Laos: Decision On Trademark Registration Process

Source: lexology

In January 2020, Laos published the awaited Decision on Trade Names and Trademarks No. 2822/MOST (the “Decision”).  The Decision took effect on February 11, 2020. This Decision brings clarity to certain important provisions of the Amended Law on Intellectual Property No. 38/NA, published in May 2018.

The key provisions of the Decision are the following.

1. Expansion to service marks and non-traditional marks —

The Decision formally specifies service marks exist under Lao Trademark Law.  Further, the Decision specifies the exact requirements for registering 3D marks and moving pictures as trademarks.

2. Renewal —

The Decision specified renewals of marks are possible starting from 6-months before the end of its term (a reduction compared to the previous one-year period).

3. Requirements for Power of Attorney —

In order to register their trademarks in Laos, the Decision specified trademark owners based abroad must assign a local trademark representative.  Also, now the Power of Attorney (“POA”) must specify the validity period, as opposed to the previous system in which POAs were valid in perpetuity.  Now if the validity period is not specified, trademark owners must update their standing POA with their local representative, otherwise the POA will be valid for one transaction only. 

4. Assignment and Authorization to use a Trademark —

The Decision indicated the transfer of rights from one entity to another must be registered with the Department of Intellectual Property (“DIP”) and published in the Official Gazette of Intellectual Property.  Likewise, authorization to use a trademark, such as in a franchise or license agreement, must be registered with the DIP in order to be enforceable in Laos.

5. Registration process

According to the Decision, the registration process will follow four stages:

1. The examiner conducts a formality examination to verify if the minimum trademark application requirements are met.
2. If the formality examination is successful, the trademark is published in the official gazette of Intellectual Property within 15 days. From there, third parties can file opposition applications. Once an opposition is filed, Applicants have 60 days to respond to the opposition. The DIP’s Department of Dispute Resolution will review oppositions and make decisions.  If one party is not satisfied with the outcome, that party can file an appeal with the newly created Committee of Final Appeal within 60 days.
3. In the absence of an opposition or if the opposition is not successful, the examiner proceeds to a substantive examination to check the mark’s composition, uniqueness and eligibility for registration under the Laos Trademark law.  If the DIP rejects the mark, the applicant can respond and provide supporting documents or further information to the DIP, within 60 days of the rejection.
4. If the substantive examination is successful, the DIP registers the trademark and publishes it in the Official Gazette of Intellectual Property.

6. Cancellation process —

The Decision specified a party can ask for cancellation of a registered trademark within 5 years of its publication in the Official Gazette of Intellectual Property.  After being notified by the DIP of the filing of a cancellation action, the owner of the registered mark has 60 days to respond.

7. Administrative Remedies —

The Decision specified that an applicant can file a complaint directly with the DIP’s Department of Dispute Resolution:

1. To correct a mistake made by the DIP that triggered an office action;
2. To correct a mistake made by the applicant; and
3. To reconsider the whole application if the applicant believes that the DIP did not apply the law correctly.

If necessary, the applicant can appeal to the Committee of Final Appeal.

8. Committee of Final Appeal —

The Decision stipulated the Committee of Final Appeal is the last recourse for a trademark owner who seeks administrative remedies.  The members of the Committee of Final Appeal are appointed on an ad hoc basis and the Committee is independent from the DIP.

Overall, the Decision continues the positive evolution of the Laos trademark system and its commitment to align with international legal standards.

Sources:

Laos Department of Intellectual Property