Trademark Registration In Laos – A Comprehensive Guide - Trademark

As an emerging market in Southeast Asia, Laos is attracting significant foreign investment. However, entering this market requires a thorough understanding of the country's legal systems, particularly in trademark registration. The process of obtaining trademark registration in Laos is complex and differs from other countries in the region. How does the trademark system in Laos operate, and what are the crucial factors businesses and individuals should consider? In this article, we explore the ins and outs of the entire trademark registration process in Laos, from the initial search and examination to potential opposition, amendment, cancellation, and beyond. Whether you are an established business looking to expand or a newcomer to the Laos market, this article provides valuable insights into navigating the trademark registration process in this dynamic market.

1. Trademark search in Laos:

Before filing a trademark application in Laos, it is advisable to conduct a preliminary search to determine the registrability of a proposed mark.

The Department of Intellectual Property of Laos (DIP) does not have an online trademark database that is publicly accessible for conducting trademark searches. However, the trademark database of Laos and many other countries have been included in the WIPO's platform (WIPO Monitor). You can conduct an availablity trademark search at the following websites:

How to conduct an official trademark search in Laos?

You may request the Department of Intellectual Property of Laos for conducting an official trademark search. DIP is responsible for maintaining the trademark register in Laos.

Involved costs: It may cost over USD 100.

Timeline: An official trademark seach may be available within 15-20 working days and

When DIP receives a trademark search request, an examiner will be appointed/assigned to conduct an official trademark search to determine the availability of the proposed trademark. The following is a general overview of the steps an examiner may take to conduct a trademark search:

Review of trademark database: A responsible examiner will be appointed by DIP to conduct a search of DIP's trademark database to determine if the proposed trademark is identical or confusingly similar to any existing trademarks that have been registered or are pending registration. The trademark database includes information on trademarks that have been filed, registered, or abandoned, and the examiner will review this database to see if the proposed trademark conflicts with any existing marks.

Comparison of the proposed mark with existing marks: DIP's examiner will compare the proposed trademark with the existing trademarks found in the database. If the examiner determines that the proposed trademark is confusingly similar to an existing trademark, DIP may take this mark as a citation to give a conclusion that the proposed mark is not available for registration.

Consideration of other relevant factors: Finally, the examiner may consider any other relevant factors that could impact the registrability of the proposed trademark, such as whether it is a generic term, whether it is descriptive or suggestive, or whether it is a well-known trademark in a different jurisdiction, etc.

2. Type of marks in Laos:

Marks are categorized into 04 (four) types for examination and registration purpose.

Type 1: "Trademark": A trademark is defined as a symbol or a combination of symbols used to
distinguish the goods of individuals, legal entities, or organizations from the symbols of others. Symbols may be words, including invented words, signatures, names, figures, shape elements, outlines, photographs, three-dimensional pictures, animated images or packaging of goods, or a combination of colors or symbols;

Type 2: "Service Mark": A Service mark is a symbol or a combination of symbols used to distinguish the services of individuals, legal entities, or organizations from the symbols of others, which are the same as those specified in the type 1 above.

Type 3: "Certification Mark": A Certification Mark is a mark established by a legal entity or organization that can be used to guarantee a standard or characteristic to certify said goods or service. The mark can be used by a third party in order to indicate the origin, raw materials, method of production of the product, method to provide the service that meets the quality standards, safety, cleanliness, which is produced by a person who has expertise in a certain area.

Type 4: "Collective Mark": A Collective Mark is a mark that is endorsed by collective organizations, for example: associations, unions, other social organizations, cooperatives, chambers of commerce and industry, or other collective organizations. A Collective Mark is a Trademark that only a member of the organization can use to indicate that its goods or services are different from the goods of another party.

3. Multi-class application or single-class application:

A multi-class trademark application is acceptable in Laos, meaning that a trademark application can cover more than 01 class. The examination process for a multi-class application is more complex than for a single-class application, as the trademark office must review the mark in each class to determine if there are any conflicting marks. This can result in a longer examination process and a higher likelihood of objections or rejections. Therefore, it is advisable to file a single-class trademark application in Laos to avoid delays if a certain class of goods/services is refused registration.

4. Classification

Laos currently adopts the Nice Classification 11^th Edition. The goods and services under any applications must be listed into specific items, preferably using the terms guided in the Alphabetical List of the Nice Classification.

The class heading of the goods or the services is not possible.

If it is not possible to identify the goods or services, or both, the applicant must provide complete information so that the Department of Intellectual Property of Laos can identify the class of the goods or services, or both.

5. Filing fees:

The fees shall NOT increase if one class of goods/services has 10 or more goods/services. Thus, the trademark applicant may list as many goods/services as he likes.

6. First-to-file or first-to-use:

The priority right belongs to the person who first files application for trademark registration in Laos, it is advised to file application for trademark registration in Laos as soon as possible. Trade mark applicants do not have to show prior use of the trade mark.

7. Claiming priority:

As a Contracting Party to the Paris Convention for the Protection of Industrial Property since 08 October 1998, it is possible to claim right of priority for trademark applications filed with DIP. The applicant wishes to claim its priority rights from a foreign application, the national application must be filed with DIP within 6 months after the filing date of the foreign application.

The Paris Convention for the Protection of Industrial Property is an international treaty adopted in 1883, which provides for the protection of industrial property including trademarks. One of the provisions of the Paris Convention is the right of priority, which allows the owner of a trademark to file for protection in other member countries within a certain time period, and to claim the filing date of their original application as the filing date in the other countries.

This means that if a person has filed for trademark protection in their home country, they have a period of 06 (six) months to file in other member countries and claim the priority of their original filing date. The priority period applies to all members of the Paris Convention, regardless of whether they have a national registration system or not.

Claiming the right of priority is important because it provides the trademark owner with a number of benefits, including:

Priority over later-filed applications: If a trademark owner files in another country within the priority period, they will have priority over later-filed applications for the same trademark.

Simplified procedures: In some cases, the right of priority can simplify the filing process in the foreign country.

Legal protection: The right of priority provides legal protection for the trademark owner, as it can be used as evidence in any legal proceedings.

It is important to note that the right of priority is only available for trademarks that are identical to the original trademark and that are used in connection with the same goods or services. Additionally, the trademark owner must have filed their original application in good faith and without any fraudulent intent.

8. Terms of validity of a trademark registration in Laos:

As per Article 51 of the revised IP Law of Laos enacted on November 15, 2017, the term of trademark protection in Laos is provided as follows: "The term of protection of trademarks shall be 10 years from the date of filing the application for registration. Upon expiry the term of protection may be indefinitely renewed and each period of renewal will be for l0 years. In order to maintain the term of protection the owner of the trademark shall pay fees and charges every l0 years in advance".

However, for trademark registration certificates issued before the amendment of the Laotian IP law, for example, trademark registration certificates issued in 2014, the term of trademark protection in Laos would be 10 years from the registration date (not the filing date)

9. Trademark examination in Laos

A trademark application in Laos undergoes 02 examination stages: Formality Examination and Substantive Examination.

Formality Examination:

After DIP issues a filing number for a trademark application, its examiner will conduct a formality examination for the trademark application. The formality examination must be carried out within 60 days, as of the date that the application is received.

The formality examination aims at determining the completeness, accuracy and compliance of the application to make sure that the trademark application complies with the administrative requirements or formalities (i.e. for compliance with the filing requirements; classification: i.e., to ensure that the goods or services fall within the class(es) listed in the application; clarity: i.e., that descriptions are clear and understandable) Articles 5, 7, 9, 10 and 11 of Decision No. 2822/MOST dated 17 December 2019.

Upon reviewing the trademark application during formality examination, DIP may issue either the following Notice/Decision will be issued:

Notification of additional amendments: If the trademark appliation is incomplete or incorrect or not in compliance with the requirements specified, DIP will issue a Notification requesting the applicant notify the applicant to provide documents, or amend in accordance with the requirements within 60 days, as of the date of notification.

Notification of abandonment of the application: If the applicant fails to act within the time limit, DIP will issue a Notication that the application will not be considered and will be abandoned.

If the application is in compliance with the requirements of the formality examination, DIP will publish the application in the Official Gazette on the Registration of Industrial Property.

Publication of trademark application in Laos:

DIP will publish the trademark application in the Official Gazette of Registration of Industrial Property within 15 days after the formality examination is completed. The publication must contain the following information:

The trademark:
The class of goods and/or services;
The filing number and the filing date of the application;
The name and address of the applicant; and
Any disclaimer of protection.

Substantive Examination:

DIP's examiner will examine all aspects of a trademark application to find out whether the application violates any prohibitive provisions, as well as whether the application conflicts with any prior registered trademark right. The following will be examined to determine registrability of an applied-for mark in Laos:

Descriptiveness: i.e., to check whether a trademark functions solely to provide information about the goods and services affiliated with the trademark;
Distinctiveness: i.e., to ensure that trademarks are capable of being represented graphically and of distinguishing the goods or services of one individual or organization from those of other individuals or organizations;
Deceptiveness: i.e., to check whether a trademark is of such a nature as to deceive the public (for instance, as to the nature, quality or geographic origin of the goods or services);
Conflict with prior registration, prior-filed application or earlier unregistered rights resulting from an official search.

10. Grounds for trademark refusal and/or opposition in Laos:

As a matter of principle, a trademark application in Laos may be refused on absolute or related grounds. Grounds of refusal of a trademark application are specified in Article 16 and 23 of the Lao IP Law.

Below are main grounds where a trademark application in Laos may be refused registration or opposed:

Likelihood of Confusion: This refers to the possibility that the trademark may be confused with an existing trademark that is already registered or in use. To assess if there is a likelihood of confusion, DIP's examiner will evaluate elements such as the resemblance of the marks, the relatedness of the goods or services, and the trade routes through which they are sold. If DIP's examiner determines that confusion is likely, the trademark application will be denied.
Descriptiveness: The trademark is considered too descriptive or lacking in distinctiveness, meaning it simply describes a feature or characteristic of the goods or services it is associated with. Examples of descriptive trademarks include "Fresh-Baked Bread" for a bakery and "Soft-Touch Lotion" for a skin care product. Descriptive trademarks are ineligible for registration unless they have acquired a secondary meaning, meaning that the trademark has become distinctive through its use over time.
Merely Ornamental: The trademark is used merely as an ornamental or decorative feature and not as a source identifier. Merely ornamental trademarks are not registrable because they do not function as trademarks to identify the source of goods or services.
Genericness: The trademark is generic and cannot function as a source identifier because it refers to a class of goods or services rather than a particular source. Examples of generic trademarks include "Laptop" for computers and "E-book" for electronic books.
Deceptive: The trademark is misleading or deceptive and misrepresents the nature of the goods or services it is associated with.
Government Insignia: The trademark is similar or identical to a symbol, emblem, or insignia that is protected by government regulations. Trademarks that are similar or identical to government insignia are not registrable because they may be confused with government symbols and may infringe on government rights.
Immoral or Scandalous: The trademark is considered immoral or scandalous and is therefore not registrable. Trademarks that are immoral or scandalous are not registrable because they offend public morals and may be disrespectful to certain groups of people.
Similar to another's trade name: The mark that is identical, or similar to a trade name for a business that provides the same, similar, or related goods and services.
Untrue origin: The mark that consists of or bears a geographical indication which identifies a place other than the true origin of the products.
True origin: The mark that consists of or bears a geographical indication which, although literally true as to the territory, region or locality in which the goods originate, falsely represents to the public that the goods originate in another territory.

Deadline to respond:

A response to a Substantive Examination Notification must be submitted within 2 months (computed from the date of the Notification). A 30-day extension of the deadline is extendable subject to a prescribed fee.

11. Trademark opposition in Laos

After the formality examination for a trademark application is completed, DIP will publish the trademark application in the Official Gazette of Registration of Industrial Property within 15 days.

Third parties can submit a Notice of Opposition to a trademark application in Laos within 60 days as of the date of publication in the Official Gazette of Registration of Industrial Property. This timeline is non-extendable.

Required documents: A Notice of Opposition of a Trademark registration in Laos must include the following documents:

The application form for opposition of a Trademark registration;
The documents and evidence clarifying the opposition;
The fee service receipt.

Processes of handling a trademark opposition in Laos:

In Laos, the procedures and processes for handling a trademark opposition in Laos are provided under Article 17 of Decision No. 2822/MOST dated 17 December 2019. In brief, the procedures and processes for handling a trademark in Laos are comparable to those adopted by IP Offices in other jurisdictions, which generally include the receipt and examination of the opposition, notification to the trademark applicant, the submission of evidence and arguments by both parties, examination of the evidence, a decision by DIP and notification of the decision to the concerned parties.

The following is a general overview of the steps involved in a trademark opposition:

Filing of a trademark opposition with DIP: An opposition must be filed in writing with DIP within 60 days of the publication of the trademark application. The opposition must include evidence and arguments to support the grounds for opposition.
Examination of the opposition: DIP will examine the opposition to ensure that it is complete and complies with the relevant requirements. If the opposition is deemed to be insufficient or lacks proper evidence, DIP may request additional information or clarification or even refuses the opposition.
Notification to the trademark applicant: DIP will notify the trademark applicant that an opposition has been filed against his/her trademark application, and will provide them with a copy of the opposition.
Response from the trademark applicant: Within 60 days as of the date of the notification regarding the opposition, the trademark applicant must file a response to the opposition and submit evidence or arguments to support their case.
Examination of the evidence: DIP will examine the evidence and arguments submitted by both the opponent and the trademark applicant, and may request additional information or clarification from either party in case the evidence submitted by the opposing party and/or the trademark applicant is incomplete or unclear. In such scenario, DIP will issue a letter to invite the parties to clarify discrepancies or provide additional evidence or information.
If the trademark applicant or the opposing party do not comply with the invitation letter issued by DIP within 60 days from the date of the invitation letter, DIP will consider the opposition based on the evidence available
Decision/Notification on settlement of the opposition by DIP: Based on the evidence and arguments submitted, DIP will issue a decision/notification on the trademark opposition and notify it to the concerned parties. The decision/notification may be to allow the trademark application to proceed, to refuse registration of the trademark application, or to amend the trademark in some way to distinguish it from the opponent's trademark.

Appeal of the decision: If the parties are not satisfied with the results of the consideration, they are able to propose final administration remedies to the Committee of Final Consideration within 60 days from the date of DIP's notification

12. Trademark disclaimer in Laos

A trademark disclaimer is construed as a declaration issued by the owner of a trademark declaring that the trademark does not contain specific rights to certain terms or features included in the trademark. This statement is provided by the trademark owner. The purpose of a disclaimer is to clarify the scope of trademark rights and eliminate any potential for confusion with comparable trademarks.

Laos has disclaimer practice (i.e., a practice whereby the applicant must disclaim any exclusive right to an element of a trademark that is not distinctive). In practice, it is not mandatory to clearly indicate a disclaimer to the element that is not distinctive in the application form. The Departement of Intellectual Property of Laos will automatically consider those non-distinctive elements disclaimed.

Upon examining trademark applications, if it is determined that a particular element of the applied-for mark cannot be granted monopoly protection, DIP will notify the applicant that such element cannot be protected exclusively so as not to prevent other manufacturers or providers from using the same element for goods or services indicating the same qualities or characteristics.

If a trademark application contains descriptive words or generic terms, DIP will ask the applicant to clarify whether or not they are included in the mark. If a term is a part of the mark, DIP must notify the trademark applicant to modify the mark by removing such term.

Reasons for a trademark disclaimer in Laos:

Descriptiveness: If a part of the trademark is found to be merely descriptive of the goods or services, it may be necessary to disclaim the descriptive element in order to obtain trademark registration.
Geographic Indication: If a part of the trademark includes a geographic indication, such as the name of a city or state, it may be necessary to disclaim the geographic indication in order to obtain trademark registration.
Generic Terms: If a part of the trademark is a common or generic term for the goods or services, it may be necessary to disclaim the generic term in order to obtain trademark registration.

How to overcome a trademark disclaimer in Laos?

If DIP's examiner requests a disclaimer, there are several steps that can be taken to overcome the disclaimer request:

Modify the trademark: If the reason for the disclaimer request is due to descriptiveness or a geographic indication, it may be possible to modify the trademark to make it more distinctive and overcome the disclaimer request.
Provide evidence of distinctiveness: If the trademark has acquired distinctiveness through use, it may be possible to provide evidence of this distinctiveness to overcome the disclaimer request.

13. Amendment of trademark applications in Laos

During the examination period, the trademark applicant can amend the application at any time, provided that such amendment is performed before the registration of the mark, final refusal, or at the end of other considerations of said application, without having to pay official fees and service fees. The amendment must not add a list, a class of goods, or a service, or make any changes to the original characteristics of the mark in the application.

14. Amendment of the type of the mark in Laos

You can amend any mark type specified in an initial application to be a Trademark, Collective Mark, or Certification Mark. In the event that the mark has been amended to be a Collective Mark or a Certification Mark, the trademark applicant is required to file a new application together with the appropriate supporting documentation.

15. Publication of trademark registration in Laos

The publication of a trademark in the industrial property gazette serves as public notice of the trademark registration and provides information about the trademark to the public. The post-registration publication of a trademark application provides potential infringers with notice of the trademark owner's rights. It also provides an opportunity for third parties to file a cancellation action against the trademark registration if they believe that it infringes on their rights or is otherwise inappropriate. This makes trademark registration fair and transparent.

After a trademark is registered, the Department of Intellectual Property of Laos must publish the trademark registration in the Official Gazette of Registration of Industrial Property.

If the publication contains errors, and it is within 60 days of the first publication, the trademark owner can propose to the Department of Intellectual Property of Laos to republish the registration, along with the updated information, without having to pay service fees

16. Timeline for trademark examination in Laos

The Lao IP Law No. 38/NA of November 15, 2017 does not establish a time limit for the Department of Intellectual Property of Laos to conduct formality and substantive examination of trademark applications in Laos. In practice, it usually takes around 10-12 months from the filing date to obtain a Trademark Registration Certificate in Laos in smooth cases (i.e. without oppositions, office actions, etc.).

17. Recordal of changes for trademark registration in Laos

Regularly reviewing trademark registration to ensure that it remains accurate and up-to-date is critical. After a trademark is registered, a requirement for recordal of change of the trademark registration may arise in the following scenarios:

Change in the goods/services: If the trademark owner may need to limit/delete some goods/services under the registered mark.
Change in the trademark use or the trademark image: If the trademark owner has changed the way that they use the trademark, they may need to make changes to their trademark registration to reflect these changes in use. The change in the trademark image may be needed in case of a cancellation action.
Update Contact Information: If the trademark owner's contact information has changed, they may need to make changes to their trademark registration to ensure that the IP office has their current contact information on file.
Change in the trademark owner's name and/or address: If the trademark owner has changed their trade name and/or address, they may need to record such changes in the trademark registration.
Mergers and Acquisitions: If the trademark owner has undergone a merger or acquisition, they may need to make changes to their trademark registration to reflect the change in ownership.
Correction of Errors: If the trademark owner has made a mistake in their trademark application or if there are errors in the trademark registration, they may need to make changes to correct these errors.

As a trademark owner, you can file a request to change the information relating to the name, address, or name and address of the Trademark owner by submitting an request with the Department of Intellectual Property of Laos for recordal of such change.

The Department of Intellectual Property of Laos must record all changes in the database, record the registration, and publish the changes in the Official Gazette of Registration of Industrial Property.

18. Duplicating Trademark Registration Certificate in Laos

A trademark owner may obtain a copy of the Trademark Registration Certificate for use as evidence in legal proceedings before the Lao People's Court, for Trademark registration in foreign countries, or as a substitute for a damaged or lost Trademark Registration Certificate, or for renewal. The Trademark owner who has been granted registration by the Department of Intellectual Property must submit an application form and pay a service charge to the Department of Intellectual Property of Laos.

19. Trademark cancellation/invalidation in Laos

A trademark cancellation in Laos is a legal proceeding that seeks to remove a registered trademark from the trademark register. This process can be initiated by anyone who believes that the trademark in question should not have been registered or that the trademark owner is no longer using the trademark in commerce.

Deadline for filing a trademark cancellation action in Laos: Third parties are eligible to file a request to cancel or eliminate a trademark registration within five (5) years, as from the date of publication in the Official Gazette of Registration of Industrial Property.

The authority competent to handle a trademark cancellation action in Laos: The Department of Intellectual Property of Laos.

Grounds for trademark cancellation/invalidation in Laos:

Per Article 65 of the Lao IP Law, a trademark may be subject to cancellation if it

has not been used for a consecutive period of five years;
has been used merely token use or such use not been in goodfaith by the owner.

Steps involved in a trademark cancellation proceeding in Laos:

Filing a petition for trademark cancellation: The first step in the trademark cancellation process is to file a petition for cancellation with the appropriate trademark office. The petition should set out the grounds for cancellation and provide evidence to support the allegations.
Receipt of the petition: DIP will receive the petition for trademark cancellation and determine its validity. If the petition is deemed complete and proper, it will proceed to the next step.
Review of the petition: DIP will review the petition and the evidence provided to determine whether the grounds for cancellation have been properly established. If the petition is found to be deficient, DIP may reject the petition or request additional information or evidence from the petitioner.
Notification to the trademark owner: If the petition is deemed valid, DIP will notify the trademark owner of the petition and provide them with an opportunity to respond within 60 days, as from the date of issuance of the notification. In the event that that the trademark owner is unable to provide clarification, it will be considered that the trademark owner has accepted the cancellation or elimination of the trademark registration
Review of the Response: If the trademark owner files a response, DIP will review it and any additional evidence submitted by the trademark owner.
Decision: Based on the evidence and arguments presented by both parties, DIP will issue a decision on the trademark cancellation. If the trademark is cancelled, it will be removed from the trademark register.
The Department of Intellectual Property of Laos must cancel or eliminate the trademark registration in the event that a third party has filed a lawsuit with the Lao People's Court, and that there is a decision, which cannot be subject to appeal, to cancel or eliminate the trademark registration.
Notification: The Department of Intellectual Property of Laos must notify the owner and third party of the cancellation of the registration certificate
Appeal: If either party is dissatisfied with the decision, they may have the right to appeal the decision to a higher court.
Publication: The Department of Intellectual Property must record the cancellation in the database and publish the cancellation in the Official Gazette of Registration of Industrial Property.

20. Prior use of trademarks in Laos

The use of an unregistered trademark comes with certain risks, such as the possibility of infringing on the trademark rights of others if the unregistered mark is deemed confusingly similar to a prior registered trademark. However, there are also some potential benefits to using an unregistered mark before applying for registration, for example:

Increasing chance of success in registering marks of low disctinctiveness: In some cases, a descriptive trademark may become distinctive through widespread use prior to the filing date. In these situations, the trademark applicant can overcome objections related to lack of distinctiveness by providing evidence that their trademark has acquired secondary meaning or distinctiveness through use. Secondary meaning is established when the consuming public recognizes that the descriptive name is a trademark that refers specifically to the products of the applicant

Filing oppositions and invalidation actions: The genuine trademark owner may use their rights based on widespread use of their unregistered mark to file a Notice of Opposition and/or an invalidation action against a registered mark in Laos, relying on either or both of the following grounds: well-known trademark or widespread use

Defending against an alleged trademark infringement allegation: owners of unregistered trademarks may also be able to defend against allegations of trademark infringement by establishing their entitlement to registration in their own name if they were to apply for registration of their mark. In such cases, the owner of the unregistered trademark may bring an invalidation action against the previously registered mark, which would remove the trademark from the official registry and allow the owner of the unregistered trademark to register it in their own name.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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