Trademark in Laos - Frequently Asked Questions

• Individuals, legal entities or organisations may register their applications for trademarks whether residing or established on Laotian territory or not.

  In particular, foreign individuals, legal entities or organisations wanting to apply for registrations in Laos should have their authorised representative in Laos. The registration rights shall be no less favourable than those of Laotian citizens.

  Ownership of marks

• The application shall be accepted if it meets all the following conditions:

  It could be seen in the form of words, a drawing, letter, numeral, picture, photograph, person’s name, signature, figure and group of colours or combinations of any of the aforementioned items; and distinct from the others.

  It may not be similar to another trademark already registered by another applicant.

  However, the Intellectual Property Law of Laos regulates cases that are not eligible for registration, such as where:

  • the trademark is not able to be distinguished from other products, goods or services of individual or organisation is submitted;
  • the content of trademark may serve to designate the kind, quality, quantity, intended purpose, value, place of origin of the goods, or the time of production, or of signs that have become customary in the current language or in the good faith and established practices of the trade in Laos;
  • the trademark is the cause of misleading the public or trade circles in which the trademark is used or is of a fraudulent nature;
  • the trademark is identical or similar to a well-known trademark for the same or related goods or services;
  • the trademark is opposed to national security, social order, culture and the good traditions of the nation;
  • the content of the trademark may disparage or falsely suggest a connection with persons living or dead or national symbols, or bring them into contempt or disrepute;
  • the trademark may lead to a likelihood of confusion as to the source of the goods or services or falsely suggest an association with the registered mark or well-known mark or trade name, as appropriate;
  • the trademark that consists of, or incorporates, a geographical indication that identifies a place other than the true origin of the goods; and
  • the trademark that consists of, or contains, without authorisation images of cultural symbols or historical monuments, or the name, image, or likeness of a national hero or a leader, or the trademark is in opposition with the nation’s traditions.
  Scope of trademark

• Trademark rights can be established and protected when registered. However, a well-known trademark, which is widely recognised by the relevant sector within Laotian territory, including where such knowledge is a result of promotion of the trademark, whether registered in Laos or not, shall be protected if it meets all the conditions for a well-known trademark in accordance with laws and regulations.

  Common law trademarks

• Duration

  In general, registration for a trademark may range from 10 to 12 months starting from the filing date of application to granting.

  Costs

  The basic cost for one trademark application registration in Laos is US$450 including both official fee and attorney fee.

  Documents

  The following documents should be prepared and provided for registration of trademark:

  • a request for registration of trademark (in compliance with an application form from the Registry Office);
  • power of attorney (if the application is filed through an agent or attorney);
  • specimens of trademark or service mark;
  • a description of goods. If the application relates to a collective mark or certification mark, the application shall indicate and include a description of the way the mark is to be used;
  • priority document (if priority right is claimed); and
  • receipt for payment of official fees.

  In the case of a foreign applicant, his or her application may be filed in the Laotian language or the English language. However, the English application or English document must be supplied with a translation into the Laotian language within 90 days of the filing date. This translation must be certified to be an accurate translation.

  Registration time frame and cost

• The Nice 10th Classification is applied in Laos in registrations for trademarks. There is no limitation on the number of goods items in one class.

  Each application can be applied for only one class of goods or services. A multi-class application cannot be accepted. Therefore, if an applicant wishes to apply to more than one class of goods or services for his or her mark, the application will be prepared in separate applications for each class.

  Figure marks are classified in accordance with the Vienna Classification system.

  Classification system

• Examination

  Within six months from the filing date of the application for trademark registration or the date the Registry Unit confirms the filing number and date, the Registry Unit will undertake a substantial examination, issue the certificate of registration, record the mark on the Trademark Registry and publish the registered mark in the Official Trademark Gazette.

  In this examination, the officials will check the registration information is as follows:

  • complete application form;
  • conditions for protection met;
  • the right of applicant; and
  • payment of the fee.

  Publication and grant

  After examination procedures, in the case the application is accepted, the Ministry of Science and Technology will grant the trademark registration certificate, enter the registration in the register and publish the registration in the official industrial property gazette.

  Response to rejection

  If the application for trademark registration is rejected, the Registry Unit will notify the applicant in writing and authorise the applicant to file arguments and evidence in relation to the rejection with the Registry Unit within 90 days from the date of the rejection notice.

  Examination procedure

• Use of trademark

  The applicant may register for a trademark without using or claiming before registration. Therefore, proof of use is not required.

  Priority claiming

  A declaration claiming priority based on one or more earlier national, regional, or international applications filed by the applicant or his or her predecessor in Laos or in another country or office that is party to an agreement to which Laos is a party provides for a right of priority.

  If a priority claim is established, the subsequent filing before the expiration of the priority periods referred shall not be invalidated. If the priority claim is filed, the applicant shall file a copy of the priority application. The priority period of trademarks is six months from the priority date.

  Use after granted

  Under the Intellectual Property Law of Laos, if the owner of the trademark does not use it continuously for five years in Laos or its use by the owner has not been in good faith, the third party shall have right to request the Ministry of Science and Technology to cancel the registration of the trademark on grounds of non-use. The owner can then file explanatory documents to justify the non-use of the trademark.

  Use of a trademark and registration

• There is no appeal process for trademark registration in Laos at this time.

  Appealing a denied application

• The third party may request an objection or a cancellation of trademark registration within a period of five years from the date of publication in the official gazette. The request shall contain a request and the receipt of the prescribed charges for cancellation of the trademark.

  A brand owner may also oppose a bad-faith application for its mark even it does not have protection.

  The typical range of costs associated with a third-party opposition or cancellation proceeding would be from US$2,000 to US$7,000.

  Third-party opposition

• Duration

  Under Laos’ Intellectual Property Law, the exclusive rights certification of trademark takes effect within 10 years and can be extended unlimited times, each time by 10 years. If the trademark has not been used for five continuous years its certification may be suspended or cancelled upon the request of others.

  Proof of use

  It is not mandatory to submit proof of the use of the trademark for its maintenance, the trademark registration may, however, be cancelled if it is not used for five consecutive years. Therefore, the owner should prepare documentation, such as the value of assignment or the value of invested capital contribution in respect of the trademark, to prove the use of the trademark.

  Duration and maintenance of registration

• The trademark protection shall be granted to owners of trademarks where their mark is registered in Laos or they have internationally registered marks as recognised by authorised bodies or have well-known marks. The owners of trademarks shall be granted such marks or have internationally registered marks as recognised by authorised bodies. The owner shall have the following rights:

  • to prevent third parties from using or infringing the course of trade identical or similar signs for goods or services that are identical or related to those in respect of which the trademark is registered;
  • to prevent the sale or advertising of goods bearing the mark or the use of the mark in connection with services and the importation or export of goods bearing such a mark;
  • to protect their rights under the law and statutory registrations against infringements by others;
  • to compensation from damages caused by others;
  • to enjoy the benefits derived from the exploitation of the industrial property;
  • to transfer all or part of the owner’s rights to another subject by sale, exchange, rent or assignment;
  • to permit another subject to exploit all or part of the owner’s rights to a trademark;
  • to inherit trademark and to pass ownership of trademark by inheritance; and
  • to take legal action to protect its trademark from violation by other parties.
  The benefits of registration

• A licence agreement is required and must be approved by the Ministry of Science and Technology before it takes effect.

  The recording of a licence provides a higher degree of evidentiary value and enables the person in whose favour the licence has been granted to initiate a case for infringement in his or her own capacity or along with the registered proprietor. Recordal of a trademark licence is advisable to facilitate any procedures relating to the use and licensing of trademarks, such as proof of use, payment of a licensing fee, action against infringement acts, etc. A non-recordal trademark licence is valid internally between the parties but not officially recognised by third parties, including any local authorities. This leads to a reluctance among competent authorities when handling disputes or taking any legal action relating to the trademark concerned.

  Licences

• The assignor (a beneficial owner of trademark) with full protected rights in relation to the object specified in the contract can be assigned to an assignee (other organisations or individuals). The objects of trademark assignment do not include goodwill.

  Assignment

• If the owner of a trademark wishes to assign the rights to use of his or her trademark to another individual or organisation, he or she must supply the following documents:

  • a request;
  • a deed of assignment duly signed by the assignor and the assignee in conformity with the law and regulations with relevant documents;
  • an original notarised power of attorney (if the application for trademark registration is applied through an authorised attorney or agency);
  • photocopy of certificate of trademark registration; and
  • fee receipts.
  Assignment documentation

• The assignment must be submitted to the Ministry of Science and Technology for being recorded. After that, it will start to take effect and be protected under the Intellectual Property Law of Laos.

  Validity of assignment

• Security interests are not compulsory for trademarks. Thus, the registration application or assignment of a trademark will be accepted without one according to the law.

  Security interests

• In general, symbols or words usually used in connection with trademarks and brand names are ®, ™. The ® symbol means ‘Registered’ or ‘Registered Trademark’, therefore, it can only be used with registered trademarks. The ™ symbol is used with unregistered trademarks, which are words, slogans or designs that are used on goods or actual products.

  There is no provision and regulation under the Intellectual Property Law of Laos, thus, the markings are not compulsory. However, they should be used to indicate trademark use or registration.

  Markings

• Trademarks are protected under the Law on Intellectual Property and related statutory legislation. Although Laos does not have a specialised court or other tribunal for intellectual property, the parties may file an action to the People’s Court to decide on the trademark dispute in accordance with relevant laws and regulations.

  The trademark rights of owners are considered as owners’ property; thus, if other subjects have the infringing acts, they will be handled for criminal liability under the Chapter 5 of Laos’ Penal Code.

  Trademark enforcement proceedings

• Under the Intellectual Property Law of Laos, the parties have the right to choose any form of dispute resolution available if they suffer damages caused by acts of infringement. Depending on the nature of incident, the request of parties, specialised legislations or the other issues, the limited time for resolution shall be difference. There is no specific provision for criminal enforcement, but procedures are followed in accordance with the Penal Code and the Criminal Procedure Law of Laos.

  Procedural format and timing

• The plaintiffs, defendants or involved parties in a civil case in relation to violated trademark rights have the rights and obligations to introduce evidences to prove, especially plaintiffs and defendants.

  The plaintiff must prove that he or she is the holder of this trademark by one of the following evidence methods: copies of the copyright registration certification; other documents related to the certificate of registration; documents proving the infringement of trademark rights; etc.

  The defendant has to prove that he or she does not have the infringing acts or his or her acts could not be considered as dilution in writing.

  Before the court accepts a claim for consideration, the court must check whether the plaintiff’s evidence is sufficient. If there is no evidence, the court must request the plaintiff to collect evidence. The court shall not consider the case if there is no evidence. If the evidence presented by the plaintiff or the defendant is insufficient, the court shall request that the litigants collect additional evidence or the court may collect evidence on its own initiative or upon the request of the litigants.

  Burden of proof

• The trademark owner, federations or associations representing interested industrialists, producers or merchants, or any other person who suffers damages from any trademark violation may have the right to seek a remedy.

  Standing

• Activities taking place outside the territory of Laos may be supporting a charge of infringement or dilution by border enforcement mechanisms. This measure is just applied on the basic of an official request by the concerned party. The requesting party is obliged to prove the lawful trademark rights and evidence of infringement.

  Foreign activities

• Parties in the civil and administrative proceedings can take any measures or utilise any discovery devices that are not prohibited by law to gather evidence from any sources including adverse party, third parties or other parties outside the country.

  Acceptable evidence includes physical evidence, documentary evidence, witness evidence. The physical evidence is tangible things such as: vehicles, fences, agricultural produce, etc. In particular in trademark cases, items used as proof may be documents, materials or important information which is valuable evidence in the proceedings, such as testimonies, reference materials, photographs, records of telephone conversations, facsimiles or various scientific tools.

  However, in some cases the parties can collect evidence by themselves if they have the notice of consent of the court or other competent bodies to be able to gather evidence.

  In criminal cases, evidence may be collected by the police or public prosecutors, not the defendant or the plaintiff.

  Discovery

• Civil proceedings begin with the filing of the trademark owner’s complaint in writing with civil court at the provincial level in the first instance. For trademark infringement, the period for consideration of a case is within 15 days. After this stage, the time limit to settle the case is not specified in the rules, therefore, the time frame for resolution depends on the nature of incident, the request of litigants or other factors.

  Timing

• The total litigation costs for all settlements of infringement or dilution action depend upon many different factors, such as the nature and complexity of cased, damages or the value of the trademarks.

  Under the Law on Court Fees of Laos, the court fees in civil procedure and criminal procedure are the same; they may range from 100,000 kip to 130,000 kip for a trial for trademark infringement and appealing at the High Court.

  Litigation costs

• Litigants have right to appeal within seven days in criminal cases and 20 days in civil cases from the date they were informed.

  At the first instance, the defendant, or his lawyer or protector, has the right to request an appeal against an instruction, order, or decision of the court. The civil plaintiff and civilly liable party, or their lawyers or protectors, have the right to request an appeal against an instruction, order, or decision of the court only in respect of civil matters.

  A request for appeal against any instruction, order or decision of the court shall be presented to a court only.

  In the event that the court of first instance does not accept or delays the acceptance of an appeal or objection, the litigants have the right to submit the appeal or objection request directly to the court of appeal.

  Appeals

• The defendant has the right to submit a defence to a court responding to the plaintiff’s claim. If the defendant perceives that the plaintiff’s claim is groundless, that the plaintiff’s claim for damages, compensation or return of assets are unrealistic or that the claim incomplete sufficient facts so as to render a court incapable of making a decision, the defendant has the right to make a reasonable defence by bringing forth witnesses and presenting evidence.

  Defences

• The plaintiff may request the court to order the infringer to pay adequate damages in compensation or order the infringer to pay the right holder expenses (may include attorney’s fees). After accepting and considering the request of plaintiff, the court may set damage awards in an amount sufficient to compensate the party making the claim for losses and to deprive the infringer or other violator of any profit from its unlawful act. The court may also order recovery of profits or payment of damages even where the infringer did not knowingly, or with reasonable grounds to know, engage in infringing activity.

  Remedies

• The forms of ADR for resolving trademark dispute are reconciliation, mediation, administrative remedies, economic dispute resolution committee, people’s court or international dispute settlement. Depending on each case, the owner can choose the most suitable measure to resolve the matter.

  With simple issues, the parties are free to negotiate a deal via the mediation or reconciliation method.

  ADR
• Famous foreign trademarks

Nguyen Hoa Binh | Partner

M: +84 9633 7 4499 | E: binh@daitin.com.vn

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DAITIN & ASSOCIATES CO., LTD.

(IP Agent in Vietnam, Laos, Cambodia and Myanmar)

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