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.
