You can register trademark in Laos with Department of Intellectual Property, Ministry of Industry and Commerce. Only one mark can be registered in an application. A series of marks is not accepted for protection in Laos. The mark can be displayed in black & white or in a variety of colors. But, will the scope of protection for a black-and-white mark be broader than for a color mark or not? Here are some thoughts on the subjects.
1. What can be registered as a trademark in Laos?
The current Intellectual Property Law in Laos defines a mark as “any sign, or any combination of signs, capable of distinguishing the goods or services of any individuals, legal entities or organizations which are different from other individuals, legal entities or organizations”. Signs may be in the form of letters, numerals, words, phrases, shapes, pictures, images, logos, including three-dimensional images or their combinations, presented in one or several given colors. These signs are used to distinguish the goods and/or services of one trader from those of another. Non-visible signs, such as sound, olfactory (odor, scent or smell), taste and moving marks are not registrable as a trademark in Laos.
2. Scope of protection of a trademark in Laos
There is not yet any specific regulation to determine the scope of protection of a registered trademark in Laos. However, under the current practice in Laos, the scope of protection of mark is established based on all what they are displayed consisting of all elements and color(s) and color arrangement, if any Once a trademark is registered for protection for black and white, it will not be protected for other colors and vice versa. It just means that the protected trademark in black and white can prevent the use and registration of later similar trademarks in all colors in the name of third parties. Similarity, the protected trademark in colors can preclude the use and registration of later similar trademarks in black and white of third parties.
3. Whether use of the mark in color demonstrates use of the registered trademark in Laos in black-and-white?
Under the Article 65 of Laos IP Law, 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. Meanwhile, the legislation on intellectual property additionally states that “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 if the trademark has not been used for a consecutive period of five years”. Thus, in order to avoid the possible cancellation on the basis of non-use, the registered mark should be actually used in Laos. The question is whether use of the mark in color proves usage of the black-and-white registered trademark in Laos and vice versa?
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.
The topic of whether to file a trademark in Laos in color or black and white is tough to answer. To avoid any potential risks, the applicant should register trademark in Laos that he intends to use in practice.
More information about trademark protection in Laos can be found HERE.
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