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MINISTRY OF EDUCATION AND TRAINING MINISTRY OF JUSTICE

HANOI LAW UNIVERSITY

NGUYỄN THANH TÙNG

TRANSFER THE RIGHT TO USE THE TRADEMARK

UNDER THE LAW OF VIETNAM

Major: Civil Law and Civil Procedure

Code: 9 38 01 03

LAW DOCTORAL THESIS SUMMARY

HANOI, 2023

This work was completed at:

HANOI LAW UNIVERSITY

Scientific instructors: 1 Ass.Prof Dr Nguyen Thị Que Anh

2 Dr Vuong Thanh Thuy

at: ………… date …… month …… year…………

The thesis can be found at:

1 National Library

2 Library of Hanoi Law University

HEADING

1 The necessity of studying the topic

In the context of increasing infringement of intellectual property rights, there has been an urgent requirement to both protect trademarks from being infringed and to expand the market to use products and services to increase sales collect and especially promote the brand widely to consumers Therefore, one solution used by trademark owners is to transfer the right to use the trademark to businesses they trust through a trademark licensing contract (also known as a trademark license agreement) trademark licensing agreement), but this activity still has many shortcomings and limitations The reason for the limitations and inadequacies in trademark licensing activities is that the theoretical issues on trademark licensing have not been developed, analyzed and clarified In addition, a number of legal provisions on the form and content of the contract for licensing the right to use trademarks also have many shortcomings and limitations The practice of applying the law on trademark licensing throughout the country has arisen a number of problems that need to be resolved In addition, the legal science of our country has many researches on intellectual property rights in general and industrial property rights in particular, but there is no research on it in a specific and comprehensive way, deeply on the transfer of the right to use the trademark On the basis of the above analysis and with the desire to learn and study the provisions of Vietnamese law in the field of trademark licensing, the author chooses to carry out the topic "Transfer the right

to use the trademarks under the law of Vietnamese.”

2 Research purpose and tasks

Through the building of theoretical models as well as comprehensive and systematic analysis and evaluation of the theoretical basis for trademark licensing and trademark licensing contracts, to assess the current state of both the law and the practice

of implementing Vietnamese law in comparison with the laws of some countries in the world on the transfer of the right to use the mark through the contract of licensing the right to use the mark, thereby The author proposes a solution to perfect the law and improve the efficiency of the implementation of the law on the transfer of trademark use rights through the contract of licensing the right to use the mark in Vietnam

On the basis of the research purpose, the thesis defines the basic research tasks as follows:

- Clarifying the concepts and characteristics of the mark, the right to use the mark, the industrial property rights to the mark and especially the transfer of the right to use the mark

- Clarifying the concepts, characteristics and roles of trademark licensing contracts

as well as classification of trademark licensing contracts

- Distinguish between a trademark licensing contract and a trademark assignment contract; distinguish the contract for licensing the right to use the mark from the contract for the assignment of a trade name; Distinguish between a trademark licensing contract and a franchise agreement

- Assess the current legal status and practice of Vietnam's law on licensing of trademark use rights by trademark licensing contracts, and point out the basic causes that give rise to a number of issues limitations and inadequacies in practical implementation

- Develop directions and propose specific, highly feasible solutions that contribute

to perfecting the law on trademark licensing and improving the effectiveness of the implementation of the law on trademark licensing contract of licensing the right to use the mark in Vietnam

3 Object and scope of research

3.1 Research object

The research object of the thesis is the theoretical issues of trademark licensing and trademark licensing contracts; legal status and practical implementation of the law on transfer of trademark use rights through trademark licensing contracts in Vietnam; regulations of a number of countries in the world on the transfer of the right to use trademarks

3.2 Research scope

- About the research content: The research topic on the transfer of the right to use the mark by the contract of licensing the right to use the trademark in the current legal system of Vietnamese intellectual property; regulations of some countries in the world on the transfer of the right to use trademarks

- About research space: The topic studies the practical implementation of the law

on transfer of trademark use rights by trademark licensing contracts within the territory of Vietnam

- About time: The thesis studies the practical implementation of the law on licensing of trademark use rights by trademark licensing contracts in Vietnam from 2006

to present

4 Research methodology

To carry out the thesis, the author uses the following main methods:

- Synthetic method: This method is used to search and gather all documents related to the research object to serve the research process of the thesis, especially in chapter 1 and chapter 2

- Analytical method: This method is used throughout all chapters of the thesis to help clarify theoretical issues as well as legal and practical issues in the research process

- Method of statistics, comparative jurisprudence, evaluation, typical legal methods: This method is mainly used for chapters 2 and 3 to help the thesis get a multi-dimensional, comprehensive, correct and profound view of the problem Research topics from which to draw conclusions and solutions with high accuracy and science, clearly showing the author's thinking, novelty, creativity and reasoning

in the country on the transfer of trademark use rights under Vietnamese law, therefore, the research results of the thesis contribute to supplement and perfecting theoretical and legal issues on trademark licensing as well as trademark licensing contracts, enriching in-depth legal scientific knowledge in the field of intellectual property

teaching and learning of legal science at law training and research institutions The thesis can be used as a reference for traders in the business process, law enforcement agencies

on intellectual property to solve problems arising in current practice

thesis has the following new contributions:

- Systematize, elaborate, analyze, supplement and develop the theoretical basis for trademark licensing in Vietnam, including: The concept of industrial property rights to

trademarks; the concept and characteristics of the right to use the mark; concepts and characteristics of trademark licensing; The concept, characteristics, and roles of the contract for licensing the right to use the mark as well as the classification of the contract for licensing the right to use the mark; Differentiate between a trademark licensing contract and a trademark assignment contract; Differentiate between a contract for licensing the right to use a trademark and a contract for transferring a trade name; Distinguish between a trademark licensing contract and a franchise agreement An overview of the law on licensing of trademark rights of the European Union and a number of countries in the world as well as the process of formation and development of the law on trademark licensing in Vietnam

- Analyze, evaluate and clarify the current status of Vietnamese law as well as the provisions of law in some countries around the world on the issue of trademark licensing and trademark licensing co-licensing of the right to use the mark, specifically: the scope

of the transfer of the right to use the mark; limitations on licensing of trademarks; the form of transfer of the right to use the mark; the object of the contract of licensing the right to use the mark; the form of a contract to transfer the right to use the mark; the subject in the contract of licensing the right to use the mark; the content of the contract on licensing the right to use the mark; register a contract to transfer the right to use the mark; validity of the contract of licensing the right to use the mark; limited to the contract of licensing the right to use the mark; on dealing with acts of infringing upon intellectual property rights to trademarks related to the contract of licensing the right to use the mark Analyze and evaluate the practical implementation of the law on licensing of trademark use rights in Vietnam such as determining the value of a trademark in a contract for licensing the right to use a mark; on the performance of the contract on licensing of the right to use the mark in the event that the licensor being an enterprise or cooperative goes bankrupt or is dissolved; on the quality control of products for the licensee of the right to use the trademark; on the issue of dispute settlement in the contractual relationship on licensing of trademark use rights;

- Proposing specific and highly feasible solutions to contribute to perfecting the law on licensing of trademarks by means of licensing contracts and improving the efficiency of law enforcement on licensing use the mark by the contract of licensing the right to use the mark in Vietnam

7 Structure of the thesis

In addition to the statement of commitment, the list of acronyms, the table of contents, the introduction, the overview of the research situation, the conclusion, the list

of references, the thesis consists of 03 chapters, specifically as follows:

Chapter 1 General overview of trademark licensing

Chapter 2 Legal status and practical implementation of the law on licensing of trademark use rights in Vietnam

Chapter 3 Directions and solutions to complete and improve the efficiency of the implementation of the law on licensing of trademark use rights by trademark licensing contracts in Vietnam

RESEARCH SITUATION OVERVIEW 1.1 Published scientific works related to the thesis topic

1.1.1 Theses, theses

1.1.2 Articles in scientific journals

1.1.3 Monographs, reference books

be the basis for the PhD student to analyze and interpret some trademark issues Through the analysis and evaluation of the collected scientific works compared with the objectives

of the thesis, the graduate student realizes that it is possible to inherit and continue to develop some of the problems in those research works As follows:

1.2.1 Theoretically

Although the aforementioned studies have initially approached some basic theoretical issues on trademark licensing, there are still some very important issues that need to be further improved in the future thesis:

First, about some concepts

i) Brand concept

ii) The concept of industrial property rights to trademarks

iii) The concept and characteristics of trademark licensing and the concept and characteristics of the trademark licensing contract

Second, on the role of the trademark licensing contract

Third, on distinguishing the contract of licensing the right to use the mark from the contract of transferring the mark, the contract of transferring the trade name and the contract of franchising

Fifth, about registering a contract to transfer the right to use the trademark

Sixth, about the limitation in the contract of licensing the right to use the trademark

Seventh, on handling acts of infringing intellectual property rights on trademarks related to the contract of licensing the right to use the mark

1.3 Research questions of the PhD student for the thesis

i) What is the theoretical model of trademark licensing?

ii) What are the basic elements of a trademark licensing contract?

iii) What is the current status of the law and the actual implementation of the law

on the transfer of the right to use trademarks by the licensing contract?

iv) What specific directions and solutions are needed to improve Vietnam's law on trademark licensing by means of a trademark license agreement?

v) What specific solutions are needed to improve the efficiency of Vietnam's law enforcement on licensing of trademark use rights by trademark licensing contracts?

1.4 Research theory

To complete the thesis, the author uses the following main research theories: i) Theory of intellectual property and industrial property rights to trademarks with

a focus on the transfer of the right to use the mark

ii) Theory of balancing the interests of subjects in trademark licensing

iii) Theory of contract with the focus on the contract of licensing the right to use the mark

iv) Specialized legal theory on commerce and civil refers to the transfer of the right to use the mark and the contract for the transfer of the right to use the mark

CONCLUSION OF RESEARCH SITUATION OVERVIEW

CHAPTER 1 OVERVIEW ON TRANSFER THE RIGHT

TO USE THE TRADEMARK

1.1 Theoretical issues of trademark licensing, trademark licensing contracts 1.1.1 The concept of trademark

Although there are differences in the concept of trademarks in the laws of some countries, they generally have some commonalities Specifically:

Firstly, the above regulations are regulated both in the open direction and in the list direction This has the effect of both clarifying the specific conditions for a sign to be considered a trademark, helping to define what the mark is, while not limiting other signs that can also become trademarks and express themselves flexibility of the law

Secondly, the above regulations all recognize that not only visible signs can become trademarks, but also other signs such as sounds, scents can be recognized through other senses such as hearing, taste, smell can still become trademarks

Third, the above regulations almost all set requirements for signs used as trademarks to have the function of distinguishing goods and services of different business entities

From the above arguments, we can put forward the concept of a mark as follows:

“A brand is a sign or combination of signs that can be seen or recognized through the human senses, mainly represented in the form of letters, words, drawings, images, including holograms or a combination thereof, or represented by colors, sounds, scents and capable of distinguish goods and services of one business entity from those of other business entities

1.1.2 Concept of industrial property rights to trademarks

In Vietnam, trademarks are also an object of industrial property rights Normally, once a trademark has been granted, the trademark owner will have industrial property rights to the mark A sign that wants to be protected as a mark must fully meet the standards of trademark protection of the law, fully and properly implement the order and procedures for trademark protection registration Once granted a trademark protection

title, the right holder can carry out the exercise of industrial property rights to the mark, including the right to transfer ownership/use right of the mark, and to perform other measures to protect industrial property rights for their trademarks

From the above arguments and section 1.1.2.1, we can understand that industrial property rights to trademarks are the rights of organizations and individuals in owning, using themselves (excluding certification marks), and allowing others to use them use or prevent others from using and disposing of the mark Thus, the owner of industrial property rights to a mark has the right to possess the mark, has the right to use the mark

by himself, to permit others to use the mark, and to prohibit others from using the mark and trademark determination

1.1.3 The concept and characteristics of the right to use trademarks

When formulating the concept of trademark use rights, we must base on the basis

of industrial property rights for trademarks combined with the general theory of property rights Accordingly, it can be understood that the right to use a mark “The right of organizations and individuals to exploit by themselves (except for certification marks) or allow others to exploit the use of marks to enjoy economic benefits” Organizations and individuals that have the right to use the mark mentioned in the concept include the trademark owner or the party to whom the trademark owner has transferred the right to use the mark under the trademark licensing contract

1.1.4 Concepts and characteristics of trademark licensing

From the above analysis, we can give the concept of trademark licensing as follows: “licensing of the right to use a mark means that the holder of the right to use the mark (the owner of the mark or the licensee of the right to use the mark) allows another organization or individual to use the mark of the owner or the trademark that they are assigned within a certain space and time limit agreed upon by the parties but must be consistent with the scope of use of the mark of the trademark owner or of the licensee of the right to use the mark trademark from the trademark owner”

1.1.5 Forms of trademark licensing

Currently, many countries in the world such as the United States, France, Germany, etc., and even in Vietnam, have prescribed the form of licensing the right to use a mark as a contract, and this contract is called a license license contract trademark use (or trademark licensing or trademark licensing agreement)

1.1.6 Concepts and characteristics of trademark licensing contracts

1.1.6.1 The concept of a contract to transfer the right to use a trademark

Trademark licensing contract is only a specific type of contract among many types

of contract, so the concept of trademark licensing contract must also have all the common signs of the contract Generally speaking) Therefore, we can understand that “a trademark licensing contract is an agreement between the licensor and the licensee to establish the rights and obligations of the trademark owners within trademark licensing activities”

1.1.6.2 Characteristics of the contract for licensing the right to use the trademark Firstly, a contract for licensing the right to use a mark is a type of bilateral contract

Second, about the object of the contract

Third, about the form of the contract

Fourth, the contract of licensing the right to use the mark is only valid within the territory in which the mark is protected

Fifth, the duration of the contract of licensing the right to use the trademark must also depend on the period of time the trademark is protected

Sixth, a contract for licensing the right to use a trademark is a place where the rights and obligations of the parties in the contract are clearly and clearly recorded, thus contributing to building a healthy competitive environment as well as creating a competitive environment contribute to the balance of interests among stakeholders

1.1.7 Classification of trademark licensing contracts

Based on the scope of rights: if based on this criterion we will have: i) Exclusive contract; ii) Non-exclusive contract

If based on the subject being the licensor in the contract, it will include: i) Basic contract; ii) Non-basic secondary contract

1.1.8 Role of trademark licensing contract

1.1.9 Distinguishing trademark licensing contracts from some other types of contracts