How Licensing of Trademark Works?

Licensing of industrial property subject in general or of trademark in specific is regulated in Intellectual Property law.  Accordingly, in trademark licensing, the owner (licensor) grants permission to another (licensee) to use that trademark on mutually agreed terms and conditions. The licensing of trademark must be established in written form to avoid dispute in trademark licensing.

 

Trademark licensing in Vietnam

Accordingly, licensing of trademark includes the following types: exclusive contract, non-exclusive contract; sub-license contract.

Firstly, exclusive contract means a contract under which, within the licensing scope and term, the licensee shall have the exclusive right to use the licensed trademark while the licensor may neither enter into any trademark license contract with any third party nor, without permission from the licensee, use such trademark.

Secondly, non-exclusive contract means a contract under which, within the licensing scope and term, the licensor shall still have the right to use the trademark and to enter into a non-exclusive trademark license contract with others.

Thirdly, trademark sub-license contract means a contract under which the licensor is a licensee of the right to use such trademark pursuant to another contract.

In any type of the contracts, it is required to have the following contents: full names and addresses of the licensor and of the licensee; grounds for licensing; contract type; licensing scope including limitations on use right and territorial limitations; contract term; licensing price; rights and obligations of the licensor and of the licensee.

Besides the above contents, the parties also need to take note on the validity of this contract. Different from assignment contract of trademark when it is required to register at National office of Intellectual Property of Vietnam to take effect, the licensing contract of trademark does not required this kind of registration for taking effect. Licensing contract shall automatically be terminated upon the termination of the licensor's trademark right.

If Client needs any more information or request for legal advice regarding licensing of trademark or dispute in trademark licensing contract, our Intellectual Property attorney in Vietnam at ANT Lawyers will be of help.

 

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What Are Obligations of Using Patent and Trademark?

When applicants of invention or mark are granted patent or trademark certificate, they are obliged to use these subjects. The reason for this provision which is, the owner may not use patents or trademarks in practical causing difficulties for the person who would like to use the patent and trademark in reality but cannot register as others has already registered.

 

Register utility solution in Vietnam

According to Article 136 Vietnam Law on intellectual property clearly regulated on obligations of owner in using patent and trademark.

Firstly, to patent, the owner is be obliged to manufacture protected products or apply protected processes to satisfy the requirements of national defence and security, disease prevention, and treatment and nutrition of the people or to meet other social urgent needs. When the needs stipulated in this clause arise but an invention owner fails to perform such obligation, the competent State body may license such invention to others without permission from the invention owner in accordance with the law.

Secondly, to trademark, trademark holder is obliged to use trademark continuously. Trademark used under a trademark use agreement by a transferee is also considered as an act of using the holder’s trademark. In case the trademark is not used continuously for five years or more, the Trademark Certificate of Registration shall be invalid.

Specifically, if the trademark holder or the person who is allowed to use the trademark do not use the trademark within continuous five years before the date of request to terminate the validity without reasonable reason, except the using starts or restarts at least 03 months up to date of having the termination of validity request.

If the client needs help with handling such complaint, our IP attorney in Vietnam at ANT Lawyers will be of help.

 

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How Can IPR Holder Protect Intellectual Property Rights in Vietnam?

An intellectual property right holder shall have the right to apply the following measures to protect the intellectual property rights in Vietnam of such holder:

 

To apply technological measures to prevent acts of infringement of its intellectual property rights;

To request any organization or individual who commits an act of infringement of the intellectual property rights of the holder to terminate such act, make a public apology or rectification, and pay damages;

To request the competent State body to deal with acts of infringement of its intellectual property rights in accordance with the provisions of this Law and other relevant laws;

To initiate a lawsuit at a court or a claim at an arbitration centre to protect the legitimate rights and interests of the holder.

Organizations and individuals who suffer loss and damage caused by acts of infringement of intellectual property rights or who discover acts of infringement of intellectual property rights which cause loss and damage to consumers or society shall have the right to request the competent State body to deal with such acts in accordance with the provisions of this Law and other relevant laws.

Organizations and individuals who suffer loss and damage or who are likely to suffer loss and damage caused by acts of unfair competition shall have the right to request the competent State body to apply the civil remedies stipulated of IP Law and the administrative remedies stipulated in the law on competition.

Our Intellectual Property Lawyers in Vietnam always follow development in IP Laws to provide client with update

 

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Application of Administrative Measures to Protect Intellectual Property Rights

Since joining WTO, Vietnam has been coping to comply with the international commitments in general and intellectual property area in particular. In order to ensure fair legal environment and the benefits of intellectual property right holders, the Vietnam laws provide a number of ways in which holders can apply the following methods to protect their intellectual property rights in Vietnam:

 

Negotiation: requesting organizations, individuals committing infringement acts of intellectual property rights to terminate the infringing acts, apologize, publicly rectify and compensate damages;

Using administrative remedies: requesting the competent agencies to handle infringement acts of intellectual property rights;

Filing claim at court or arbitration center: initiating a lawsuit at a competent court or an arbitrator to protect their legitimate rights and interests;

Negotiation is often used in the first step to request the violator to stop the infringement of intellectual property rights. However, this measure is not potentially effective because it dependents on goodwill and cooperation of the violator as well as the legal basis, evidences that you can provide to demonstrate and warn of violating acts.

Relating to the dispute settlements, due to high costs, complicated procedures and extended time, this measure is not commonly selected as the best treatment.

In Vietnam, intellectual property infringement is mainly dealt with through administrative measures. Depending on their functions and responsibility, competent state management agencies deal with infringements of intellectual property rights as per request of the IP holders Currently, through the following agencies:

Inspectorate of the Ministry of Science and Technology;

Economic Police of the Ministry of Public Security and;

Market management of the Ministry of Industry and Trade.

In case of dealing with infringements of intellectual property rights in Vietnam, the holders should carry out the following steps:

1.Submission of a written request to terminate an infringement of intellectual property rights:

This step is optional to save costs for the infringed party as well as deal with the infringement on the basis of goodwill and cooperation. The infringed party should send documents, including a persuasive Cease and Desist letter and evidences, to the violator for the purpose of requesting them to terminate the violation and commit not to repeat the infringement in the future. In fact, many intellectual property right holders have reached their goals at this step providing that they can collect enough proof.

2.Requesting the competent state agencies to handle acts of infringement of intellectual property rights:

In this step, the infringed party must prove both its ownership to the intellectual property and information, evidence of the infringement by the infringing party.

The application of administrative remedies is effective handled, so it should be preferable to filling a lawsuit. After requesting the administrative agency to penalize the infringing party, the right holder still remain their right to initiate a lawsuit in court to claim of damages. Actually, the combination of administrative measures and lawsuits at court would be more effective for intellectual property right holders.

ANT Lawyers - a Law firm in Vietnam with a team of experienced lawyers, IP consultants and IP agent in Vietnam in the field of Intellectual Property will help customers implement procedures for registering intellectual property rights in Vietnam in the most effective way

 

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