Laos officially joined the Madrid Protocol on March 07, 2016. Since that time, obtaining a trademark registration has become possible through both national and international trademark registrations designating Laos. Within the framework of this article, we will point out some similarities and differences when responding to a refusal of trademark in Laos between a national application and an international registration.
1. Deadline for response to refusal of trademark in Laos
In accordance with the current regulation, when a national trademark application is refused in Laos, the deadline for response to the Office action is 60 days as of the signing date of the Notice by the Department of Intellectual Property of Laos (DIP).
The deadline for response the refusal of an international trademark registration designating Laos is 60 days from the receipt date of the notification from the International Bureau of WIPO. The date of receipt of the notification of rejection regarding an international trademark registration is the date that WIPO notifies the holder, as notifications are currently sent by email due to the advent of the internet.
The above deadline for response to refusal of trademark in Laos cannot extend for both national application and international registration.
2. Grounds for the provisional refusal of trademark in Laos
There is not any difference about the grounds for the provisional refusal of a national trademark application or international trademark registration. In particular, a trademark application will be refused protection, if it violates into either absolute grounds or relative grounds.
Trademark applications in Laos may be partially refused for some goods/services. In this case, if the applicant agrees with the DIP’s requirement, the solution procedure is as follows:
- In respect of National trademark applications, the applicant or the applicant’s representative (if the applications were submitted through a representative) must submit an amendment request directly with the DIP to request the removal of the refused goods/services from the designated specification of goods/services. Then, filing a response to the Notice of Refusal with the DIP based on the request for amendment.
- In respect of international trademark applications: The request for limitation of goods/services must be submitted with the IB of WIPO, rather than the DIP. Then, the response to the Notice of Refusal should be filed at the DIP together with the request for limitation in advance and the notification of recordal the limitation of goods/services later.
3. Response method and required documents
3.1. Response method
– The response to refusal of National trademark application can be filed directly if the applicant is a Lao national or has a head office or business establishment in Laos. Foreign applicant who does not have head office or business establishment in Laos must file response through a local Agent.
– The response to refusal of international trademark registration must be filed through a local Agent.
3.2. Required documents
- Power of Attorney: It is not required to file a notarized Power of Attorney (POA) when filing a response to the office action regarding a national trademark application if this application was filed by the same representative. Meanwhile, in respect of international trademark registration, the notarized POA is required at the time of filing response.
- Supporting documents, if any;
- Other evidence and/or other relevant information (where applicable)
4. Procedure
4.1. Timeframe:
- In respect of National trademark application: Normally, it takes 24-36 months to review the response regarding a national trademark application, (depend on the complexity of each case);
- In respect of international trademark registration: it takes about 2-3 months to review the response
4.2. Result:
If the DIP accepts the response, the DIP will issue:
- Certificate of Trademark Registration in respect of a National Trademark Application
- the Statement of Grant of Protection in respect of an International Trademark Registration. The International Bureau of WIPO and the applicant’s representative in Laos will both receive the Statement of Grant of Protection at once.
If the time limit specified in Section 1 expires, but the Trademark Owner has no response or has an unsatisfactory response, the DIP will issue the Decision of refusal of trademark in Laos.
In case you require more information or require advice to register trademark in Laos, Cambodia, Myanmar, Vietnam as well as other IP matters, please do not hesitate to contact us via email: info@ageless.vn
More information about trademark protection in Laos can be found HERE
