Trademark registration procedures in Laos

Laos is a new and potential business market that many Vietnamese businesses are aiming for. However, to be able to dominate the Lao market, the first thing businesses need to do is trademark registration. However, many businesses do not know how to register a trademark. To answer clients’ questions, Viet An Law Firm would like to provide the following article on trademark registration procedures in Laos.

Legal basis

• Laos Intellectual Property Law 2017.
• Madrid Protocol 1989.

Trademark protection mechanism in Laos

• Laos applies the “first-to-file” principle – the first to apply, similar to Vietnam, a Trademark Registration Certificate will be issued to any individual/legal entity that is the first to submit a trademark registration application or has the earliest priority date. Therefore, trademark protection registration in Laos is necessary and must be done as soon as possible.
• Trademark owners are obliged to use trademarks registered in Laos. A trademark registration certificate in Laos can be canceled if the registered trademark is not used for 5 consecutive years (Article 65 of the Lao Intellectual Property Law).
• The validity of a trademark registered in Laos is 10 years from the date of application and can be renewed several consecutive times, each time for 10 years.

Reasons to register a trademark in Laos

Laos is a market with much potential, attracting many foreign investors from different countries around the world. Trademark registration in Laos is the legal basis for certifying ownership of an enterprise’s trademark, based on being granted a trademark registration certificate by the National Office of Intellectual Property. Important reasons why owners should register a trademark in Laos include:

• Prevent third parties from promoting identical or similar products to the extent of causing confusion, imitation, or counterfeiting that affects the reputation and quality of businesses in the Lao market.
• Serves as a basis for transferring the right to use (license) the trademark or franchise the protected trademark of the business to other companies, thereby creating an additional source of income for the business, helping businesses expand investment or reinvest.
• Prevent third parties from using the trademark of the enterprise that is being used and registering it for exclusive rights, then the enterprise is not allowed to widely use that trademark in its business field or accidentally the enterprise becomes the trademark infringer.
• Basis to mobilize financial capital from banks or venture capital funds to create a unique trademark in the market and improve the reputation and quality of products for businesses.

Trademark Registration Dossier in Laos

According to the Lao Intellectual Property Law 2017, applicants when registering directly at DIP Laos need to prepare the following documents:

• 01 trademark registration power of attorney signed, notarized, and translated into English. Copies are accepted at the time of applying, the original must be additionally submitted within one month from the filing date of the application, and the original must be additionally submitted within one month from the date of filing the trademark application. The power of attorney is valid for 5 years from the date of signing;
• Full information about the applicant’s name, address, phone number, and nationality;
• Trademark sample with resolution of 300dpi or higher;
• List of goods/services associated with the trademark.
• Priority claim filed within 6 months from the date of foreign filing (if applicable) extension fee.

For registration applications through the Madrid system, the same regulations apply as for regular Madrid registration applications according to the provisions of the Intellectual Property Law and Decree 65/2013/ND-CP for applications with the originality of Vietnamese and Lao designation.

Trademark registration procedures in Laos

Procedures for trademark protection registration in Laos can be carried out in two forms: filing directly at the Department of Intellectual Property (DIP) of Laos through an industrial property representative in Laos or filing a Madrid application with designated Laos.

The application procedure is through the Madrid system

Currently, Laos is only a member of the Madrid Protocol, so Vietnamese businesses that want to protect trademarks in Laos will follow the procedures specified in the Madrid Protocol.

To register, applicants need to follow these steps:

Step 1: Research the possibility of trademark protection

This is an important stage when registering for trademark protection because when applicants want to register, they need to research the protection ability of the trademark to be registered in advance to avoid risks when applying for international registration is rejected due to confusion with previous applications or falling under other cases of refusal to grant applications according to regulations.

Step 2: Prepare documents and apply for trademark protection registration

After completing the search for trademark protection, and ensuring that the trademark is not similar or likely to confuse with trademarks that are protected in other countries, the applicant can apply for registration. International trademark protection under the Madrid Protocol at the International Office of the World Intellectual Property Organization (WIPO) through the Intellectual Property Office.

Step 3: Formal examination of the application and publication in the Official Gazette

After submitting an application for protection registration at the Intellectual Property Office, within 30 days from the date of receipt of the request, the Intellectual Property Office will send the trademark protection application to the International Office of WIPO. In there, the registration application will be assessed in terms of form, including applicant status, trademark sample, application form, and list of goods and services. In case the international registration application requirements are fully met, it will be recorded in the international registration and published in WIPO’s international trademark gazette.

Step 4: Formal examination of WIPO and transmission of the protection request to the Trademark Registration Office of Laos

The International Office notifies each participating party that receives a request for protection in an international application. From the date of international registration, trademark protection for each designated participant will be the same as if the trademark were filed directly at the office of that participant. Each participating party is assigned to examine the substance of the application within the time prescribed by the Madrid Protocol and then notify the results of the examination to the International Office.

Step 5: Issue a protection/ refusal notice to grant a protection registration application

Between 16-18 months:

• If the trademark office of the designating country does not issue a refusal notice, the trademark will automatically be protected in that country.
• If the trademark office of the designating country has a reason not to accept trademark protection, it will send a temporary refusal notice to register that trademark to the owner. The trademark owner will respond/appeal to the notice of rejection by the regulations of that member country.

The procedure for examining applications under the Madrid system is carried out independently in each country. The refusal of protection in one country does not affect the validity of trademark protection or the process of considering protection in the remaining countries.

For direct registration at the Department of Intellectual Property (DIP) Laos

According to Intellectual Property Law No. 38/NA dated November 15, 2017, of Laos, the steps to directly register industrial designs at the Department of Intellectual Property (DIP) of Laos include:

Step 1: Receive applications and formal examination

According to regulations, after applying, DIP will issue an application number for trademark registration and conduct a formal examination within one (01) month. After reviewing the trademark application during the formal examination process, the DIP may issue the following notification/decision:

• Notice of amendments and supplements
• Notice of refusal of application

If the application complies with the formal examination requirements, the DIP will publish the application in the Official Gazette of the Industrial Property Registration within 15 days of completing the formal examination process.

Step 2: Substantive examination

The substantive examination of a trademark registration application in Laos is conducted within 09 months from the filing date of the application.

The substantive examination is to receive notices of opposition to registration applications from third parties (within 60 days from the date of publication in the Official Gazette) and review whether the registration application falls into cases with grounds for refusal…

If there is no basis for refusing or opposing the trademark, the trademark registration will be granted. Normally a trademark will be granted within about 12 – 18 months from the date of application.

Trademark registration procedures in Laos of Viet An Law Firm

• Consulting on issues related to filing trademark registration applications in Laos;
• Representing customers to apply for trademark registration directly in Laos or through the Madrid System;
• Monitor the progress of the application and regularly update the status of the trademark owner;
• Consulting on trademark use after licensing;
• Prepare documents to apply for extension and maintenance of protection certificate validity in Laos;
• Examine and evaluate the possibility of infringement, and coordinate with competent authorities in protecting customers’ rights to trademarks protected in Laos.

Clients who need to carry out trademark registration procedures in Laos, please contact Viet An Law Firm for the best support.

Disclaimer: This article was last updated in January 2024. Laws may have changed since then. Please contact Viet An Law to confirm the information in this article is current and for any legal assistance.