- What are the key changes under the new legislation?
The key changes under the new legislation in Laos that effect to the trademark protection are as following:
- (i) The types of trademark are accepted for protection scope in Laos are expended for trademark protection in the jurisdiction, namely the 3D images and animated images can be registered as trademarks (Article 16.1)
Article 16.1 The mark may be any sign, or any combination of signs, capable of distinguishing the goods or services of any individual, legal entity or organization which is different from those of any other sign of individual, legal entity or organization. Such signs may include words including personal names, letters, numerals, figurative elements, goods three-dimensional imagery, animation or packing of goods and combinations of colors, as well as any combination of such signs.
- (ii) Term of Protection: unlike the provisions of the former law on the term of protection was valid from the date of registration, this new law regulates the protection term will be 10 years from the date of filing the application for registration. (Article 51)
Article 51: …. The term of protection of trademarks shall be 10 years from the date of filing the application for registration
- Opposition: according to the new law, third parties may now file an opposition within the following periods from publication date: 60 days for trademarks since the date of published in the official industrial property gazette (Article 39).
Article 39: …..The third party shall propose an objection to such application within 90 days for patent and petty patent; 60 days for industrial design, trademark, layout-designs of integrated circuit and geographical indication since the date of published in the official industrial property gazette.
Particularly, implementation of a new trademark application publication system and opposition procedure:
- Publication will occur once the preliminary examination is successful. The preliminary examination will consider the minimum required documents, along with the official application form (official form, specimen, and receipt evidencing payment of any official fees).
- Allows the opposition from third parties within 60 days of the publication date and there will be a digital platform in assist notify third parties of the submission of the new trademark application.
- Are the changes having the desired effect?
Through practical activities related to the implementation of Lao’s new trademark regulations, we assess that these changes are significant changes that are positive and highly effective, especially to ensure the rights and legitimate interests of the parties, and also in accordance with the general rules and common practice.
- What are the key implications for brand owners?
For trademark owners, the most implications and important meaning is to ensure their legitimate rights and interests when doing business in Laos.
In detail, as before, the owner of the trademark will not know that his rights and interests are being infringed when a third party submits a trademark application similar to his trademark because there is no official gazette mechanism during the application examination process. The only method for the owner to proactively protect his rights is to submit a cancelled request once the similar trademark has been granted a protection along with other requirements.
Hence, with the new regulations, the brand owner will have a period of 60 days from the date of publication to file the opposition request against the similar application, however, the publication will become effective when the DIP of Laos confirms that the minimum required documents to register a trademark have been filed and are in order. This has a positive meaning because in the case of a perfectly reasonable opposition, it is possible to prevent a protection for the similar trademark.
- What other changes would be welcome?
Firstly, currently in Laos, there is no official online system as well as published database to search trademarks (especially for preliminary search before filing a trademark application). Due to the workload at the Laos’ IP Office, recently, the official trademark search takes at least 20 working days to be completed. Therefore, it is creating burden against applicant when considering the registration of trademark in Laos.
We hope that in the future, there will be an online library system, not only for trademarks but also for all other IP objects, in Laos for applicants and / or their representatives can proactively assess the ability of the trademark to register before proceeding to submit applications at Laos’ DIP.
Moreover, we believe that the deadline for filing a cancelled request against the trademark in particular and for other objects in general, although it has been a significant change in the Lao system, it would be more effective if the above-mentioned time limit may be extended or may be extended to the time before granting the trademark registration certificate.
Secondly, although the process registration applications in Laos rather quickly, regulations on conditions for granting trademark registration certificates are quite simple, have not gone into many specific situations and only emphasized the ability to distinguish (on the difference between trademarks).
It usually makes the registration of the trademark too easy and does not really depth evaluation on substantive examination, which may lead to conflicts of interest and interests of the parties if it is used on the same time. Based on that reasons, we expect that there will be further improvements in the Lao legal basis to better ensure the rights and interests of subjects by creating a stronger and more detailed legal corridor.