[1] protection mechanisms
Laos has adopted the “first-to-file” rule, i.e. where two or more applications are filed by many different parties for protection of the same trademark may only be granted to the valid application with the earliest priority or filing date among applications. However, the “first-to-file” rule shall not apply to cases of well-known trademark under the Paris Convention or those which have been widely used and recognized. In such cases, the priority will be given to the person who can prove that his trademark has been well-known or been widely used and recognized, without subject to the “first-to-file” rule. This exception means that it provides protection of well-known trademark regardless of whether it is registered.
As a member of Paris Covention and WTO Agreement, an application for registration of trademark filed by citizens of any contracting members can claim priority rights to file their applications within six [6] months from the earliest filing date of Paris Convention or the WTO application in accordance with Lao IP Law.
To claim priority rights for trademark application in Laos, it is required a triple identity including trademark, applicant and class identities between application in Laos and priority application. However, it brings the special attention from this triple identity is that it does not require the identity of goods between the application in Laos and the priority application, just identity of class. It means that the goods/services for which the Lao application is claimed are in the same class with those of the priority application regardless of a fact that the scope of goods in the Lao application can be wider than those registered in the priority application.
A multi-class application is not allowed in Laos. It means that each application is applied for one trademark in one class only with no limitation to the number of goods items at a basic fee. The goods /services indicated in the Class Heading are acceptable in Laos. However, to protect effectively their trademark rights in case of dispute, infringement, passing off before the court caused by the ambiguous scope of protection of the registered mark, it is advisable to classify the goods/services in accordance with the Alphabet list of International Nice Classification 10th edition.
[2] letter of consent system
There are not any statutory provisions under the Laos Trademark Law & Regulation system on whether or not the Consent System is acceptable. However, in practice, the Consent System is till accepted allowing the co-existence of two similar marks in case the confusion is not likely to be happened. It means that if the two trademarks in the question are very similar (nearly identical) so that consumers always believe they are offered from the same source (same trademark owner), the letter of consent shall not be accepted. The letter of consent (LOC) is accepted just only in case trademarks are considered rather similar, not closely identical, and the goods for which they both are applied are not identical.
[3] cancellation rule
Certificate of trademark registration in Laos can be declared to be cancelled on the request of a third party in the following circumstances:
A trademark registration may be cancelled upon request of a third party on the grounds that the registered mark has not been used by the owner or has not been transferred to others for use within the 5 consecutive year period.
The trademark shall be cancelled on well-known ground if it is convinced that the registered mark is similar or identical to a well known mark owned by third party.
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| PRACTICE | [+] |
| OUTSTANDING ISSUES | [+] |
