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​ 

September 24, 2025
Online shopping in Thailand is more accessible than ever, with global platforms, local social media shops, and entertainment-driven social commerce enabling instant purchases. However, this convenience comes with rising concerns over digital intellectual property (IP) infringement, including counterfeit goods, pirated content, and unauthorized brand usage. At first glance, online platforms appear to offer quick solutions. Most major e-commerce sites, social media channels, and social commerce platforms provide “notice and takedown” systems, where IP owners can file complaints and request the removal of listings that infringe IP rights, such as trademarks and copyrights. These tools are certainly useful, as seeing a fake product vanish from a platform feels like progress. But the reality is less reassuring. The counterfeit goods themselves remain in warehouses, markets, or shops, ready to be resold. Sellers whose accounts are taken down often return within days under new names or accounts. In other words, a takedown is like cutting weeds without pulling out the roots: they always grow back. While notice and takedown tools are widely available and can be managed internally by most IP owners, their impact is often short-lived. IP owners seeking more effective, lasting protection need to take a more strategic and multilayered approach. The same applies to online piracy. Unauthorized streaming websites that offer free access to movies, TV shows, or sports broadcasts have become widespread in Thailand. To combat this, rightsholders can request website blocking under the Computer Crime Act, through the Ministry of Digital Economy and Society and the courts. Once requests are approved, internet service providers are ordered to block access to infringing sites. Blocking orders can be effective in disrupting large-scale piracy operations, but they also face limitations—pirate sites frequently reappear under new domains. Strategic Protection Whether the infringing material is physical counterfeit goods or intangible streaming content,
Read More
September 4, 2025
On June 6, 2025, the Superior People’s Court in Hanoi overturned a non-use cancellation decision by the Intellectual Property Office of Vietnam, a rare and impactful occurrence. In a ruling that may help clarify the enforcement of Vietnam’s IP Law, the court held that valid trademark use can be established through commercial arrangements where the brand owner maintains actual control over the use of the mark, and is not confined to relationships governed by a so-called “formal license agreement. Background: Cross-Border Use, Local Challenge A Singapore company owns a well-known brand of consumer products that has gained recognition across Southeast Asia. In recent years, the brand has been targeted by several unauthorized trademark filings in Vietnam. In one such instance, a local Vietnamese trading company—previously linked to the production and export of counterfeit goods to neighboring countries—filed a non-use cancellation against the Singapore company’s mark and sought to register it under its own name. If the cancellation had been upheld, it would have enabled a complete hijacking of the brand. The IP holder operates in Vietnam through a structured cross-border supply chain. Under an agreement between two related foreign entities, one of which managed regional operations, production orders were placed through a designated Vietnamese company. While the Vietnamese manufacturer was not a party to the agreement, its role in using the mark was recognized and governed by internal and commercial documentation. The Vietnamese manufacturer lawfully obtained the necessary permits, regulatory approvals, and customs clearances for producing the goods in Vietnam. These activities were supported by banking records and internal communications, evidencing active, continuous use of the mark in Vietnam. However, the IP Office concluded that this use did not meet the statutory criteria because the Vietnamese manufacturer did not have a direct license agreement with the brand owner, as
Read More
August 25, 2025
Indonesia’s current regulations on franchises, as stipulated under Government Regulation No. 35/2024 on Franchising and its implementing regulation, Ministry of Trade (MOT) Regulation No. 71/2019 regarding Implementation of Franchising, highlight fundamental changes in franchise registration. These changes have introduced additional complexities and challenges in the franchise registration procedure, making it more difficult for franchise owners to navigate the process. New procedure Franchise applications are still submitted through the Online Single Submission (OSS) portal of the Capital Investment Coordinating Board (BKPM). However, the new procedure requires each applicant, including foreign franchisors, to have an OSS account and a business registration number (NIB) issued by BKPM. An application for franchise registration must be submitted under the applicant’s own account—submissions can no longer be made through the account of a consultant. Once a franchise application is submitted, the authority will distribute the submission to the MOT—the authorized ministry for franchise registration. Any notification or decision upon the registration made by the MOT will be available in the OSS system. Applicants should regularly monitor the status of the franchise application because no notifications will be sent to applicants to alert them of any deficiency. Here is the summary of the new procedure for franchisors: Notable Requirements The disclosure document, or prospectus, is the key focus for the MOT in examining a franchise registration for a franchisor. This document is subject to thorough scrutiny by the MOT to ensure that all mandatory information meets the requirements set in the franchise regulations. The current regulations specifically require that the mandatory clause “business system” in the prospectus cover operational standards and procedures, which should include human resource management, administration, operational management, standard operating methods, business location selection, business premises design, employee requirements, and marketing strategies. Other clauses that are equally important to pay attention to are:
Read More
August 21, 2025
Although the “passing off” principle has sometimes faced criticism for potentially broadening trademark protection—particularly in cases involving unregistered or unconventional marks like shapes, scents, or sounds—it serves an essential purpose. It safeguards the rights of business owners and shields consumers from deception, ensuring fair competition and reflecting the realities of modern commerce. What is passing off, and why is registrability not required? The passing-off principle is a legal concept rooted in English law, aimed at preventing a person from falsely representing or using a mark similar to another’s in a way that causes consumers to mistakenly believe the goods or services come from the same source. Under Thai law, the passing-off principle is provided under Section 46 of the Thai Trademark Act, which states: No person shall be entitled to bring legal proceedings to prevent or to recover damages for the infringement of an unregistered trademark. The provisions of this Section shall not affect the right of the owner of an unregistered trademark to bring legal proceedings against any person for passing off goods as those of the owner of the trademark. The passing-off principle can be interpreted as a practical legal concept. It does not require proof that the mark is registrable or meets the registrability criteria under trademark law. It is sufficient to show that the mark has established goodwill and that the other party’s use of a similar mark is likely to confuse consumers, making it a straightforward and effective tool for protecting brand assets. Requiring a claimant to prove that an unregistered mark could have been registered would undermine the very function of passing off. The doctrine was conceived precisely to fill the gaps left by the registration system. Imposing registrability criteria would nullify its function and leave many commercially valuable identifiers unprotected. If the
Read More