With many years dealing with trademark matters in Laos, D&N International has strong experiences in prosecusion of trademark applications, maintainance of trademark regisrations and enforcement of trademark rights in Laos. Our practice covers the following areas:
- Conducting searches in order to assess availability of a desired mark
- Giving opinion on the registrability and use of trademarks
- Filing and pursuit of trademark applications
- Reviewing all watch notices or notices of infringing activity and make recommendations
- Renewal of Trademark Registrations
- Recordal of change of name and/or address
- Recordal of assignment/license agreement
- Representation in Opposition proceedings
- Representation in Non-Use Cancellation proceedings
- Giving post-registration advices
- Trademark Portfolio Management
Conducting searches in order to assess availability of a desired mark
A trademark search prior to filing a trademark application is optional. We are able to conduct unofficial searches with the TM Office and the search report along with our professional opinion regarding the availability of the mark will be rendered within 7-10 working days.
To enable us to proceed with a trademark search, the following information is necessary:
(i) A clear specimen of the mark ; and
(ii) The list of goods/services and the corresponding international class, if known.
Filing and pursuit of trademark applications
Laos adopts and follows the International Classification of Goods and Services under the Nice Agreement. Multi-class applications and class heading of goods/services are not acceptable in Cambodia i.e. an application can be filed for one class of goods or services only and the goods specification must include specific items of the designated goods/services.
Information and documents are required at the time of filing
(i) Full name and address of the Applicant;
(ii) A phonetic transcription/transliteration and identification of the language used should be indicated if there are any elements of the trademark with wording other than in Roman characters;
(iii) A detailed specification of goods or services and its corresponding international class, if known;
(iv) An orginal Power of Attorney, which is signed by the Applicant and duly notarized by a Notary Public. No legalization is required;
(v) Fifteen (15) clear print/specimen of the mark of a size, which is not in excess of 80x80mm and less than 15x15mm.
The following documents can be submitted later
(i) A certified true copy of the basic application if a convention priority is claimed and its sworn Vietnamese translation (can be submitted within 01 month from the filing date).
Renewal of Trademark Registrations
The registration of a trademark is valid for a period of ten years commencing from the filing date of the application and can be renewed for subsequent ten-year term, ad infinitum. Late renewal is allowable within a 6 month period after the expiry date of the registration, subject to payment for late renewal. As of March 7, 2002, to renew a multi-class registration, it is necessary to file a separate renewal application for each class.
For filing a renewal application, the following documents are required:
(i) A orginal Power of Attorney, which is executed by the owner and duly certified by a notary public. Legalization is not required;
(ii) A copy of the certificate of trademark registration;
(iii) 15 prints/specimens of the registered mark of a size, which is not in excess of 80x80mm and less than 15x15mm.
Recordal of change of name and/or address
As stipulated, any changes which likely affect the Trademark Registration, such as change of name and/or address of the trademark owner should be recorded with the TM Office as soon as practicable.
For recordal of change of name and/or address of the trademark ownver, the following documents are required :
(i) An orginal Power of Attorney, which is signed by the Owner and duly notarized;
(ii) A notarized Declaration of change of name and/or address by the Owner, or certified true copy of the legal document evidencing the change of name and/or address;
(iii) An original certificate of Trademark Registration.
Recordal of assignment/license agreement
If there has any change regarding the owner of a Trademark Registration such as assignment, merger ect. or if a registered mark is licensed to any third parties, such an assignment/license must be recorded with the TM Office as soon as practicable to be legally effective and enforceable in Laos.
For recordal of a trademark assignment agreement/licence agreement, the following documents are required :
(i) An orginal Power of Attorney, which is signed by the Assignee or the Assignor and duly notarized;
(ii) An original Assignment Agreement/licence agreement, which is signed by both Assignor and Assignee and duly notarized;
(iii) Original certificate of Trademark Registration.
Representation in Opposition proceedings
Laotian trademark system is based on a first-to-file principle. The current trademark law of Laos is silent regarding opposition proceeding and trademark applications are not published for opposition purpose. However, in practice, opposition against a prior-filed mark can be performed on case-by-case basis upon provision of a sufficient evidence of worldwide registration and use of the latter mark and must be filed with the TM Office before the issuance of the trademark registration certificate.
For filing an opposition against a pending application, the following documents are required :
- An orginal Power of Attorney, which is signed by the Applicant and duly notarized;
- Documentary evidence in support of the opposition (if any).
Representation in Non-Use Cancellation proceedings
A registered mark may be cancelled, upon request of a third party on the ground that the mark is neither used by the owner, nor transferred to others for use within consecutive five (5) years prior to the point one month prior to the filing date of the request, without indicating the special circumstances preventing the use of the mark.
For filing a non-use cancellation, the following documents are required:
(i) An orginal Power of Attorney, which is signed by the Applicant and duly notarized; and
(i) Documentary evidence in support of the cancellation action (if any).
Trademark Portfolio Management
Our scope of trademark porfolio services cover the following works :
- Providing all prosecution services necessary for trademarks, including filing applications, oppositions, cancellations, responding to office actions, recording assignments and licenses etc;
- Docketing all deadlines on a computerized database providing both short and long term maintenace dockets;
- Conducting, analyzing and providing advice and opinions on availability and registrability of proposed marks;
- Providing counseling to clients regarding use required, proof of use or affidavit;
- Reviewing all watch notices or notices of infringing activity and make recommendations;
- Conducting investigations regarding potentially infringing marks and preparing and responding to cease-and-desist letters relating to trademark infringement matters;
- Providing comparative law expertise regarding registrability questions to assist clienst in selecting marks based on availability, ease of registration, enforceability;
- Maintaining and providing clients, as requested, with a status chart on a regular basis reflecting current status of each mark;
- Providing presentations to clients, as requested, regarding trademark laws and procedures.