Questions on trademark opposition/cancellation in Laos
Question 1: Is there any trademark opposition process or similar process exists in Laos?
KENFOX: Yes, it is possible for a third party file an opposition in Laos. The New IP Law No. 38/NA of 2017 introduces an opposition procedure in Laos. Previously, when a trademark owner registered his/her trademark, there was no publication procedure available to inform and allow interested third parties to oppose to a pending trademark. The interested third party was only able to file a cancellation request with the Department of Intellectual Property of Laos (“DIP”), once the trademark certificate was issued and the trademark was registered with the DIP. Under the old IP Law of Laos, it was only possible to initiate a cancellation action within five years as of the date of publication of the registered trademark in the official gazette. In the past, delays in publishing a mark in the official gazette were the norm, and sometimes it took a few years before the official gazette actually published a mark, which rendered any action for cancellation at unsuitable time. By the time a mark would have been published and then vulnerable to cancellation, the first trademark applicant could have invested money and time in the promotion and development of its brand. This could lead to more reluctance from the examiner at the DIP to cancel a registered trademark, but used in commerce. The New IP Law of Laos provides a third party more chances to oppose a pending trademark in Laos within 02 months of the publication date of the trademark.
Question 2: We wonder how Laos trademark office would judge them. Is there any rule to help identify the similarity of two trademarks consisting by Chinese characters and Latin letters?
KENFOX: Substantive examination is conducted to assess registrability of a trademark filed in Laos. Thus, if a finding of confusion is found, a later-filed mark will be refused for protection due to a prior citation. However, in some cases, especially, in non-Latin trademarks, deficiency may occur, meaning that some non-Latin marks which are similar may be allowed for registration. In such respect, a Notice of Opposition against a pending mark is advisable to block registration of similar non-Latin marks.
Question 3: What if an opposition is received, whether Laos trademark office would send the same to the mark owner and require a defense argument? Whether Laos trademark office will convey the defense argument to the opponent for further questioning? Whether Laos trademark office will issue letter or decision in writing to the mark owner or the opponent to demonstrate its opinion besides the examination decision?
KENFOX: Like opposition proceedings in many countries, upon finding an opposition grounded, the DIP would send the same to the trademark applicant and require a defense argument. The DIP may request the concerned parties to provide additional arguments/documents if necessary for the consideration of the opposition. Once arguments and supporting documents from both parties are deemed sufficient, the DIP may issue their opinion/conclusion on the opposition.
Question 4: Could you tell us some brief information on the trademark cancellation proceeding in Laos?
KENFOX: After the cancellation/invalidation request is filed with the DIP, it will be assigned to an examiner for examination thereon. If the cancellation/invalidation request is found reasonable, the DIP will send its first Notification to the trademark owner for their counterstatement or response. The owner is normally assigned a 2-month period, which may be extended by up to 4 months, from the first notification by the DIP to submit their counterstatement or response. The DIP may seek additional arguments/documents from the parties if necessary. Once arguments and supporting documents from both sides are deemed sufficient, the DIP shall issue their opinion/conclusion on the cancellation action.
Timeline: It may take roughly 2-4 years to complete a trademark cancellation in Laos.
Involved costs: Our fees for making necessary preparations, rendering arguments, submitting one cancellation request, in a normal/simple case, please contact us.
Question 5: Our client recently filed an international registration designating Laos, however, they have already owned an registration of the identical mark and most of the goods covered are same. Please confirm if the client’s new application will be rejected for covering the identical goods as the previous registration.
KENFOX: Decision on refusal against an applied-for trademark, as you are aware, depends on viewpoint of the examiner assigned to examine the trademark at issue. Upon unofficially conferring the matter with the DIP’s examiners, we were informed that as long as the goods are different (not the same), a later-filed mark will not face a refusal due to a prior mark in the name of the same owner/applicant. In other words, it is highly likely that the DIP’s examiners will not render a prior mark to bar a later-filed mark from registration if (i) such marks belong to the same owner and (ii) the goods/services bearing those marks are different (slight change in the goods/services for the later-filed mark is also acceptable).