The cancellation of non-use of a trademark in Laos does not automatically apply to the owner as Lao system has not yet the database system to control upon this regard. Therefore, the owner of the registered trademark should not take any action unless it has been challenged by a third party in relation the trademark.
If the challenge is raised by the third party, he has to clarify the reasons for proposing the cancellation of the target trademark as well as the proof of non-use.
By what way to avoid such cancellation request?
In order to avoid cancellation, the owner of the trademark could use one of the below strategies to prove the use of the said trademark.
Strategy 1: Conducting sales of the products bearing the mark
The trademark owner can send some bulks of product samples to us or nominated person for arrangement of distribution and sale of such products in Laos. The debit notes, receipt obtained from distributors, etc should be kept as the evidence of trademark use in Laos. (It is recommended to distribute to various supermarkets or distributors in Laos rather than just one distributor)
This strategy requires the trademark owner to have the license operating in Laos in order to conduct any kind of sales in the country, unless the owner has the contract agreement with the company that already has the operating License in Laos to conduct the sale on behalf of the trademark owner/company.
Strategy 2: Placing advertisements or cautionary notices on Magazines/Newspapers
This strategy is also considered to be one factor taken into account of the proof of use of trademark. Though it varies from the volume and expenses spent on the products.
Besides, the trademark owner can extend to the advertisement on Radio/TV, which is also quite famous strategy in Laos.
The estimated costs vary from case to case basis and the time period of doing so. The costs have the range from $US100.00-$US10, 000.00
Strategy 3: Placing company’s website and/or website related to the products under the Lao domain name.
The estimated costs vary from case to case basis and the time period of doing so. The costs have the range from $US1000.00-$US5, 000.00
PETITION AGAINST NON-USE OF TRADEMARK IN LAOS
If the trademark owner receives the non-use claim, the general framework would be as followings:
i) Issue 1: a request is filed to cancel the validity of a trademark registration
In this case, the client is required to file the response back to the Lao DIP, otherwise, the cancellation will be made after the deadline made in the Official Notice.
ii) Issue 2: the trademark owner can file the claim against the opposition for the infringement of the trademark in Laos
Duytho could assist the client to handle the above work at the same time or separate time.
PROCEDURE, DOCUMENTS, TIME, ESTIMATED COST FOR THE LEGAL PROCEEDING AGAINST THE INFRINGEMETN IN LAOS
Procedure 1: Once the trademark owner agrees to authorize DUYTHO to pursue the measures against the infringer, DUYTHO then shall draft an Official Letter and claim together will all evidence to support the case.
Procedure 2: DUYTHO shall then submit to the Prime Minister’ Office through Lao Department of IP for consideration and assessment
Procedure 3: The Lao Department of IP shall then hold the meeting with all officials from line ministry concerned such as Ministry of Commerce and Industry, Ministry of Finance (Custom Department), Ministry of Interior (Economic Police Department) and all other line ministries concerned to analyze the case whether the claim is true and all evidences are sufficient and appropriate.
Then the member council will
- Result 1: If it is not sufficient: the consensus of the member council will not approve for the execution of the case, until further evidence is submitted or met the requirements. The Lao Department of IP shall notify for further evidence, etc.
- Result 2: if it is sufficient: The Lao Department of IP shall make the technical comment and highlight the issue and submit to the Minister of Prime Minister’s Office to have the final comment or official approval for the execution of the case.
- Power of Attorney: to authorize for the execution
- Copy of the Original Certificate
- Evidence of the infringement of the suspected goods or counterfeit products.
In our case, we have to conduct the market investigation for finding the source or ascertain the level of infringement as well as to collect the data or information in all markets, retailers, wholesalers, distributors, etc.
There are 17 provinces in Laos, therefore, the trademark owner needs to let us know if the assessment of the infringement can be done in all 17 provinces or in the selective provinces.
If the client already has all of the data baseline, it can be provided to Lao Trademark Agency for checking of the adequacy. If the information supplied by the client is sufficient, no further survey is required.
DOCUMENTS FOR FLING THE LEGAL ACTION AGAINST TRADEMARK INFRINGEMENT IN LAOS
- For petition of cancellation: evidence of the use or trade, importation, exportation or any activities related to the trademark in Laos.
For litigation against the infringement: evidence of infringement.