How can you protect your IP rights?

Protect your trademarks in Lao PDR and abroad

There are two routes of protection of marks in Lao PDR—the national route and the international route or protection via the Madrid Protocol. The national route is excellent if you want to protect your mark only in Lao PDR, but if you are thinking of protecting your mark abroad, you may consider the Madrid option.

The Department of Intellectual Property (DIP) of the Ministry of Science and Technology (MOST) is the national agency in charge of registering trademarks.

The contact details of the office are as follows:

Department of Intellectual Property
Ministry of Science and Technology (MOST)
Nahaidiao Street
P.O. Box 2279, Vientiane, Laos
Tel: +856 21 240 784
Fax: +856 21 213 472

A mark is defined as a sign or combination of signs that distinguishes goods or services of one undertaking from those of another. The marks that can be protected in Lao PDR are words, including personal names, letters, numbers, figurative elements, and combination of colors, and the combination of any of these signs.

Collective and certification marks may also be registered in Lao PDR.

  • The application must be filed using the prescribed application form.
  • The filing languages are English and Lao, but if the application is filed in English, the translation into the Lao language and other documents submitted with the application should be submitted within 90 days from filing. The translation must be certified.
  • The Office accepts paper applications only.
  • Lao PDR follows the first-to-file principle.
  • DIP accepts multi-class applications. The Office accepts the Nice classification and the ASEAN List of Goods. The terms accepted by DIP may be accessed at www.asean-tmclass.org.
Any person or legal entity, resident or non-resident, may file a trademark application. A representative is not required for the filing of a trademark by resident filers, but foreign applicants and those not having business establishment or residence in Lao PDR are required to appoint an authorized representative in Lao PDR.
  • The name, address, and nationality of the applicant;
  • Drawing, photograph, or specimen of the mark (the drawing must be a minimum of 4cm x 4 cm and shall not exceed 8cm x 8cm);
  • Filing fee.
  • The specification of goods or services is not a requirement for the grant of a filing date. However, if the goods or services are not specified in the application and the filing date is accorded by the office, omission will result in the refusal of the application;
  • If the applicant is represented, a power of attorney, and the name and address of applicant’s representative in the Lao PDR;
  • If the application is for a collective or certification mark, an indication that it is so, together with a description of the way the mark will be used;
  • Where the priority of an earlier application is claimed, the details of the earlier application. A certified copy of the earlier application, together with a translation into Lao, must be submitted within three months;
  • If color is a material feature of the mark, the color must be shown in the representation of the mark and state the name of the color/s;
  • An indication that the mark is three-dimensional if it is one;
  • Electronic copy of the mark, if available;
  • Description of the mark, unless the mark is in standard characters;
  • If the mark contains foreign words or characters, the translation or transliteration of the mark into the Lao language.

Once the minimum and other formality requirements are met, the application shall be examined to determine whether they can be registered under the Trademark Law and Regulations of Lao PDR.

A mark cannot be registered if:

  • it is incapable of distinguishing the goods or services of the applicant from those of another individual, legal entity or organization;
  • it consists exclusively of signs or indications which may serve, 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;
  • it is of such a nature as to deceive or mislead the public or trade circles in which the mark is used or is of a fraudulent nature;
  • it consists of or comprises indications that, when used in the course of trade, is liable to mislead the public as to the origin, nature, the manufacturing process, the characteristics, the suitability for their purpose, or the quantity, of the goods or services;
  • if consists of or contains without authorization from the relevant governmental entity, armorial bearings, flags, or other national emblems, and official signs, hallmarks, abbreviations or full names of towns, municipalities, provinces or capital of the Lao PDR or foreign countries;
  • it consists of or contains, without authorization from the relevant state or international organization, an emblem of an international organization or symbols created by international conventions, official seals or symbols of state or international organizations;
  • it consists of or contains, without authorization, the name, image, or likeness of a living person;
  • it consists of or contains, without authorization images of cultural symbols or historical monuments, or the name, image, or likeness of a national hero or a leader, or the mark would be offensive or contrary to the fine traditions of the nation;
  • it is identical or similar to trademarks already registered for the same, similar, or related goods or services;
  • it is identical, or similar to a well-known mark for the same, similar or related goods or services;
  • it is identical, or similar to a trade name for a business that provides the same, similar, or related goods and services;
  • it may lead to a likelihood of confusion as to the source of the goods or services or falsely suggest an association with the registered mark or well-known mark or trade name, as appropriate;
  • it consists of or incorporates a geographical indication which identifies a place other than the true origin of the goods; the mark that consists of or incorporates a geographical indication which, although literally true as to the territory, region or locality in which the goods originate, falsely represents to the public that the goods originate in another territory;
  • it consists of or contains matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute;
  • it is of such a nature as to create confusion with the establishment, the goods, or the industrial or commercial activities, of a competitor;
  • it is of such a nature that its use in the course of trade would discredit the establishment, the goods, or the industrial or commercial activities, of a competitor;
  • it is contrary to national security, social order, culture and the fine traditions of the nation.

After the examination of the application has been completed, and it fulfills the requirements for registrability, the mark will be registered and the registration published in the official industrial property gazette.

Where a trademark has been registered, any third party may file an objection or a cancellation of such registration within a period of 5 years from the date of publication in the official gazette.

The registration is valid for 10 years counted from the registration date of the mark. The trade mark owner may renew the registration of the mark for consecutive periods of ten years, subject to the payment of the renewal fee.

If you are thinking of seeking protection outside Lao PDR, you may wish to consider the Madrid Protocol option or the “International Route”. This option is crucial if you intend to export your products abroad. In this context, you should familiarize yourself with the key elements of the Protocol Relating to the Madrid Agreement for the International Registration of Marks or the Madrid Protocol, which is undoubtedly very beneficial for SMEs in countries like Lao PDR, if they wish to protect their marks in other countries.

The Madrid Protocol enables trademark owners to obtain protection in as many countries as are members of the international agreement by simply filing one application, in one language (including English), with one set of fees and in one currency (Swiss francs). Similar advantages exist when the registration has to be renewed or is assigned to a third party or when other changes, such as in name and/or address, have to be recorded.

In short, the Madrid system is a simple, economical, effective centralized procedure that provides for:

  • A one-stop shop for trademark holders to obtain and maintain trademark protection in export markets;
  • A single set of simple formalities;
  • Lower registration fees (including a reduction of 90% of the basic fees for international applications from LDCs, including Lao PDR);
  • No need to translate the application into several languages;
  • Great ease of post-registration administration of your rights.

The savings achieved, in terms of filing fees, formalities and agent fees abroad, will clearly facilitate the protection of your trademark abroad and therefore the marketing of your products in foreign countries. The good news is that Lao PDR became a member of the Madrid system in 2016. This means that if you possess either a commercial or industrial establishment in Lao PDR, or you are domiciled in or a national of Lao PDR, then you are entitled to use the Madrid system.

A single international application produces the same legal effects in the various designated countries as if the mark had been filed nationally. In other words, the effects of an international registration are equivalent to those of a national registration. As a consequence, an international registration can be seen as a bundle of national registrations, whose management is centralized within the hands of the International Bureau of WIPO and is greatly simplified.

However, it is important to remember that the Madrid system is merely procedural. The domestic legislations of the designated Contracting Parties set the substantive conditions for the actual granting of the protection. In general, it is recommended to seek professional advice before filing an application.

This is the way you should proceed to use the Madrid system:

  • First of all, if you are using DIP as your so-called “Office of Origin”, you need to have a basic mark—an application or a registration in Lao PDR. This is what you will use as basis for your international application.
  • You need to use the official WIPO Form (MM2) to file an international application with DIP. The filing language in DIP is English. You cannot use the Lao language when filing a Madrid international application. Note that you cannot file your application directly with WIPO.
  • Your basic mark should match your national application or registration. You may decide to reduce its scope (for example, by eliminating some of the goods/services covered by the national mark), but you cannot expand it.
  • The international application must contain the following:
    • a reproduction of the mark (identical to the mark filed or protected nationally);
    • a list of the goods and/or services for which protection is sought, classified in accordance with the International Classification of Goods and Services (Nice Classification); and
    • the indication of the Contracting Parties in which protection of the mark is sought (the so-called “designations”); these are the countries where you wish to register your mark and where you intend to do business.
  • An international application is subject to the payment of fees. The standard fee system comprises a basic fee (which is intended to cover the costs of the International Bureau in administering the system of international registration), a supplementary fee (if the list of goods and services involves more than three classes of the International Classification under the Nice Agreement) and a complementary fee (for each Contracting Party for which protection is requested) or an individual fee (instead of the complementary fee), the amount of which is determined by that Contracting Party. Lao PDR collects the individual fee.
  • Before forwarding the application to WIPO, DIP, your Office of Origin must certify that the mark that is the subject of the international application is the same as that in the national application or registration, that the applicant or owner of the mark in both the basic mark and the international application is identical, and that the goods and/or services listed in the application are covered by those of the basic registration or basic application.
  • On receipt of the international application, WIPO checks that it complies with the requirements of the Madrid Protocol and of the Common Regulations, including in particular, the requirements relating to the classification of the list of goods and/or services, and that the required fees have been paid. The Office of Origin and the applicant are informed of any irregularities and these must be remedied within the time limit of three months, otherwise the application will be considered abandoned.
  • Where the international application complies with the applicable requirements, the mark is recorded in the International Register and published in the Gazette. The International Bureau then notifies each Contracting Party in which protection has been requested.
  • Each designated Contracting Party has the right to refuse protection in its own territory if the mark does not comply with the substantive requirements of its law.
  • A refusal must be notified to WIPO by the Office of the designated Contracting Party concerned within the time limit specified (in principle, 12 months from the date of the notification of the international registration, or 18 months, or even a longer period if the refusal is based on an opposition).
  • If no refusal is notified to WIPO within the relevant period, the mark in question will enjoy the same protection in the Contracting Parties concerned as if it had been registered by the respective Offices of these Contracting Parties. The designated contracting party will then issue a Statement of Grant of Protection.
  • On the contrary, if a refusal is notified, the procedure subsequent to that refusal, such as a review or appeal, is carried out directly between the holder and the national IP Office of the designated contracting party in accordance with domestic legislation and without any involvement on the part of WIPO.
  • An international registration is in effect for 10 years. It may be renewed for further periods of 10 years on payment of the prescribed fees. The applicant will still need to comply with the maintenance requirements (use requirements) of each of the designated contracting parties, if there are any.

There is only one route protection of industrial designs in Lao PDR—the national route. The international route via the Hague Agreement is still not available in Lao PDR.

The Department of Intellectual Property (DIP) of the Ministry of Science and Technology (MOST) is the national agency in charge of registering industrial designs.

The contact details of the office are as follows:

Department of Intellectual Property
Ministry of Science and Technology (MOST)
Nahaidiao Street
P.O. Box 2279, Vientiane, Laos
Tel: +856 21 240 784
Fax: +856 21 213 472
Any individual, firm or company (local or foreign) can apply for industrial design protection. If the application is not filed by the creator of the design, a statement stating the applicant’s right to the registration of the industrial design must be included in the application. A representative is not required for the filing of an industrial design by resident filers, but foreign applicants and those not having business establishment or residence in Lao PDR are required to appoint an authorized representative in Lao PDR.
  • The application must be filed using the prescribed application form.
  • The filing languages are English and Lao, but if the application is filed in English, the applicant should submit the translation of the applicant and other documents submitted into the Lao language within 90 days from filing. The translation must be certified.
  • The office accepts paper applications only.

An application for the registration of industrial design shall include the following documents:

  • a request for registration of the industrial design;
  • if the applicant is represented, a power of attorney, and the name and address of the applicant’s representative in the Lao PDR;
  • one or more drawings or photographs that clearly disclose the industrial design as needed to illustrate its appearance (representation of the design);
  • brief statement of the type of goods to which the industrial design relates;
  • prescribed fees.

The application may include a claim of priority (if applicable).

Each application for industrial design registration shall relate to a single industrial design or a series of related designs for a single class as per the Locarno classification.

If the above requirements are met, the application will be accorded a filing date.

An application for registration may contain a declaration claiming priority based on one or more earlier applications filed by the applicant or his predecessor in title in another country or office that is party to an agreement to which the Lao PDR is a party and that provides for a right of priority.

Where a priority claim is established, any subsequent filing before the expiration of the priority period shall not be invalidated by reason of any act as the putting on sale of copies of the design, and such act cannot give rise to any third-party right or any right of personal possession.

The priority period is six months from the priority date.

In order to register an industrial design in Lao PDR, it must meet all the following requirements:

  • It must be new, i.e., it has not been disclosed to the public by publication or by use or displayed in Lao PDR or any place in the world prior to the date of filing or priority date of the application for registration;
  • It must be ornamental, i.e., it gives a special appearance to the object to which the design is applied or in which it is embodied.

The following industrial designs, however, shall not be eligible for registration:

  • A design the appearance of which is dictated solely by technical features of the object to which the design is applied or in which it is embodied;
  • A design that is contrary to social order and the fine traditions of the nation.

The DIP will conduct a formality examination of the design application to ensure that the application is complete and that the fees have been paid. The DIP will then notify the applicant whether or not the application met the requirements for a filing date. In case the application is determined to have met the requirements for a filing date, but is still incomplete or incorrectly filed, applicant will be given 60 days to complete the application.

Once the application has been determined to have met the requirements for registration under the law, the application will be registered, the certificate of registration issued, and the registration published in the official gazette.

Any third party may file an objection to or request the cancellation of the registration of the design within 5 years from the date of publication in the official gazette.

The term of protection of industrial designs shall be 15 years from the date of filing the application for registration.
Last modified: Tuesday, 29 November 2016, 1:35 PM