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”Kenfox IP & Law Office has been ranked Tier 1 Trademark Firm for Laos in 2018 Asia IP Trademark Survey by Asia IP”
”Kenfox IP & Law Office has been ranked Tier 1 Trademark Firm for Laos in 2018 Asia IP Trademark Survey by Asia IP”
Copyright © 2018 KENFOX
All other rights are reserved. This document and its contents are made available on an “as is” basis, and all implied warranties are disclaimed. The contents of this document do not constitute, and should not be relied on as, legal advice. You should approach a legal professional if you require legal advice.
I. Legal grounds
1. Decree No. 06/PM of Prime Minister on Trademarks Registration (1995)
2. Regulation No. 466/STEA-PMO of Prime Minister on the Registration of Trademarks (2002)
3. Decree No. 15 /PMO on Trade Competition (2004)
4. Law No. 01/NA of December 20, 2011, on Intellectual Property (as amended) (2011.
5. Decree No. 054/PO of January 16, 2012, of the President of the Lao People’s Democratic Republic on the Promulgation of the Amended Law on Intellectual Property (2012)
6. The Civil Procedure Law (2004)
7. The Penal Procedure Law (2004)
8. The Penal Law (2005)
9. The Customs Law (2005)
10. The Property Law (1990)
II. Trademark related matters in Laos
A trade mark is a sign, such as a word, device, brand, shape, colour, sound, or a combination of these elements, which is capable of being graphically represented and used by a person in the course of trade to distinguish his or her goods or services from another person’s.
So, a trademark may be any sign, or combination of signs, capable of distinguishing the goods or services of one entity or product from those of other entities or products. Such signs may include words and personal names, letters, numerals, figurative elements and combinations of colours and signs. Eligible signs must be visually perceptible and not identical to a previously registered mark, well-known mark, or geographical indication for the same or similar goods or services where the later mark would tend to cause confusion as to the source of the goods or services or create a false impression that they are connected or associated with another party.
To obtain IP protection for a trademark in Lao PDR, a trademark certificate must be issued in respect of the mark. As such, registration of a trademark offers the right to protect such mark from unauthorised use by a third party in Lao PDR that would infringe on it. The Law on Intellectual Property (the “IP Law”) provides trade mark owners with the right to prevent others from using identical or confusingly similar marks for their goods and services.
Applications for trademark registration are conducted through the Ministry of Science and Technology (MOST) and may be made to apply to one or more classes of goods or services as described in the Nice Agreement for Classification of Goods and Services (although Lao PDR is not a signatory to the Nice Agreement trademark registration in Lao PDR uses the same classes of goods and services as set out therein). Trademark applications must be made in English and Lao. The application for trade mark registration must contain the following information/documents:
a. A request for registration of the trademark;
b. The name and other personal data of the applicant;
c. A notarised power of attorney, and if the application is filed through an agency, the agent’s name and address in Laos must be included;
d. Drawings or a specimen of the mark;
e. A description of the goods/services to which the mark will be applied/used in connection with; and
f. Receipt of payment of official fees.
Although not a signatory, Laos applies the Nice Agreement for classification of goods and services. One registration application is valid for only one trade mark but may apply to more than one class of goods/services. Laos applies the first-to-file system for trade marks. Moreover, the same priority requirements apply to trade mark applications. If the applicant wishes to claim its priority rights from a foreign application, the national application must be filed with MOST within 6 months after the filing date of the foreign application.
Determining whether a mark is considered ‘well-known’ for the purposes of determining eligibility of a similar mark is a process subject to the Law and includes how recognizable it is within a relevant industry in Lao PDR, the volume and period of use of the mark, and any goodwill associated with the use of the mark, amongst other factors.
In the registration procedure, MOST conducts formality and substantive examination of the trade mark application. Trade mark applicants do not have to show prior use of the trade mark. Once registered, however, the trade mark must be used in Laos for the registration to be maintained. Rights in a trade mark can be lost through the action or inaction of the trade mark’s owner. Trade mark rights can also be lost unintentionally by the applicant if a continuous period of non-use exceeds 5 years. The period of non use required to show abandonment of a mark in Laos is five years. The requirements for trade mark registrations are prescribed by the Decision of the Minister of Science and Technology on the Implementation of Law on Intellectual Property concerning Trademarks and Trade Names was issued in September 2012.
Any person, legal entity, or organisation may apply for a trade mark certificate. A person, legal entity, or organisation residing in a foreign country, however, must be represented by an authorised representative in Laos (i.e., an IP agent).
Trade mark protection lasts for ten years from the filing date, and at the end of the initial ten-year period, the mark can be further renewed for ten years each time. A renewal fee applies, which must be paid in advance for ten years.
KENFOX advises that under Article 4 A (1) of the Paris Convention: [ Any person who has duly filed an application for a patent, or for the registration of a utility model, or of an industrial design, or of a trademark, in one of the countries of the Union, or his successor in title, shall enjoy, for the purpose of filing in the other countries, a right of priority during the periods hereinafter fixed ]. As defined in Article 4 A of the Paris Convention, the right of priority may be enjoyed “during the periods hereinafter fixed” – which periods according to Article 4 C (1) are 12 months for Patents and 6 months for Utility Models, Industrial Designs and Trademarks. According to Article 4 C (2) these 12/6–month “ periods shall start from the date of filing of the first application; the day of filing shall not be included in the period ”. In effect, it means that if one applies for a specific trademark for the first time in Paris Convention signatories, and then, within the next six months, files an application for the same trademark in Laos and claims priority, then the second application filed with the DIP in Laos will be considered as having been filed on the same date as the first application.
To claim priority for trademark applications in Laos, at the filing stage, the applicant is required to provide us with some priority data, such office of priority filing, priority filing date, and application number and name of the country. A certified copy of the priority document must be submitted within three months from the date of the request by the Registrar.
MOST shall accept the application and assign a filing date that contains, at a minimum:
Like other countries where formality and substantive examination are conducted in sequential manner.
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.
After completion of the formality examination of the application, the Ministry of Science and Technology will examine as to substance of the trademark applications.
An application for a patent is subject to a substantive examination to determine whether it meets the requirements for patentability or for obtaining a petty patent as described in this Law. The substantive examination shall be based on a search of existing technical knowledge. Where the application has previously been subject to a search or examination by another authority the applicant may submit a copy of the report of such office and request that it be accepted in lieu of conducting a search in the Lao PDR. If the applicant is unable to provide substantive examination reports for the invention or utility innovation which is the subject of the application, the applicant may submit a request to the Ministry of Science and Technology to examine as to substance the application. The Ministry of Science and Technology will undertake the examination within the following time frames: 32 months for an invention and 12 months for a utility innovation from the date of filing the application or the priority date. However, all expenses incurred in the request for the examination of the invention or utility innovation registration application shall be the burden of the requestor. The registration applications for industrial design, trademark and geographical indication will not be requested to examine as to substance.
(See Articles 44 and 136 of the IP Law)
Where a patent, petty patent, industrial design registration, trademark registration, integrated circuit layout-design registration, or plant variety protection certificate is held invalid by the People’s Court, the Ministry of Science and Technology shall cancel such intellectual property accordingly. In the case of patents or petty patents, such holding shall specify the patent or petty patent claims to which the holding applies.
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.
The cancellation of non-use of a trademark in Laos does not automatically apply to the owner as Lao system has not yet the database system to control upon this regard. Therefore, the owner of the registered trademark should not take any action unless it has been challenged by a third party in relation the trademark.
If the challenge is raised by the third party, he has to clarify the reasons for proposing the cancellation of the target trademark as well as the proof of non-use.
By what way to avoid such cancellation request?
In order to avoid cancellation, the owner of the trademark could use one of the below strategies to prove the use of the said trademark.
Strategy 1: Conducting sales of the products bearing the mark
The trademark owner can send some bulks of product samples to us or nominated person for arrangement of distribution and sale of such products in Laos. The debit notes, receipt obtained from distributors, etc. should be kept as the evidence of trademark use in Laos. ( It is recommended to distribute to various supermarkets or distributors in Laos rather than just one distributor )
This strategy requires the trademark owner to have the license operating in Laos in order to conduct any kind of sales in the country, unless the owner has the contract agreement with the company that already has the operating License in Laos to conduct the sale on behalf of the trademark owner/company.
Strategy 2: Placing advertisements or cautionary notices on Magazines/Newspapers
This strategy is also considered to be one factor taken into account of the proof of use of trademark. Though it varies from the volume and expenses spent on the products.
Besides, the trademark owner can extend to the advertisement on Radio/TV, which is also quite famous strategy in Laos.
Strategy 3: Placing company’s website and/or website related to the products under the Lao domain name.
(See Article 64 of the IP Law)
A non-use of trademark is following cases:
Any individual, legal entity or organization may request to the Ministry of Science and Technology to cancel the registration of the non-use of the trademark. In any cancellation proceeding, the owner shall be entitled to present reasons justifying the non-use of the trademark. Obstacles to such use arising independently of the will of the owner shall be recognized as valid reasons for non-use.
A trademark is used if it is used on or in connection with the goods or services of the trademark for which it is registered, by the owner or by another with authorization of the owner and subject to the owner’s control.
Petition against non-use of trademark in Laos
If the trademark owner receives the non-use claim, the general framework would be as followings:
i) Issue 1: a request is filed to cancel the validity of a trademark registration
In this case, the client is required to file the response back to the Lao DIP, otherwise, the cancellation will be made after the deadline made in the Official Notice.
ii) Issue 2: the trademark owner can file the claim against the opposition for the infringement of the trademark in Laos
KENFOX could assist the client to handle the above work at the same time or separate time.
Laos became a member of the Madrid Protocol in December 2015, and the Protocol entered into force in March 2016. The Madrid Protocol is administered by the World Intellectual Property Organisation (WIPO). It provides a cost-effective and efficient means for trademark owners to obtain protection for their marks in multiple countries through filing one application, called an “international application,” at a single Trade mark Office, in one language, and with one set of fees.
Currently, the Ministerial Regulation concerning the implementation of the Madrid Protocol is not yet available. Trade mark protection may be granted for any sign or combination of signs capable of distinguishing the goods or services of one undertaking from those of other undertakings. That is, the sign, or combination of signs, must have distinctive character. Signs eligible for protection include:
Lao PDR is a member of the Madrid System of trademark registration that offers protection in up to 115 member countries worldwide. Trademarks registered in other Madrid System countries may be granted reciprocal registration and a trademark certificate acknowledging protection over the relevant mark in Lao PDR.
(Article 120 of the IP Law)
Any act of competition contrary to honest practices in industrial or commercial matters constitutes an act of unfair competition. The following acts shall constitute acts of unfair competition and shall be prohibited:
Under the Law, violations of IP rights may be subject to civil enforcement proceedings, administrative enforcement and customs border measures including seizures of infringing property at point of importation into Lao PDR.
Civil enforcement proceedings may be brought by any interested party through a claim in the Peoples’ Court of Lao PDR. Such actions may also be initiated by federations and associations representing interested parties and by collective management organisations.
Remedies available from civil enforcement proceedings include orders of seizure of goods or suspension of import of goods, damages and expenses, and orders that the infringing goods be destroyed. Provisional measures may also be taken by the Courts in order to prevent an infringement of IP from occurring, to prevent infringing goods from entering the market, and to preserve evidence in regard to alleged infringements.
Under the Law, the Lao PDR Customs Department can provide for the suspension of goods that infringe a trademark, copyright or other IP rights from customs upon entry into Lao PDR. Such enforcement requires a complaint to be filed with the Department of Intellectual Property or the Customs Department, as relevant, informing such of the infringing goods.
The key legislation governing intellectual property (IP) in Laos is the Law No. 01/NA of December 20, 2011, on Intellectual Property, as amended (IP Law). The current incarnation of the IP Law includes salient provisions on industrial property, new plant varieties, and copyright and related rights.
Although the IP Law was enacted more than three years ago, the stretch of time between then and now has had little effect on the competency of IP officers at the Department of Intellectual Property Rights (DIPR) in Laos—they remain relatively inexperienced, especially with regard to handling cases that involve IP infringement.
Brand owners with business interests in Laos must therefore maintain high levels of vigilance to prevent the infringement of their IP. This necessity is particularly more pronounced for Thai brand owners, as Laos is one of the largest consumers of Thai-branded goods in the world.
Given that brand owners must have an astute understanding of the IP Law in order to uphold their IP rights in Laos, this article will delve into the laws and procedures that brand owners must consider to prevent and manage the infringement of their IP.
A trademark is categorized as industrial property and is defined as “any sign, or combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings,” which is to be used with “goods or services” and used to “distinguish between these goods or services and other goods or services.”
Pursuant to Article 57 of the IP Law, trademark owners have the right:
The infringement of a trademark, in violation of Article 57, by any measures specified therein, is an explicit criminal offense. Civil remedies are also available in cases of trademark infringement.
As the IP Law is new to the general public and Lao IP officers are relatively inexperienced, in practice, the DIPR rarely recommends criminal and/or civil actions as a means of a legal recourse. Instead, the DIPR recommends use of administrative remedies, which have become the most common measures employed by trademark owners against infringers that are juristic persons and/or persons who allocate counterfeit goods to markets or consumers.
To confuse matters, however, administrative remedies are not defined in the IP Law. They are simply mentioned in Article 127 of the IP Law, which states that trademark owners may opt for administrative remedies by requesting the Intellectual Property Administrative Authority (Authority) of the DIPR to take action on behalf of the owner to tackle the infringement.
In order to commence the process of obtaining an administrative remedy, trademark owners are required to submit the following documents to the Authority:
It is also worth noting that if a retail shop commits infringement by selling imitation products from an unidentified producer, the Authority will appoint a raid committee to plan and conduct the raids.
A raid committee is comprised of officers from the following organizations:
In the case of shops committing infringement that are located in provinces outside of Vientiane, the DIPR will coordinate with the local authorities in that province to tackle the infringement. The local authorities of each Division will be appointed to orchestrate the raid in lieu of the central unit from the list above.
Under Article 57 of the IP Law, a trademark owner has the following rights:
The rights described in items 1 and 2 of this Article shall not prejudice any existing prior rights.
The rights described above shall apply mutatis mutandis to well-known marks and to trade names without regard to whether they are registered.
An IPR owner can pursue infringers in different ways, one of which is to apply for border control measures, meaning that the IPRs holder files a request with the Customs authorities to suspend Customs clearance and destroy counterfeit goods.
Currently, Laos has no formal Customs recordation system. However, if the IPRs owner knows of a shipment containing counterfeit goods, he or she may inform Customs and file a motion by submitting an application form provided by Customs and pay a bond or deposit (see below for further information on procedures for initiation actions for suspension of Customs clearance). The IP Law and Instructions on Customs Measures for the Protection on Intellectual Property Rights No. 1970/MOF (Customs Measures Instructions) regulates such “Customs information” measures in Laos. The IP Law allows IPRs owners and/or Customs to initiate actions for suspension of Customs clearance of suspicious counterfeit goods. The tariff officer and other competent officers at the Lao borders have the rights and duties of inspecting the imported goods and seizing and confiscating infringing goods. So far, most counterfeit goods in Laos have involved food and drugs.
Counterfeit trademark goods and pirated copyright goods may be referred to the Customs Department. Counterfeit trademark goods mean goods bearing, without authorisation, a trademark, which is identical to the trademark validly registered in respect of such goods, or which cannot be distinguished in its essential aspects from such a trademark. Such goods thereby infringe the rights of the owner of the trademark in question under the IP Law.
Pirated copyright goods mean any goods that are copied without the consent of the rights-holder or person duly authorised by the rights-holder and which are made directly or indirectly from an article where the making of that copy would have constituted an infringement of a copyright or a related right under the IP Law.
Customs may maintain the suspension for ten (10) working days. However, suspension may continue if the applicant has provided evidence that judicial action has been initiated. The applicant must initiate judicial action with the Court against the owner of the allegedly infringing goods within ten (10) working days upon receipt of the notice of suspension. Failure to initiate judicial action within the statutory time entitles the customs officer to release the goods immediately and to compel the applicant to compensate for damages suffered by the owner of the goods.
The IPRs holder must provide the following documents prior to inspection and suspension:
In case of an emergency, where the filing of a written application is impossible, the rights-holder may verbally request the Customs authority to take action.
Any trade mark and copyright holder may inform Customs of counterfeit or pirated goods. The application and all the supporting documents must be made in Lao.
Besides using Customs to block counterfeit goods, in the case where your IP assets are being infringed in Laos, there are three main avenues of enforcement that can be considered: dispute resolution, civil litigation, and criminal prosecution. In many cases, however, private mediation via legal professionals is more effective and should be considered as a viable option.
The IP Law offers the following settlement measures to resolve an intellectual property dispute:
In the case of an intellectual property dispute, the parties may choose any form of dispute resolution set out in the points above.
The applicant may turn to the People’s Court at the district or provincial level to enforce their rights by means of civil litigation. Available remedies include:
The District/Provincial Court’s decision may be appealed to the Appeal Courts and the Supreme People’s Court. Overseas court orders must be recognised and approved by the Lao courts to be effective and executable in Laos.
In addition, IPRs owners may request the People’s Court to order prompt and effective provisional measures (injunction orders) to:
Moreover, an IPRs owner may apply for ex parte provisional measures with the People’s Court, where any delay is likely to cause irreparable harm to the IPRs owner or where there is a demonstrable risk of evidence being destroyed.
Criminal prosecution may be initiated through the Lao police force ( economic division), who refer the case to a public prosecutor for criminal court action. The competent court is the People’s Court at the provincial level ( and the Appeal Court and the Supreme People’s Court for appeals).
Criminal actions are available for the protection of copyright, patents, industrial designs, geographical indications trade secrets and trademarks.
Possible penalties include damages, imprisonment for three months up to two years, and fines of between LAK 500,000 and 10,000,000, (approximately EUR 50 and EUR 1,000). The infringer may also be subject to additional measures, including suspension or withdrawal of business licenses and seizure of infringing goods and equipment used to commit the infringement.
As Court litigation is generally a costly and time-consuming option for the enforcement of IPRs, other viable and more effective options to enforce your IPRs in Laos could be reconciliation, mediation, administrative settlement, settlement through the Economic Dispute Resolution Committee or international dispute settlement.
In the case where your IP assets are being infringed in Laos, there are (2) two main avenues of enforcement that can be considered: civil litigation and criminal prosecution. In many cases, however, private mediation via legal professionals should be considered as a viable option for EU The applicant. Other methods of dispute resolution are also available in the country and could bring effective results.
The People’s Court at the district or provincial level are competent to enforce IP rights by means of civil litigation. The District/Provincial Court’s decision may be appealed to the Appeal Courts and the Supreme People’s Court. The relevant documents to initiate a lawsuit in Laos would need to be drafted on ‘ad hoc’ basis by lawyers licensed to represent clients in the country.
Criminal prosecution may be initiated through the Lao police force (economic division), who refer the case to a public prosecutor for criminal court action. The competent court is the People’s Court at the provincial level (and the Appeal Court and the Supreme People’s Court for appeals). No official forms are available according to the inputs received by local External Experts.
If an IPR owner knows of a shipment containing counterfeit goods, he or she may inform Customs, file a motion by submitting an application form and pay a bond or deposit.
Trade name means the name of an enterprise used in business to identify the enterprise.
Under Article 19 of the IP Law, a trade name shall be protected without the obligation of filing or registration, whether or not it forms part of a trademark.
Under Article 23 of the IP Law, a mark shall be ineligible for trademark registration if it is identical, or similar to a trade name for a business that provides the same, similar, or related goods and services.