South-East Asia IPR Basics Series: Trademarks and Industrial Designs in Laos

BRAND on price labelsIndustrial designs and trademarks are intellectual property which protect the exterior design of a product and a company’s distinctive symbols, colors, and expressions, respectively. They are key parts corporate branding which readily identify a product’s origin and offer a quick guarantee of quality for consumers.

This article details rules in Laos’  Law on Intellectual Property concerning industrial design and trademark content, registration, protection, and enforcement. For SMEs seeking to develop their brand image and consumer goodwill in Laos, the information herein represents an important first step in guarding against counterfeiting and IP piracy.

Laos: a background for SMEs

The Lao PDR is a landlocked country in Southeast Asia sharing land borders with China, Vietnam, Cambodia, and Thailand. Its 6.8 million residents live in a developing nation which has seen mono-party Communist rule and endemic corruption since 1975. The country is member of the WTO, ASEAN, the Asia-Pacific Trade Agreement, the East Asia Summit, and the International Organization of La Francophonie (OIF). The Lao PDR ranks 148th in the world in Ease of Doing Business according to a World Bank report in 2014.

Laos’ trade with the EU, although small, is rapidly growing. In 2014, EU exports to Laos grew 53.3% to reach 182 million euros. That year, machinery, appliances, and transport equipment cumulatively made up 63% of EU exports to Laos, particularly non-electrical machinery (25.9%). These figures put the EU as a distant fourth among Laos’ largest trading partners after Thailand, China, and Vietnam. Both machinery and equipment and consumer goods have been identified as ASEAN as target areas for FDI in Laos.

Prior to Laos’ accession to the World Trade Organisation (WTO) 2 February 2013, the country’s intellectual property laws underwent considerable amendments. IPRs in Laos are governed by the Law on Intellectual Property No. 01/NA of 20 December 2011 (“IP Law”), protecting copyright and related rights, patents, petty patents, industrial designs, trade marks, trade names, layout designs of integrated circuits, geographical indications, trade secrets, and plant varieties. The new IP Law is based on the World Intellectual Property Organization (WIPO) model law and the requirements of the Trade Related Aspects of Intellectual Property Rights (TRIPs) Agreement. Following promulgation of the new IP Law in 2012, it is expected that the Prime Minister will issue guiding decrees on the implementation and interpretation of the new legislation. The Lao PDR is a member of the following international conventions regulating IP matters[1]:

  • Patent Cooperation Treaty
  • Berne Convention for the Protection of Literary and Artistic Works
  • Paris Convention for the Protection of Industrial Property
  • Convention Establishing the World Intellectual Property Organization
  • ASEAN Framework Agreement on Intellectual Property Cooperation
  • ASEAN Trade in Goods Agreement

 

Industrial Designs and Trade Marks in Laos

For the textile and fashion industries, the most important intellectual property are industrial designs, i.e. “the pattern or shape of the product, which is to be created which includes the shape, pattern, line, colour, design, drawing, etc.” and trade marks, “the mark . . . [used] with goods or services as well as to distinguish between these goods or services and other goods or services”, both of these are defined in Article 3 of the Lao PDR’s Law on Intellectual Property.

Lao PDR operates a first-to-file system, meaning that their IPR registration process heavily favours the first party to apply for a patent, copyright, or certificate, rather than favouring the party with the first recorded use. That having been said, the Lao PDR does recognize so-called right of priority, where use of a design or trade mark in another country with which the Lao PDR has concluded a relevant treaty will give that company an advantage in the application process. Applying for priority based on prior use of a product will create a priority date, serving as a benchmark for first use of the design or product in question. Priority is covered in Article 29 of the Law on Intellectual Property, but a law to clarify priority establishment mechanisms has yet to be released. Priority industrial design and trade mark certificate applications can be filed up to six months after the initial filing in another treaty member state, which is known as the ‘priority date’.

SMEs should apply either to the Department of Intellectual Property in the Lao PDR Ministry of Science and Technology (MOST) or through an international IP registration procedure to which the Lao PDR is a party (such as the Patent Cooperation Treaty or Paris Convention). Any individual or organization residing in a foreign country must appoint an authorized representative in the Lao PDR to conduct IPR registration transactions. If an applicant submits an application for materials which have already been granted an Industrial Design Certificate or Trade Mark Certificate in another country, the applicant must notify MOST during the application procedure. Applications may be filed in either English or Lao, but English applications must be accompanied by a Lao translation which has been certified to be correct within 90 days.

Filing for an Industrial Design Certificate

To file for an Industrial Design Certificate, the design in question should be new—meaning not having been disclosed to the public in a journal or used, demonstrated, or displayed by any other means in the Lao PDR or abroad before filing the application or before the priority date of the application—as well ornamental—meaning that it should give a special appearance to the object to which it is applied. An example of this is a new t-shirt design which is purely aesthetic and neither contributes to nor reflects the technical features of the t-shirt.

An application requires:

  1. A request for registration of the industrial design
  2. One or more drawings or photographs that clearly disclose the industrial design as needed to illustrate its appearance
  3. A brief description of the type of goods to which the industrial design relates
  4. A receipt for payment of fees
  5. (if the applicant is not in the Lao PDR) Notarized power of attorney and the name and address of applicant’s representative in the Lao PDR

An application can be filed for a single industrial design or a series of related designs for a single class of items as outlined by international Locarno classifications. Industrial designs are protected for fifteen years from the date of filing the application for registration. To maintain the protection, the industrial design owner must pay fees every five years in advance. After the industrial design application is examined to ensure that it follows relevant regulations, the Department of Intellectual Property of MOST will issue a registration certificate, the registration will be listed in the register, and the registration will be published in the official industry gazette.

Filing for a Trade mark or Service mark

A mark which can be registered must distinguish a good or service of an enterprise and must not be identical or confusingly similar to other previously registered marks. Trade marks or Service marks must not mislead the public as to characteristics of the product including its quality, intended purpose, or place of production. A mark can be protected even if it is unregistered but has been recognised as a well-known mark. A well-known mark must be widely recognized in its sector within the Lao PDR. To prove that a mark is well-known, applicants must demonstrate that the mark has sufficient local reputation to be considered well-known in the Lao PDR. For instance, Coca-Cola has been recognized as a well-known mark because it is a prominent brand among the Lao public.

An application for trade mark registration requires:

  1. A request for registration of the trade mark or service mark;
  2. A drawing or other image or specimen of the mark (at least 4cm x 4cm and at most 8cm x 8cm)
  3. Description of the goods and / or services which the mark will be used for. If the application relates to a collective mark or certification mark, the application shall so indicate and shall include a description of the way the mark is to be used;
  4. A notarized power of attorney

Additional materials which may be required are as follows:

  1. (if the applicant claims priority for their application based on an earlier Trade Mark Application or Certificate issued in another country) A certified copy of the trade mark application or registration which constitutes the basis of the priority claim
  2. (if colour is a critical part of the trade mark) The mark in question displayed in the colour(s) and the name of the colour(s)
  3. (if the mark is 3D) An indication that the mark is 3D
  4. (optional) An electronic copy of the mark
  5. (if the mark is not in standard characters) A description of the mark
  6. (if the mark contains foreign words, other than English or Lao) A translation or transliteration of the mark into English or Lao

A single application for a mark can cover only one class of goods or services in accordance with the International (Nice) Classification of Goods and Services. Once the Registrar accepts a trade mark, it will issue a registration certificate and then such trade mark will be published in the official industry gazette.

Trade marks are protected for ten years from the date of registration, but are renewable for additional periods of 10 years.. The renewal fee for each ten-year period is required to be paid within 6 months before the expiry date or within a grace period of six months thereafter, with payment of an additional fee.

 

Protecting your Intellectual Property Rights

SMEs have a number of legal recourses to protect their IPR. In addition to actions taken against those who misuse IPR, anyone can file an objection to a trade mark certificate within five years of the publication of that certificate’s registration in the industry gazette. Lao PDR’s Law on Intellectual Property sets out six means of conflict resolution in Article 123:

  1. Reconciliation between the two parties
  2. Mediation
  3. Administrative settlements
  4. A settlement through the Economic Dispute Resolution Committee
  5. Action in the People’s Courts
  6. International dispute settlement

Mediation

IPR disputes in Laos can be slow, costly, and unpredictable. Endemic corruption, combined with an inefficient bureaucracy, means that SMEs should resort to civil enforcement only once they have exhausted other means. Often a quick and cost-effective solution to IPR issues is mediation with infringers in accordance with tort law. SMEs are encouraged to seek mediation as a first option.

Civil enforcement

IPR owners may turn to the People’s Court at the district or provincial level to enforce their rights by means of civil litigation. Available remedies include:

  • A court order to the effect that the infringer ceases with the infringing acts.
  • A suspension of customs clearance goods.
  • A judgement of infringement.
  • Damages – compensation for infringement and legal fees.
  • The destruction/disposal of infringing goods.
  • The disposal of tools, etc., used to create/commit the infringement.

The District/Provincial Court’s decision may be appealed to the Appeal Courts and the Supreme People’s Court. Overseas court orders must be recognised and approved by the Laos courts to be effective and executable in Laos. In addition, IPR owners may request the People’s Court to order prompt and effective provision measures (injunction orders) to:

  • Prevent an infringement from occurring.
  • Prevent the entry into the channels of commerce of goods, including imported goods immediately after customs clearance.
  • Preserve evidence in regard to the alleged infringement.

Moreover, an IPR owner may apply for ex parte provisional measures with the People’s Court where any delay is likely to cause irreparable harm to the IPR owner or where there is a demonstrable risk of evidence being destroyed.

Criminal prosecution

Criminal prosecution may be initiated through the Lao police force (economic division), who refer the case to a public prosecutor for criminal court action. The competent court is the People’s Courts at the provincial level (and the Appeal Court and the Supreme People’s Court for appeals). Criminal actions are available for the protection of copyright, patents, industrial designs, geographical indications trade secrets and trade marks. Possible penalties include damages, imprisonment for three months up to two years, and fines of between LAK 500,000 and 10,000,000, equivalent to approximately EUR 50 and EUR 1,000. The infringer may also be subject to additional measures, including suspension, withdrawal of business licenses and seizure of infringing goods and equipment used to commit the infringement.

 

Additional Information

For more information on Laos IPR and how to best product your IPR against infringement, check out the guides available at our Helpdesk or contact one of our experts for free, tailored advice.

Relevant links

Relevant contacts

  • 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

[1] For more information, see the WIPO website at: http://www.wipo.int/wipolex/en/profile.jsp?code=LA#a6

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