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I. LEGAL BASIS
1. Law No. 01/NA of December 20, 2011, on Intellectual Property (as amended) (2011)
2. The Civil Procedure Law (2004)
3. The Penal Procedure Law (2004)
4. The Penal Law (2005)
5. The Customs Law (2005)
6. The Property Law (1990)
II. GEOGRAPHICAL INDICATIN RELATED MATTERS IN LAOS
1. Definition of Geographical Indications (GIs)
A Geographical Indication (GI) is a distinctive sign used to identify a product as originating in the territory of a particular country, region, or locality where its quality, reputation, or other characteristics are linked to its geographical origin. GIs differ from trade marks in the sense that GIs may be used by all producers or traders whose products originate from that place and which share a particular quality, reputation or other characteristics, while trade marks may only be used by the trade mark owner or with the owner’s consent. “Champagne” from France, “Parmigiano-Reggiano” from Italy, “Scotch Whisky” from Scotland and “Feta cheese” from Greece are all examples of European GIs.
The general rule is that a GI is a collective right of use and does not belong to one individual or company. This rule, however, has exceptions whereby a single person/legal entity can apply for a GI. This is only applicable in exceptional cases, according to the regulations governing GIs. GIs protect both the producers’ interests and the consumers’ interests.
2. Basic information on Geographical Indications (GIs) in Laos
Geographical indication means a sign used to indicate a good as originating in the territory of a country or region or locality in that territory, where a given quality and reputation or other characteristic of the good is essentially attributable to its geographical origin.
In Laos, protection of GIs is devolved to inter-agency cooperation among the following key organisations: (i) the Ministry of Science and Technology (MOST), which includes the Department of Intellectual Property (DIP), competent for registration and protection, and the Department for Standardisation and Metrology (DoSM), competent for product standards; and (ii) the Ministry of Agriculture and Forestry (MAF).
Geographical Indication recognition is undergoing rapid expansion in Laos with 19 potential indications identified at the national level. Two GI products have been selected as priority pilot projects for GI registration: Bolaven plateau coffee from Champasak province and small chicken rice (special sticky rice) from Xiengkhouang and Huaphanh provinces.
The Geographical Indication symbol is used as a sign to indicate goods as originating in the territory of a country or region or locality in that territory, where a given quality and reputation or other characteristics of the goods are essentially attributable to the goods’ geographical origin. To date, GI protection is mainly seen as a means to contribute to the local development of agriculture and within ASEAN.
The Decision of the Minister of Science and Technology on the implementation of Geographical Indications under the Law on Intellectual Property (Decision) has finally been enacted. This was the missing piece that enabled the registration of GIs in Laos, and it was finalised only in October 2016.
Regarding the timeframe for the whole process of the registration, for foreign GIs, the duration of the process may not be the same if the GI has been subject to a previous registration in a country with which Laos has signed a Memorandum of Understanding (MOU) in order to accelerate the examination process.
To date, Laos has signed MOUs with the following four countries: (i) Japan; (ii) Cambodia; (iii) Vietnam; and (iv) Singapore. According to the government’s plan, this list should grow bigger. Accordingly, if an applicant has proof that its GI has been registered in one of the above countries, the issuance of a certificate may progress much quicker.
Officials have stated that in this case, registration may take between 1 to 3 months before the GI certificate is issued. Otherwise, the timeframe for registering a GI will not differ from the registration of a local GI, that is, around 12 months.
These timeframes may be subject to change in the future, as the registration process remains untested.
Term of protection
There is no specific duration of protection of a GI. Therefore, the GI benefits from an unlimited term of protection. The protection starts as from the filing date, which is when the required documents are approved and the service fees (along with official fees) are paid.
The authority in charge of the registration of GIs in Laos is the Department of Intellectual Property. Accordingly, GI applications should be filed with the DIP. The list of the documents to be submitted to the DIP must include:
Notably, in addition to item 8, the wording contained within the Decision states that “the application for registration of a Geographical Indication shall include at least”—“at least” may cause some confusion as to the list of documents to be submitted.
Notably, the application form is currently not yet available at the DIP, as it is still being formulated. However, it may be available shortly.
In the event that the registration concerns a foreign GI, the applicant will have to substantiate and verify that the GI is currently protected in its country of origin. The DIP in Laos will not accept an application regarding a foreign GI that has ceased to be protected or has fallen into disuse in its country of origin.
According to the Decision, “producer groups, operators, institutions, and/or interested persons” are able to file an application to register a GI. However, this will have to be done through an Association, dedicated to registering and protecting the contemplated GI. The Association will also ensure that each member complies with the Book of Specifications to ensure a high standard of quality during the course of the existence of the GI. This Association must be recognised by the DIP.
Interestingly, and differently from many other jurisdictions, the Decision leaves the right for a single person, either an individual or a legal person, to register a GI, and therefore, be recognised as a Geographical Indication Association. Two prerequisites must be fulfilled:
The Decision does not make such registration a general rule and clearly states that such a path to GI registration may concern only certain exceptional cases.
The Decision does not derogate the principle set out by the Law on Intellectual Property of 2011. The application can be filed with documents in English, and the DIP will start processing the application the moment they receive these documents.
However, as for any other industrial property, a Lao version of the documents must be submitted to the DIP within 90 days after the main submission of the documents in English. The applicant must, therefore, bear in mind the costs of translation.
3. Requirements for Obtaining a Geographical Indication Certificate
In order to obtain a geographical indication certificate, an indication shall meet all the following requirements:
4. Geographical Indications Ineligible for Registration
Geographical indications ineligible for registration shall be as follows:
5. Applications for Registration of Geographical Indications
Applications for registration of geographical indications shall include the following documents:
One registration application is valid for only one geographical indication.
The Ministry of Science and Technology shall accept the application and assign a filing date that contains, at a minimum:
If any individual, legal entity or organization wishes to apply for registration of geographical indication, shall satisfy all specified requirements within the times set by the Ministry of Science and Technology.
6. Formality Examination of Industrial Property Registration Applications
The Ministry of Science and Technology will conduct a formality examination of each industrial property application to ensure that the application is complete, in correct form, and that fees have been paid. The Ministry of Science and Technology will notify the applicant whether the application is sufficiently complete to receive a filing date.
If the application is sufficiently complete to receive a filing date but it appears that the application is incomplete or otherwise incorrectly filed, the Ministry of Science and Technology will inform the applicant to complete the application within 60 days of notification.
7. Substantive Examination of Industrial Property Applications
After completion of the formality examination of the application, the Ministry of Science and Technology will examine as to substance the patent, petty patent, industrial design, trademark and geographical indication applications for registration.
The layout-design of integrated circuit registration application is not examined as to substance.
The registration applications for industrial design, trademark and geographical indication will not be requested to examine as to substance.
After consideration and examination of the industrial property registration applications which are considered to fulfill the requirements provided for in this law, the Ministry of Science and Technology will issue a patent, petty patent or industrial property registration certificate, enter the registration in the register and publish the registration in the official industrial property gazette.
Where an industrial design, trademark or geographical indication has been registered, the third party may request an objection or a cancellation of such registration within period of 5 years from the date of publication in the official gazette.
9. Rights of Geographical Indication Registration Owner
The owner of the registration of a geographical indication shall have the following rights:
Only producers who carry out business undertakings within the geographical region specified for the geographical indication may use the registered geographical indication on or in connection with the goods to which the geographical indication relates.
Any act which is an infringement as described in item 1 or 2 of this Article shall be an act of unfair competition, including the use of any means in the designation or presentation of a good that indicates or suggests that the good originates in a geographical area other than its true place of origin and in a manner that misleads the public as to the geographical origin of the good.
The rights provided in items 1 and 2 of this Article shall be applicable to an indication of goods that is confusingly similar to the protected geographical indication or that are homonymous with it.
11. Exploitation of Geographical indications
Where the registrant fails to perform under the requirements of the registration of the geographical indications, individual, legal entity or organization may bring an action to the Ministry of Science and Technology to suspend the exploitation of a registered geographical indication. The Ministry of Science and Technology shall notify the registrant to perform under the requirements or within the time-period provided by the Ministry of Science and Technology. The Ministry of Science and Technology will order the suspension of the exploitation of such geographical indications if the registrant fails to perform under the requirements and within the time-period.