Trademark registration in Laos

As an emerging market in Southeast Asia, regulations on trademark registration in Laos are always an issue of concern for foreign investors intending to invest in this market. In the following article, Viet An Law will inform you of current legal regulations on conditions, procedures, and related fees for trademark registration in Laos.

Legal basis

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

Conditions for trademark protection in Laos

• A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of another enterprise. Trademarks can be words, images, or combinations of those elements represented by one or more colors;
• Subjects can register trademarks, service marks, certification marks, and collective marks in Laos;
• Signs that cannot be registered as trademarks in Laos include: Signs that are not distinctive; The sign has become the usual name of the product in commerce in the common language; Signs that are likely to deceive the public or business circles about the origin, nature, and characteristics of the goods or services; Signs contrary to social ethics and public order; Signs that duplicate, or copy, or contain elements similar to national emblems, national flags, cultural symbols, national historical symbols, names or abbreviations of the state, intergovernmental organizations or organizations international organization; Signs that are similar or identical to quality or quantity inspection marks, signs indicating type or origin, or certification marks of any state or international organization unless approved by the state . or the corresponding organization allows it; Signs that are identical or confusingly similar to well-known trademarks or trade names.

Documents and information need to be prepared when registering a trademark in Laos

• 01 trademark registration authorization letter signed, notarized, and translated into English. Copies are accepted at the time of filing the application, the original must be additionally submitted within 01 month from the date of filing the application, and the original must be additionally submitted within 01 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 templates have a resolution of 300dpi or higher;
• List of goods/services associated with the trademark.
• The priority claim is filed within 6 months from the date of filing of the foreign application (if any).

Trademark registration fees in Laos

According to regulations on trademark protection in Laos, all application fees, gazette publication, and granting fees must be paid at the same time at the time of filing the trademark registration application.

According to data from a number of intellectual property representative units, trademark registration fees in Laos are listed as follows:

Note:

• Since 2016, each trademark application in Laos has been registered for many groups of products and services according to the Nice international classification and there is no limit to the number of products/services per one application. However, registering multiple groups in one application may prolong the application processing process.
• The number of products/services in a registration group is not limited like in Vietnam.
• The Department of Intellectual Property (DIP) of Laos does not have an online trademark database that applicants can publicly access and search for trademarks. However, Laos has joined Madrid, so a reference trademark search in Laos can be done through WIPO’s common facility or by request sent to DIP (with additional official fees).
• Trademark search fees may vary based on the composition of the mark (including words, or both words and images). Registering a combination mark (including both word and image elements) in Laos requires the exact form or manner in which the mark is used. Therefore, in case you want to use the components separately, the applicant should register trademarks that include only word components or separate image components at the same time.

Trademark registration procedures in Laos

As mentioned, the procedure for registering trademark protection in Laos can be conduct in two ways: applying directly to the Department of Intellectual Property (DIP) of Laos through an industrial property representative in Laos. or apply to Madrid with Laos designation.

Register directly at the Department of Intellectual Property (DIP) Laos

Step 1: Receive application and formality examination

According to regulations, after filing the application, DIP will issue an application number for trademark registration and conduct formality examination within 01 month. After reviewing the trademark application during the formality examination process, the DIP may issue the following Notification/Decision:

• Notice of further amendments: If the trademark application is incomplete, inaccurate, or does not comply with the specified requirements, the DIP will issue a Notice requesting the applicant to notify the applicant to provide documents or amend as requested within 60 days from the date of notification.
• Notice of Application Rejection: If the applicant does not make additional submissions within the above time limit, the DIP will issue a Notice that the application will not be considered and will be canceled.

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

Step 2: Substantial examination

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

The substantial 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 application falls into cases with grounds for refusal, specifically:

• Likelihood of causing confusion with a previously registered or used control mark.
• Trademarks are descriptive and lack the ability to differentiate goods/services.
• The trademark has misleading elements and is registered with bad intentions.
• The trademark has signs that cause confusion with state agency badges, violating ethics, social order, and safety.
• Trademarks infringe on the intellectual property rights or trade names of other entities.
• The applicant does not respond to the registration objection within 01 months from the date of receipt of the notice, which can be extended for a maximum of 30 days with a fee.

If there is no basis to refuse or oppose the trademark, the trademark registration will be granted. In fact, a trademark normally will be granted within about 12 – 18 months from the date of application.

Note:

• Laos applies the “first-to-file” principle” similar to Vietnam, i.e. the Trademark Registration Certificate will be issued to the individual/legal entity that files the trademark registration application first or has the earliest priority date. Therefore, registering trademark protection in Laos is necessary and must be done as soon as possible.
• The protection term for a trademark registration in Laos is 10 years from the date of filing, which can be renewed an unlimited number of consecutive times, each time for 10 years. Trademark protection certificate is valid throughout the territory of Laos.
• 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 Laos Intellectual Property Law).

The application procedure via the Madrid system

Laos is also a member of the Madrid Protocol on international registration of trademarks since 2016. In addition to directly filing a trademark registration application in Laos through intellectual property representatives in Laos, the application trademarks can be filed through a designated registration in accordance with the provisions of the Madrid Protocol.

Currently, Vietnam is a member of both the Madrid Protocol and the Madrid Agreement. However, Laos is only a member of the Madrid Protocol, so Vietnamese businesses that want to protect their trademarks in Laos will comply with the regulations. procedures set out in the Madrid Protocol.

• Basis of registration: Based on the submitted application or Trademark Registration Certificate issued in the country of origin.
• Application language: English, French
• Filing conditions: Enterprises can file an international trademark registration application immediately after filing a trademark registration application in their home country without having to wait until the trademark registration certificate is issued in the country.
• International registration validity: Within 18 months from the filing of a valid application, an internationally registered trademark will be accepted for protection in the country designated in the application if the application is not refused protection by the designating country within the period. specified time.
• Protection term: 10 years and can be extended
• Conversion of an international application to a national application: Applications for designation in countries remain valid and retain the designation date in case the application in the country of origin is suspended in whole or in part of the goods/services list if the designation is made within 03 months of the filing date in the country of origin.

Trademark registration service in Laos of Viet An Law Firm

• Advise customers on trademarks and protection possibilities;
• Conduct a preliminary trademark search;
• Through a large partner network of law firms, intellectual property representatives in Laos support customers with legal procedures and representation in applying for a trademark registration certificate in Laos.
• Trademark registration in Laos through Madrid application with Vietnamese origin and Lao designation.
• Monitor application processing status, and receive authorization to respond to requests and objections to applications.
• Receive the certificate of protection and give it to the customer.

If you need to register a trademark in Laos, please contact Viet An Law – intellectual property representative for the most effective support.