Clarification of trademark registration process

Introduction
Decision 2822/MOST

Introduction

Trademark owners, applicants and others seeking to utilise Laos's burgeoning legal framework concerning trademark protection have been given much-needed clarity with updated guidance from the Ministry of Science and Technology.

The Amended Law on Intellectual Property (38/NA), published in 2018, was an all-encompassing legislative change to Laos's IP rights regime. However, many of its provisions relating to trademarks had not taken effect and necessitated further guidance as to how they would be implemented in practice.

In February 2020 Decision 2822/MOST came into effect to elucidate the complete scope of the 2018 law. This article highlights some of the decision's notable elements for applicants and trademark owners in Laos.

Decision 2822/MOST

Four main stages of registration process
Decision 2822/MOST stipulates that, once applied for, a mark will undergo the following stages prior to registration:

• Formalities are examined to ensure that the minimum application requirements are met.
• If the application requirements are met, the mark is published in the Official Gazette of Intellectual Property within 15 days. Third parties may file opposition applications, to which the applicant will have 60 days to respond.
• If no opposition is filed or the opposition is unsuccessful, the Department of Intellectual Property (DIP) proceeds to substantive examination. No specified time for this process has been set out. If the DIP rejects the mark following substantive examination, applicants can respond with supporting documents or further information within 60 days.
• When substantive examination has been passed, the DIP will register and publish the mark in the Official Gazette of Intellectual Property.

Renewals
Under Decision 2822/MOST, the possible deadline at which marks can first be renewed has been shortened. Previously, the renewal process could be commenced a year prior to the end of a mark's term. Renewal can now begin six months prior to a mark's expiry.

Service marks
Following Decision 2822/MOST, marks that distinguish the source or origin of services – so-called 'service marks' – are formally recognised under Laos trademark law.

3D marks and moving pictures
Decision 2822/MOST specifies, for the first time, the exact requirements for registering 3D marks or moving pictures.

Assignments of marks
Decision 2822/MOST mandates that assignments of trademark rights from one entity to another must be registered with the DIP in Laos and published in the Official Gazette of Intellectual Property.

Authorisations to use marks
Authorisations to use marks, such as may be granted through a licence or franchise agreement between two entities, must also be registered with the DIP in order to be legally enforceable in Laos.

Cancellations
A party can ask for a mark to be cancelled within five years of publication in the Official Gazette of Intellectual Property. Once notified by the DIP of a party's filing of a cancellation action, the mark owner has 60 days to respond.

Powers of attorney – validity periods
Trademark owners based abroad wishing to register their marks in Laos must assign a local representative through powers of attorney (PoA). Following Decision 2822/MOST, the PoA's validity period must now be specified. Without a specified validity period, the PoA will be deemed valid for only one transaction.

For further information on this topic please contact Ian Mirandah at Mirandah Asia by telephone (+60 322 788 686) or email (ian.mirandah@gmail.com). The Mirandah Asia website can be accessed at www.mirandah.com.