KENFOX IP & Law Office > News  > Laos  > Responding to trademark refusal in Laos – Some takeaways

Responding to trademark refusal in Laos – Some takeaways

1. How to deal with the lack of distinctiveness of trademarks

Article 23.2, Laos IP Law No. 38/NA dated 15 November 2017 bars the registration of [the mark that consists exclusively of signs or indications which is served, in trade, to designate the kind, quality, quantity, intended purpose, value, place of origin, of the goods, or the time of production, or of signs that have become customary in the current language or in the good faith and established practices of the trade in the Lao PDR].

Under Laos IP Law, a mark cannot be merely descriptive. The idea behind preventing people from obtaining trademark protection for descriptive marks is that that individuals or commercial entities should not be allowed to claim exclusive trademark rights in descriptive words that competitors may need to use when describing their own goods/services. As a result, trademarks that comprise commonly descriptive (or generic) words are usually prohibited from being registered by the Laos IP Office. In practice, there are not uncommon instances where trademark applications face refusal/rejection based on an alleged descriptiveness of goods/services. However, those marks are not, in fact, descriptive, but just suggestive. The difference between descriptive and suggestive marks is a minor one. In certain cases, deciding if a particular mark is merely descriptive or suggestive is a close case where reasonable people might disagree. Laos IP Law does not contain provisions on refusal of a mark which is suggestive. Following options are available:

•  Option 1: Responding to a descriptiveness-based rejection by arguing that the applied-for mark is not merely descriptive of some aspect of the goods or services, but is rather only suggestive. Submitting evidence that the applied-for trademark subject to descriptiveness refusal has been accepted for registration in other countries worldwide to increase chance of success in overcoming the refusal.

 Option 2: Evidencing the applied-for mark has acquired distinctiveness (“secondary meaning”) through use.

Charges:                     Please contact KENFOX 

Requirements:          (i) A notarized Power of Attorney and (ii) Evidence/documents subject to options to be taken in response to the rejection.

Basic laws:                  Laos IP Law No. 38/NA

Timeframe:                 No statutory timeframe

Special notes:   

Prospect of success in overcoming descriptiveness-based rejection depends on abundance and weight of evidence to be submitted to Laos IP Office.

Secondary meaning” occurs when an otherwise descriptive word or phrase has, through usage or other means, acquired a special significance such that the consuming public believes the word to be a trademark. A proposed trademark or service mark is not inherently distinctive, it may be registered upon proof of acquired distinctiveness, or “secondary meaning,” that is, proof that it has become distinctive as applied to the applicant’s goods or services in commerce.

An applicant may submit affidavits, declaration, depositions, or other appropriate evidence showing the duration, extent, and nature of the applicant’s use of a mark in commerce, advertising expenditures in connection with such use, letters, or statements from the trade and/or public, or other appropriate evidence tending to show that the mark distinguishes the goods or services claimed thereunder.

The following should be taken into account to prove that an applied-for trademark has acquired distinctiveness through use:

(i)  Distinctiveness acquired between the date of the application and the date when the Laos IP Office examines the application does not count. Thus, evidence should predate the filing of the trademark application.

(ii) The kind and amount of evidence necessary to establish that a mark has acquired distinctiveness in relation to goods or services depends on the facts of each case, the nature of the mark sought to be registered, and the circumstances surrounding the use of the mark, etc.

(iii) Long-term use of the mark in commerce is one relevant factor to consider in determining whether a mark has acquired distinctiveness

(iv) Large-scale expenditures in promoting and advertising goods and services under a particular mark are significant to indicate the extent to which a mark has been used. The ultimate test in determining whether a designation has acquired distinctiveness is applicant’s success, rather than its efforts, in educating the public to associate the proposed mark with a single source.

(v)  Survey evidence, market research, and consumer reaction studies are relevant in establishing acquired distinctiveness and secondary meaning. To show secondary meaning, the survey must show that the consuming public views the proposed mark as an indication of the source of the product or service. Moreover, the survey should reveal that the consuming public associates the proposed mark with a single source, and not that the applicant is the first among many parties associated with the designation. The applicant must document the procedural and statistical accuracy of this type of evidence and carefully frame the questions contained therein. Evidence of secondary meaning may be sufficient if it shows that a substantial portion of the consuming public associates the proposed mark with a single source.

2. Regarding the cases of cited similar trademarks, what should be done in accordance with the Laos trademark law? What is the processing flow? And what’s the range of defense fees ?

A later-filed mark will be refused for protection if is found confusingly similar to a prior marks in Laos. Generally, while each case is judged on its own merits, the examiner in Laos examines the similarity or dissimilarity of the marks in their entireties as to appearance, pronunciation, connotation, etc. Under the laws, if similarity is found in either appearance, pronunciation or connotation, a later-filed trademark is found similar to the prior mark.

In principle, to overcome a refusal due to prior citation, following options are available to the trademark holder:

•  Option 1: Arguing on the dissimilarity between the mark at issue and the citation

•  Option 2: Seeking for a Letter of Consent from the owner of the citation

•  Option 3: Taking 5-year non-use cancellation against the citation if they are found non-used in Laos for the past 5 years.

Charges:                     Please contact KENFOX

Requirements:           (i) A notarized Power of Attorney and (ii) Evidence/documents  subject to options to be taken in response to the rejection.

Basic laws:                  Laos IP Law No. 38/NA

Timeframe:                 No statutory timeframe

Special notes:             No peculiar remarks.

 3.What do we need to do if we want to revoke our own trademark application? What is the process? And how much is the cost?

You need to file a request of cancellation to Laos IP Office. Upon receipt of the cancellation request, the Laos IP Office will conduct an examination to verify whether such request is accepted.

Charges:                     Please contact KENFOX

Requirements:        (i) Declaration of cancellation, (ii) A notarized Power of Attorney and (iii) a copy of Trademark Registration Certificate or Official Filing Receipt pending application.

Basic laws:

Timeframe:                  10-12 months

Special notes:              No peculiar remarks.

 4.What is the process if we want to file an invalid application for others’ trademark? What is the cost?

Article 45, Laos IP Law No. 38/NA dated 15 November 2017 provides that a trademark registration in Laos may be [invalidated based on a finding that one or more requirements for protection have not been satisfied; where such finding applies to only a portion of the industrial property, the termination shall apply only to such portion as is invalidated. In such case, the invalidation shall be effective as from the registration]. To this end, a third party may file an appeal for trademark cancellation in Laos to Laos IP Office.

Charges:                                 Please contact KENFOX

Requirements:                      (i) A notarized Power of Attorney and (ii) arguments for cancellation request

Basic laws:                              Laos IP Law No. 38/NA

Timeframe:                             No statutory timeframe

Special notes:                         No peculiar remarks.