How is a trademark application examined 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:
(i) 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.
(ii) 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:
(i) The trademark:
(ii) The class of goods and/or services;
(iii) The filing number and the filing date of the application;
(iv) The name and address of the applicant; and
(v) Any disclaimer of protection.
Substantive Examination:
The examiner of the Department of Intellectual Property 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:
(i) Descriptiveness: i.e., to check whether a trademark functions solely to provide information about the goods and services affiliated with the trademark;
(ii) 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;
(iii) 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);
(iv) Conflict with prior registration, prior-filed application or earlier unregistered rights resulting from an official search.
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:
(i) 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.
(ii) 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.
(iii) 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.
(iv) 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.
(v) Deceptive: The trademark is misleading or deceptive and misrepresents the nature of the goods or services it is associated with.
(vi) 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.
(vii) 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.
(viii) 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.
(ix) Untrue origin: The mark that consists of or bears a geographical indication which identifies a place other than the true origin of the products.
(x) 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.
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