal and Amendment of Trademark Registration

– Renewal Procedure

As regulated, to renew your trademark registration, the application for renewal may be filed within 6 months before expiry date of Trademark registration. It will take NOIP 02 to 04 months to update the renewal.

– Requirement Documents

+ Official Registration Certificate (if applicant wants NOIP to record in their certificate. Otherwise, the recordal will be updated on database of NOIP)

+ Power of Attorney (as our attached form)

– Changing address procedure: 
As regulated, it takes around 04-05 months to change owner’s address in the Certification.

– Required documents:

+ Official Registration Certificate (if applicant wants NOIP to record in your certificate. Otherwise, the amendment shall be recorded on database of NOIP)

+ Certified copy of related document proving changing address of Applicant

– Our fee for these works done

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

We look forward to hearing from you soon.

Question: We are foreign company and registered our trademark in Vietnam, please provide us the legal procedure on amendment of Certificate of trademark Registration and providing the evidence proofing the use of your trademark in Vietnam?

Answen: Following the discussion between you and our lawyer regarding to the amendment of Certificate of trademark Registration and providing the evidence proofing the use of your trademark in Vietnam, we are pleasure to advise you as below:

A. Providing the evidence proofing the use of your trademark in Vietnam

1. The use of trademark according to Vietnamese Law on Intellectual Property (IP Law).

According to the regulation at Article No. 124.5 of IP Law the use of a trademark is the performance of the following acts “(i). Affixing the protected mark on goods, goods packages, means of business, means of service provision, transaction documents in business activities;

(ii). Circulating, offering, advertising for sale or stocking for sale goods bearing the protected mark; and (iii) Importing goods or services bearing the protected mark.

2. The accepted evidence

For the forgoing, you are required to provide the following documents/information:

+ The means of business having the trademark in Vietnam; or

+ The means of service provision having the trademark in Vietnam; or

+ The transaction documents in business activities;

+ Advertising for your services in Vietnam.

and the aforementioned documents should clearly prove your actual business activity in Vietnam.

3. The measure for providing the evidence

For the foregoing, you arerequired to operate your business in Vietnam as soon as possible.

Please be noted that in case the use of your trademark is commenced or resumed at least 3 months before the request for termination, your trademark will no be cancelled.

We will provide you our option for taking this action upon your instruction.

4. The alternative measure.

In case, you could not carry the aforementioned measure, you could file a new application for re-registering your trademark in Vietnam. Our fee for taking this action has been informed you in previous email.

Please be noted that, this alternation has a disadvantageous. In case there is the similar trademark application having the priority date before the filing date of your application, your application will be refused and such prior application may be protected in case they are successfully cancelling your trademark.

B. Recordal of change of name/address of TM certification in Vietnam

1.1 Scope of works:

Our scope of work for amendment registration certificate contains:

-Consulting every problems related to filing of amendment application

– Preparing Application, signing in this (with your authorization) and filling your application in NOIP.

– Reporting on filing of the application after filing (immediately)

– Receiving all Notices from NOIP and reporting to you

– Handling all deficiencies relating to the Application (if requested from NOIP)

– Consulting to overcome NOIP’s refusal (in case of NOIP refuses to protect)

– Following the Application and immediately updating status of the application for you, until the final conclusion of NOIP about protection of trademark.

2.2 Procedure and timeframe

– Procedure and timeframe As regulated, for your amendment Registration certificate, the process may be extend from 4 to 6 months. In case of smooth, NOIP will Notice on record of Amendment Registration and you could record directly on your registration or online database of NOIP.

– Requirement Documents

• Official Certification

• Document to approve changing name and address of Applicant (in regular, applicant can use notarized version of Business Certificate Registration)

If you have any inquiry, please do not hesitate to contact us. We look forward to hearing from you soon.

Thank for your the cooperation..

Question: Our company wishes to file a Recordal of Change of Applicant’s Name for their registered trademark in Vietnam. In view thereof, we would appreciate if you could let us have your all inclusive fees for the same. 

When reverting, please also let us know requirements for filing the Recordal of Change of Applicant’s Name.

Answen: Thanks for your letter regarding the change of applicant’s name.

As your request, we would like to advise you on the procedures and fees for the change in Vietnam as follows:

– Time Frame: 
As regulated, it takes around 04-05 months to change applicant’s name in the Certification.

– Required documents:

+ Official Registration Certificate (if applicant wants NOIP to record in your certificate. Otherwise, the amendment shall be recorded on database of NOIP)

+ Certified copy of related document proving the change: for example: a copy of business license certified by a notary public.

– Our fee for these works done

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

We look forward to hearing from you soon.

Thanks for your co-operation.

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