How to keep a registered trademark in Laos valid?

21/06/2022 - 1052 views

The Department of Intellectual Property (DIP) under the Ministry of Commerce is the agency in charge of trademark matters in Laos, for which, a trademark needs to be examined as to formality and substance by the DIP and published for opposition by any third-parties to obtain trademark protection in Laos. Once granted, a trademark is valid for a period of 10 years and renewable indefinitely. In the framework of this article, we would like to share some aspects and procedures to keep a trademark in Laos valid.

 

                   How to keep a registered trademark in Laos valid?

 

1. Use of trademark in Laos

The Law on Intellectual Property of Laos stipulates about non-use trademarks as follows:

“Article 65. Non-Use of Trademarks 

A non-use of trademark is following cases: 

. the trademark has not been used for a consecutive period of five years;

. the trademark has been used merely token use or such use not been in good faith by the owner. 

Any individual, legal entity or organization may request to the Ministry of Science and Technology to cancel the registration of the non-use of the trademark. In any cancellation proceeding, the owner shall be entitled to present reasons justifying the non- use of the trademark. Obstacles to such use arising independently of the will of the owner shall be recognized as valid reasons for non-use.” 

Thus, the trademark owner shall be obliged to use the trademark in Laos in order to avoid the possible cancellation on the basis of non-use.

Under the current regulation, a trademark is considered to be in use if it is used on or in connection with the goods or services of the trademark for which it is registered, by the owner or by another with authorization of the owner and subject to the owner’s control. In addition, to date, there are no regulations and guidelines for trademarks to be used commercially to be identical with registered trademarks, or the use of a trademark that is a variation, similarity to a registered trademark is sufficient against cancellation on the basis of non-use initiated by any third-parties. However, the trademark owner is recommended to use the identical trademark as the one that’s already been registered.

The causes are as follows:

– According to Article 5 C-2 of Paris Convention, use of a trademark by the proprietor in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered in one of the countries of the Union shall not entail invalidation of the registration and shall not diminish the protection granted to the mark.

– Laos is a member of Paris Convention so the aforesaid Article will be considered. However, under the current Trademark Law in Laos, there is no specific provision provided for alternation of distinctive characters OR change the nature of trademark OR change mark substantially. As a result, it varies case by case and much depends on the opinion of trademark examiner. 

You can see more details about use of trademark in Laos in THIS ARTICLE

In the event that a trademark for commercial use is different from a registered one, you should consult your local attorneys to prevent the registered trademark from being insufficient against cancellation on the basis of non-use initiated by any third-parties or facing difficulties in administrative procedures when importing and circulating goods in the Laos market. 

 

2. Filing renewal request to extend the validity of trademark in Laos 

The period of trademark protection in Laos is ten years from the filing date and can be renewable indefinitely, according to the IP Law of Laos. The renewal request must be submitted within six months before the expiration date. However, with an additional cost, a six-month grace period is permitted. As a result, in addition to trademark usage in the Laos market, the trademark owner must submit a timely renewal request to keep trademark in Laos valid.

Required documents for filing a request to renew trademark registration in Laos:

. A Bilingual Notarized Power of Attorney (POA). Scanned copy of the POA is accepted at filing, the original one must be submitted within 1 month later;

. Copy of concerning Certificate of trademark registration;

. Specimen of the trademark in JPG. File with resolution at least 600DPI.

You can see more details about trademark renewal in Laos in THIS ARTICLE

 

3. Conclusion

The protection period and procedures for the renewal of trademark in Laos are not too complicated and similar to some other countries, the trademark owner just needs to pay attention and set the expiration date warning, in some cases you can use records management services of professional IP law firms;

You should have a business plan, put the trademark into use in the Laos market within 5 years from the date of issuance of the Certificate; in case your trademark for commercial use is different from the registered one, you need to consult your local attorneys to avoid possible risks.

In case you require more information or require advice to register trademark in Laos or Intellectual Property right in Myanmar, Vietnam, Laos, Cambodia 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