Is it permissible to use collective marks which must not be licensed to organizations or individuals in Vietnam?

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Question date: 27/01/2023

Is it permissible to use collective marks which must not be licensed to organizations or individuals in Vietnam?

We are using a collective mark. Another organization intend to buy our mark. Are we permissible to transfer our collective mark to that organization? In which cases shall validity of protection titles of collective marks in Vietnam be terminated?

Thank you!

    • Is it permissible to use collective marks which must not be licensed to organizations or individuals in Vietnam?

      Pursuant to Article 142 of the Law on Intellectual Property in 2005 stipulating restrictions on licensing of industrial property objects in Vietnam as follows:

      - The right to use geographical indications or trade names shall not be licensable.

      - The right to use collective marks must not be licensed to organizations or individuals other than members of the owners of such collective marks.

      - The licensee must not enter into a sub-licence contract with a third party, unless it is so permitted by the licensor.

      - Mark licensees shall be obliged to indicate on goods and goods packages that such goods have been manufactured under mark licence contracts.

      - Invention licensees under exclusive contracts shall be obliged to use such inventions in the same manner as the invention owners according to the provisions of clause 1 of article 136 of this Law.

      As regulations above, collective marks must not be licensed to organizations or individuals other than members of the owners of such collective marks. In your case, you are not allowed to transfer your collective mark to other organizations.

      In which cases shall validity of protection titles of collective marks in Vietnam be terminated?

      Pursuant to Clause 1 Article 95 of the Law on Intellectual Property in 2005, the validity of a protection title shall be terminated in the following cases:

      - The owner fails to pay the stipulated validity maintenance or extension fee;

      - The owner declares relinquishment of the industrial property rights;

      - The owner no longer exists, or the owner of a certificate of registered mark is no longer engaged in business activities and does not have a lawful heir;

      - The mark has not been used by its owner or the licensee of the owner without justifiable reason for five (5) consecutive years prior to a request for termination of validity, except where use is commenced or resumed at least three (3) months before the request for termination;

      - The owner of a certificate of registered collective mark fails to supervise or ineffectively supervises the implementation of the regulations on use of the collective mark;

      - The owner of a certificate of registered certification mark violates the regulations on use of the certification mark or fails to supervise or ineffectively supervises the implementation of such regulations;

      - The geographical conditions decisive to reputation, quality or special characteristics of products bearing a geographical indication have changed resulting in the loss of such reputation, quality or characteristics of products.

      As regulations above, if the owner of a certificate of registered collective mark fails to supervise or ineffectively supervises the implementation of the regulations on use of the collective mark, the validity of protection title of that collective mark shall be terminated.

      Best regards!

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    "This English translation is for reference purposes only and not a definitive translation of the original Vietnamese texts"

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