Analysis of Vietnam’s law regulations on amending, supplementing, withdrawing, and dividing trademark applications

From the time the applicant files a trademark registration application until the National Office of Intellectual Property (NOIP) intends to notify the grant of a Certificate of Registered Mark, the trademark owner has the right to: (i) amend and supplement the application; (ii) withdraw the application; (iii) split the application. In order to exercise the above rights during the trademark registration process, the trademark owner should pay attention to the following legal issues: 

Article 115 of the 2005 Intellectual Property Law, as amended and supplemented in 2009, 2019, and 2022 (hereinafter referred to as “Intellectual Property Law”) generally regulates the rights to amend, supplement, and divide industrial property registration applications. Trademarks are among the subject matters of industrial property rights, so the trademark registration application will be governed by the above-mentioned Article 115. 

As mentioned first above, the time frame for the trademark owner to exercise the rights to amend, supplement, withdraw, or divide the trademark registration application is “before the State authority in charge of industrial property rights sends a notice of refusal to grant the protection title or a decision on grant of the protection title.”

Specific regulations for: 

Amending, supplementing, and dividing applications: If the trademark owner wish to so exercise his/her right, he/she shall pay the fees for such request.

a. The amendment or supplement to the application must not expand the scope of the subject matter disclosed or stated in the application, or not change the nature of the subject matter to be registered, or alter the consistency of the application.

b. Amendments and supplements: Amendments and supplements to documents included in the application must ensure that they shall not expand the scope (volume) of protection disclosed in the trademark sample and list of goods or services for the trademark registration application as well as not change the nature of the subject matter stated in the application. 

c. Process:

• Case 1: In case the applicant, on his/her own, initiates the amendment or supplement to the application after it is duly accepted by the state authority in charge of industrial property rights, including change of the legal representative in Vietnam: 
• The written request for such amendment or supplement shall be made using Form No. 04 provided in Appendix II to this Decree. 
• Case 2: In cases where the amendment or supplement to the application is initiated before it is duly accepted or otherwise refused by the state authority in charge of industrial property rights or the amendment or supplement is based on a notice of the state authority in charge of industrial property rights concerning such application: 
• The request for such amendment or supplement shall be made in writing and explicitly indicate the specific details to be modified. 

Note: The applicant may request amendments or supplements to the same detail in relation to multiple applications for the same subject matter of industrial property rights in one declaration or written request for such amendment or supplement. 

d. Fees and Charges: including (i) Fee for examination of the request and (ii) Fee for publication of information. To be specific: 

• Fees for examination of the request for amendment or supplement for each specific modification in accordance with regulations and copies of fee payment receipts (in cases where the fees are paid via postal services or directly to the account of the state authority in charge of industrial property rights); 
• Fees for publication of information on amendment or supplement to the application in accordance with regulations if such amendment or supplement must be published in Case 1. In cases where the amendments or supplements must be done to remedy errors caused by the state authority in charge of industrial property rights, the applicant shall not pay the publication fees.

e. Documents to be enclosed with the written request for amendment and supplement:  

• 05 samples of the mark and the list of goods and services bearing such mark, if it is a mark registration application.8 
• In case of changing the name, address, country code of the applicant, the name, and nationality of the author, the applicant shall file a written confirmation (original or certified copy) or a legal document (certified copy) proving the changes (the decision to change the name or address; the enterprise registration certificate recognizing the change of the name or address, etc.). In case of changing the industrial property representative, the applicant shall submit an announcement on the change of the industrial property representative.9 

Dividing an application: 

a. The trademark owner should be aware of the filing date for divisional applications. In accordance with regulations, the divisional application is entitled to the date of filing of the parent application.10 For example, if an application for the mark “ACB, stylized image”, Category 30 and Category 35 is filed on October 29, 2023, and the trademark owner requests such application to be divided, the parent application for the mark “ACB, stylized image” will be classified to Category 30 while the divisional application will be registered for Category 35 with the same filing date of October 29, 2023.  

b. Divisible components: 

• A part of the list of goods and services in the mark registration application into new application(s), called divisional applications.

c. Processing of parent and divisional applications: 

• A divisional application must bear a new application number and is entitled to the date of filing or date(s) of priority (if any) of the parent application. 
• For each divisional application, the applicant shall pay filing fees and all fees and charges for procedures carried out independently from the parent application (other than the procedures that are already completed when filing the parent application, which are not necessary to be initiated again when submitting the divisional application) but shall be exempted from fees for examination of the priority claim (other than cases of dividing industrial design applications due to the inability to ensure uniformity). The divisional application shall be subject to formality examination and further processed according to the procedures not yet completed for its parent application. The divisional application shall be published as per regulations; 
• The application shall file a specification on the subject matters for which protection is requested and the specific modifications compared to the parent application when filing the divisional application; 
• The parent application (after being divided) shall be further processed under the procedures for application processing or the procedures for amendment to the application. 

Withdrawing applications:

a. The applicant shall have the right to make written declaration on the withdrawal of the industrial property registration application in his/her own name or through an industrial property representation service organization, provided that the power of attorney clearly states the authorization for application withdrawal.13 All mark registration applications which have been withdrawn shall be considered having never been filed, except where they serve as grounds for claims for priority right. 

b. Processing of the request for application withdrawal: Within 02 months from the date of receiving the request, the state authority in charge of industrial property rights shall 

• Case 1: Issue a notice of acceptance of the application withdrawal in cases where it complies with Article 116 of the Intellectual Property Law, terminate the processing of the application, and record the withdrawal into the application dossier. 

Note: An industrial property registration application that have been withdrawn cannot be restored but can be used as the grounds for claiming the right of priority in accordance with Clause 3, Article 116 of the Intellectual Property Law. 

• Case 2: Issue a notice of intended refusal of the withdrawal in cases where the application withdrawal does not comply with Article 116 of the Intellectual Property Law (the request for withdrawal of the application is not made by the applicant; or the industrial property representation service organization has no power of attorney or an invalid power of attorney) and set a 2-month time limit from the date of issuing the notice for the applicant to remedy his/her shortcomings. 
• Case 3: Issue a notice of refusal of the application withdrawal if the applicant fails to remedy his/her shortcomings within the time limit specified in Case 2 or fails to provide a qualified remedy. 

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