Trademark Licence Expiry in Vietnam: Renew, Renegotiate or Acquire. FLAT regularly handles this issue when foreign investors deal with trademark licence expiry: renew, renegotiate or acquire in Vietnam: one wrong step can trigger administrative fines, loss of asset rights or prolonged disputes. This article follows a lawyer’s review sequence: the legal basis in force as of October 2026, how it applies to a concrete file, the procedure to follow and the risks to settle before signing anything.
Core legal basis — trademark licence expiry: renew, renegotiate or acquire
Licence expiry is not mark expiry: the licence runs for its own agreed term, while the registration follows the 10-year validity and renewal cycle of Article 93 of the IP Law. As the contract nears its end, the licensee faces three fundamentally different strategies: renew on existing terms where the relationship and market are stable; renegotiate where bargaining power has shifted after years of the licensee building the market; or acquire outright ownership of the mark in Vietnam by assignment under Article 138 — converting a perpetual royalty cost into an owned asset.
Applying the rules to your situation
Timing matters more than the choice itself: a licensee negotiating in the final month has no leverage, because the licensor knows it cannot rebrand in time. The licensee’s real leverage is its data — revenue, market share, brand-building spend in Vietnam — plus a credible fallback: its own mark already filed for migration if talks fail. A licensor facing a licensee with a genuine Plan B negotiates very differently.
Procedure and documents to prepare
- Step 1: open the expiry review 12–18 months ahead: title status (validity, Article 93 renewal), business performance under the mark and sunk market-building costs.
- Step 2: price the three options: total royalty cost over the next 5–10 years on renewal; the clauses to change on renegotiation (scope, exclusivity, rate); and the acquisition price on independent valuation if assigning.
- Step 3: negotiate in the chosen priority order, while filing the licensee’s own replacement mark as a fallback (not after talks fail).
- Step 4: document the outcome: a renewal annex or new licence, or an assignment contract recorded with the Intellectual Property Office — all completed before the old expiry date.
Risks to anticipate
The first risk is a use-rights gap: the old contract ends, the new one is unsigned, but sales do not stop — in that window the licensee uses the mark without licence cover. The second is acquiring without validity diligence: paying for a mark under a non-use termination request or in dispute. The third is renewing as-is an old licence containing clauses in the group prohibited by Article 144 of the IP Law, carrying invalidity risk into the new cycle.
Answers to client questions
What must be done first when a trademark licence is about to expire?
First, prevent any use-rights gap: negotiate a temporary renewal annex or the new contract before the expiry date. At the same time verify the underlying title under Article 93 of the IP Law, because signing a new contract over a registration about to lapse unrenewed is renewing on a risky foundation.
Is renewal or renegotiation more advantageous?
Straight renewal suits where current terms remain within the market range and the relationship is stable. Renegotiation suits where the licensee has created most of the Vietnamese market value, or old terms are outdated (no e-commerce channel scope, off-market rates). The deciding factors are market data and the licensee’s fallback, not habit.
What should be checked when buying the mark outright at licence expiry?
An outright purchase is an assignment of industrial property rights under Article 138 of the IP Law: it needs validity and dispute diligence on the title, independent valuation, an assignment contract and recordal with the Intellectual Property Office for third-party effect under Article 148. After purchase, the former licensee becomes owner and bears renewal and maintenance itself.
How are the acquisition price or renewed royalty determined?
Renewed royalties are negotiated within the market royalty range for comparable licences. An acquisition price is set by income-approach valuation — the present value of royalties the ownership saves plus exclusive exploitation value — reflecting the title’s remaining protection life and validity risks.
Action conclusion
Put licence expiry review into the compliance calendar 18 months ahead and treat it as a negotiation project, not an administrative renewal. Build the replacement-mark fallback in parallel so every option is a real option.
