You are using an outdated browser and your browsing experience will not be optimal. Please update to the latest version of Microsoft Edge, Google Chrome or Mozilla Firefox. Install Microsoft Edge

October 20, 2024

Vietnam: Challenges in Recordal of Trademark Assignments

Subscribe to Updates
Managing Intellectual Property

The annual statistics issued by the Intellectual Property Office of Vietnam (“IP Office”) in recent years show an increase in the number of IP transactions and applications to establish IP rights, including requests for the recordal of assignment of IP rights. Nevertheless, the numbers of trademark assignment recordals approved by the IP Office has not followed this trend, falling from 1,281 requests approved in 2022 to 1,120 requests approved in 2023. This decrease may be due to the IP Office’s overly strict viewpoint in approving trademark assignments, including its rejection of assignment recordal on the ground of conflict with the assignor’s trade name.

IP Office’s practice on assignment recordal

Vietnam’s IP Law restricts the assignment of trademarks in several cases, as set out in Article 139.4 that “the assignment of the rights to marks must not cause confusion as to properties or origins of goods or services bearing such marks.” Thus, when an assigned mark is identical to the dominant element of the assignor’s company name, the IP Office will view that the assignee’s use of the mark will result in confusion with the assignor’s trade name, and then instantly reject the assignment request. In this case, the IP Office will only accept the assignment if the IP holder can submit documents issued by relevant authorities proving at least one of the following conditions:

  • The assignor has assigned all business premises and operations under its name to the assignee;
  • The assignor has removed business lines relating to the goods/services bearing the trademarks and such removal is recorded in the Enterprise Registration Certificate;
  • The assignor has been dissolved or does not exist after signing the agreement;
  • The assignor has changed its name after signing the agreement so that it does not contain any element identical or similar to the assigned trademarks; or
  • The assignor and the assignee are affiliated companies.

Without these documents, the assignment approval can be difficult to obtain. In many cases, the refusal of assignment recordal leads to very lengthy appeal proceedings at the IP Office’s Appeal Division if the parties wish to pursue the case.

Differing opinions on the IP Office’s practice

The provision on potential rejection of assignment due to conflict with the assignor’s trade name has been in place for years, and the IP Office has also refused assignment recordal if the assigned mark is identical or similar to the main element of the assignor’s name. However, in the past, if a rejection of trademark assignment recordal was issued on this ground, a declaration executed by the assignor attesting to the assignor’s non-use of the company name in Vietnam, attesting to the affiliate relationship between the assignor and assignee, or attesting to the assignor’s initiation of dissolution procedures was sufficient to overcome the rejection. Documents issued by the authorities were not required.

Nevertheless, the IP Office’s practice has changed in the past three years in that it now requires these documents, creating challenges for IP holders to overcome the assignment rejection on this ground. This change has led to many debates among IP practitioners, and even within the IP Office.

A common argument is that the rejection itself is not well-grounded. Under Vietnamese law, a company’s name does not become a trade name by default. According to Article 14.2 of Circular 11/2015/TT-BKHCN, a company name will only be considered a trade name if it is used in actual business activities and meets several conditions prescribed in Articles 76 and 78 of the IP Law (e.g., it is capable of distinguishing the business entity bearing it from other business entities operating in the same business field and locality). As such, the IP Office’s rejection of assignment recordal on grounds of conflicting with the assignor’s trade name, without evidence/information on the actual use of the assignor’s company name in Vietnam, appears to be unconvincing. Unfortunately, Circular 11 is no longer in effect, and a new circular to amend and supplement it is still pending.

Second, while the IP Law prevents a pending mark from being protected on the ground of likelihood of confusion with another party’s trade name, the author is not aware of any case where the IP Office ex officio issued a refusal on this ground, unless the pending mark was opposed by the trade name owners.

Third, the options to overcome the assignment rejection suggested by the IP Office, notably the requirement to submit documents issued by the authorities, seem unrealistic. For example, it is common for assignors filing for recordal of trademark assignment in Vietnam to be multinational companies with different business strategies for their marks in each market in which they operate. In this case, it is unreasonable to request them to change the company name, remove the eliminated business lines related to goods and services bearing the assigned mark, or assign to the assignee the entire business establishment and business activities, just for the purpose of recording the assignment of a single mark in Vietnam.

Even when the assignor and assignee are affiliated companies, it can be difficult to submit legal documents proving their relationship. In some cases, the assignor has carried out dissolution procedures after signing an IP assignment agreement, but can only be dissolved after fulfilling all its property obligations, including assignments of IP rights to the recipients. As this procedure takes time, the IP Office’s requirements for submitting legal documents proving the completion of dissolution seems unfeasible.

Recommendations

The amended IP Law issued in 2022 and taking effect on January 1, 2023, as well as its guiding Circular 23/2023/TT-BKHCN issued and taking immediate effect on November 30, 2023, have shed more light on the IP procedures. However, there is no clear provision or guidance on recordal of assigned marks that are identical to the assignor’s trade name in these legal documents.

At present, a draft version of the amended Circular 23 is open for public comments, and IP practitioners have recommended that the IP Office ease its requirements in cases where the assigned trademark is identical or similar to the assignor’s trade name. Specifically, the assignor’s declaration of its non-use of the company name, declaration attesting to the affiliate relationship between the assignor and the assignee, or evidence showing the assignor’s initiation of dissolution procedures should be viewed as sufficient to overcome the assignment rejection on this ground, as was accepted by the IP Office in the past.

In the future, a related rejection of assignment should only be issued if there are grounds to believe that the assignor’s company name is actually used in Vietnam and thus could be protected as a trade name.

This article first appeared in Managing Intellectual Property.

Related Professionals

Practices

Intellectual Property

Location

RELATED INSIGHTS​ 

January 30, 2026
Vietnam’s Intellectual Property (IP) Law, despite being amended in 2022, underwent another significant revision at the end of 2025. The latest amendment aimed to address five major policy objectives set by the Vietnamese government, including promoting innovation, digital transformation, and international integration. Among the most notable changes in the 2025 IP Law, which takes effect on 1 April 2026, is the expansion of industrial design protection under Article 4.13. The revised definition now includes partial designs and intangible designs, marking a transformative shift in Vietnam’s industrial design regime. This change has particularly significant implications on designs classified under Class 32 of the Locarno Classification—which covers graphic designs, logos, ornamentation, surface patterns, arrangements, and other intangible products. These designs, previously excluded from protection in Vietnam, are now recognized under the new legal framework. Background: Status of Class 32 Designs Before 2026 Th Intellectual Property Office of Vietnam currently applies the 13th edition of the Locarno Classification for industrial design filings. However, not all classes in this system have historically been eligible for protection. Under the 2022 IP Law, Class 32 designs were explicitly excluded based on the following legal grounds: Definition under Article 4.13 (2022 IP Law): “An industrial design is the external appearance of a product or a component for assembly into a complex product, expressed in shapes, lines, colors, or a combination thereof, and visible during the exploitation of the product’s utility or the complex product.” Product requirements under Article 21.2 of Circular 23/2023/TT-BKHCN: A product is defined as an object, a tool, a device, or means, manufactured by industrial or handicraft methods, with clear structure and function. A component for assembly into a complex product must be capable of independent circulation and detachable from the complex product. Based on these definitions, Class 32 designs, such as graphical
Read More
December 30, 2025
The Intellectual Property Office of Vietnam (IP Office), with support from the Japan International Cooperation Agency (JICA), is drafting additional annexes to its Guidelines for Patent Examination, focusing on the examination of patent applications in the pharmaceutical and biotechnology sectors. The new annexes are expected to be officially issued in early 2026 as Annexes III and IV, following the successful issuance in 2023 of Annexes I and II addressing computer program-related inventions. The IP Office recently organized a seminar to gather feedback on the draft annexes from intellectual property representatives, academic institutions, research institutes, and other interested parties, emphasizing its intention to receive further constructive opinions to refine the guidelines for pharmaceuticals and biotechnology. Why These Guidelines Matter Patent examination in Vietnam has traditionally relied on the Guidelines for Patent Examination issued under Decision No. 487/QD-SHTT (2010), recently supplemented by Annexes I and II. While these documents provide a solid foundation, they do not fully address practical challenges in examining pharmaceutical and biotech inventions, particularly issues related to clarity, sufficiency of disclosure, enablement, features of function and utility, combination therapies, and inventions involving artificial intelligence (AI) applications in these fields. Annexes III and IV aim to close these gaps by introducing structured principles and illustrative examples. Guidance on Patent Specification Requirements Annex III provides detailed guidance on the requirements for patent specifications in pharmaceuticals and biotechnology, covering two main parts: Part A addresses sufficiency of disclosure, clarity of specifications, and consistency between claims and descriptions. Part B covers inventions related to Markush-type compounds, claims containing exclusion statements (disclaimers), and additional experimental data submitted during examination. The Guidelines outline specific disclosure requirements for subject matters such as compounds, formulations, pharmaceutical compositions, genes, polypeptides, proteins, vectors, transgenic organisms, modified organisms, and hybrid cells. Annex III emphasizes that disclaimers are not accepted
Read More
December 17, 2025
Vietnam’s National Assembly approved wide-ranging amendments to the Intellectual Property (IP) Law on December 10, 2025, marking one of the most significant overhauls of the country’s IP regime in recent years. The changes, which supplement and refine existing provisions, are designed to align Vietnam’s framework more closely with international standards while addressing practical challenges faced by rights holders and practitioners. The amendments will come into force on April 1, 2026. The most notable changes are detailed below. Recognition of partial and nonphysical industrial designs: Industrial design protection has been broadened to cover partial designs and nonphysical forms (class 32), explicitly extending rights to parts of products that are not independently circulated as well as digital and intangible product appearances. The law clarifies that the external appearances of nonphysical products are protected industrial designs, and circulation of digital copies of any part of that appearance will be treated as an act of using the industrial design. The provision on the industrial applicability of industrial designs has also been amended accordingly to include the uniform reproduction of nonphysical products in cyberspace. Resolving conflicts between overlapping rights: The IP Law provides a safeguard against conflicts when a single subject matter is protected by multiple IP rights. Where overlapping rights exist, the later-arising right will be terminated if its exercise interferes with the normal exploitation of an earlier right. The decision to terminate such a later right rests with the court. Use of published data for AI training: Organizations and individuals may use lawfully published and publicly accessible documents and data for scientific research, testing, and AI system training. Such use must not unreasonably prejudice the rights or legitimate interests of authors or IP rights holders. Where the documents and data fall under copyright or related rights protection, their use must also comply
Read More
December 5, 2025
One morning, a California-based company mapping its Southeast Asia rollout opened an unexpected cease-and-desist letter from a Vietnamese IP firm. To the company’s surprise, the letter asserted that a local client already owned the company’s brand in Vietnam and threatened legal action. This is not an isolated incident. In another recent matter in the sports industry, a squatter demanded at least USD 48,000 from our client to “resolve” a similar conflict. For brands entering Vietnam or expanding distribution there, these tactics can create acute risk at precisely the point at which market momentum is building. Vietnam’s rapid economic growth and deepening integration into global trade have made it an increasingly attractive destination for multinational brands. Those same dynamics have intensified a longstanding issue: trademark squatting. Vietnam has modernized its IP framework over the past decade, but its strict first-to-file trademark system continues to incentivize opportunistic filings by parties with no legitimate interest in a mark. As more foreign brands build their reputation abroad before turning to Vietnam, squatters remain alert to timing gaps and enforcement frictions. The First-to-File System: Advantages and Vulnerabilities Vietnam adheres closely to the first-to-file principle under its Law on Intellectual Property. In practice, exclusive trademark rights belong to whoever submits the earliest valid application to the Vietnam Intellectual Property Office, regardless of prior use in Vietnam. This approach offers administrative clarity and reduces evidentiary burdens compared to use-based jurisdictions. Yet it also creates fertile conditions for squatting. Bad-faith actors regularly monitor foreign markets, identify brands gaining traction, and move quickly to register those marks domestically, often long before the genuine owner enters the market or prioritizes local filings. By the time the true brand seeks protection, the squatter’s application (or registration) stands as a legal obstacle, pushing businesses toward costly oppositions, cancellations, or uncomfortable negotiations
Read More