Intellectual Property Practice

• Patents, trademarks, designs, copyrights, integrated circuits, Geographical indications, plant varieties, etc,...
• Licensing and technology transfer.
• Intellectual property enforcement and litigation
• Franchising and distribution

Our Intellectual Property Practice deals with all aspects of intellectual property rights in Laos . Our services include advice on intellectual property laws, filing and prosecution of applications for trademarks, designs, patents, copyrights, integrated circuits, Geographical indications, plant varieties, etc,... conducting of availability searches, assignments and renewals, taking procedures for oppositions and cancellations, negotiation and drafting of contracts on licensing, technology transfer, franchising and distribution, and taking enforcement and anti-counterfeit actions. We also assist clients in IPR enforcement by providing monitoring and watching service in respect of infringements and counterfeits of clients’ IPR.

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Legal Practice

• Foreign Investment.
• Labour and Employment.
• Corporate and commercial work.
• Administrative procedures.
• Taxation, banking and finance.
• Litigation and arbitration proceedings.
• Property and construction.

Our Legal Practice is involved in all aspects of investment and commercial laws in Laos . We provide a full range of legal services to clients from multi-national corporations to small & medium sized companies and individuals. We assist clients in establishing their business presence in Laos , and help them during their operations. We offer full services including legal advice on all areas of laws, review and drafting of legal documents, attending to administrative procedures with state authorities, attending to negotiations with clients, and representing clients in litigation & arbitration proceedings for resolving disputes.

Our lawyers are members of Lao Bar Association.

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Investment and Management Consulting Practice

• Foreign Investment and project development.
• Development of marketing and distribution strategies.
• Setting up business entities.
• Feasibility studies and due diligence reports.
• Venture capital, project finance.
• Market surveys, research and analyses.
• Management and corporate administration services.
• Economic and Financial assistance.
• Governance and Institutional development.
• Urban, Rural and Community Development.

Our consultants in the Consulting Practice assist public and private clients and investors to locate investment opportunities, and to develop and implement their projects in Laos . We help clients from project identification, feasibility, start-up to project completion. The clients can be certain that the solutions we provide are tailored to each individual project based on our clear understanding of our client’s needs

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Brief Lao IP system

Legislations

Lao PDR becomes a member of the World Intellectual Property Organization (WIPO) since January 17, 1995 and acceded to the Paris Convention since October 8, 1998 and is member of Patent Cooperation Treaty (PCT) on 14 June 2006, also seeking to adhere to the other conventions and international protocols regarding the intellectual property rights in particular the Bern Convention for the protection of Copyright, etc.

The Decree of the Prime Minister on Trademarks has been enacted in 1995 as well as the Regulation on Registration of Trademarks, up to now more than 17,000 applications for trademark registration have been granted in the Lao People’s Democratic Republic (Lao PDR) in which 99% of applications are from overseas.

In 2002 the Decree on Patent, Petty Patent and Industrial Designs has been also promulgated as well as the relevant Regulations for implementation. It started receiving the application for protection of Patent, Petty Patent and Industrial Designs in 2004.

Actually the comprehensive laws on intellectual property has been adopted by the National Assembly at the end of 2007. The main context of said laws referred to the model law of WIPO, and with regard to the enforcement of rights in particular the civil remedies as well as the criminal sanctions, the procedure is referred to the civil law and criminal remedy of the Lao PDR.

Civil Remedies

“Individual or legal entity shall considered as an unlawful use of intellectual property of other person, if he or she is not authorized by the owner”.

“During the civil proceeding, the court shall have the authority to seize such acts proven infringement or create an effective deterrent to further infringement including to stop production or importation of products or goods, which are infringed intellectual property”.

“The owner of intellectual property shall be entitled to payment, by the infringer, of damages for the prejudice suffered as a consequence of the act of infringement, as well as the payment of expenses caused by the infringement, including legal costs. The amount of damages shall be fixed in keeping with the relevant provisions of the Civil Code, taking into account the importance of the material and moral prejudice suffered by the owner of the right, as well as the importance of the infringer’s profits attributable to the infringement. Where the infringer did not know or had no reasonable reason to know that he was engaged in infringing activity, the court may limit damages to the profit of the infringer attributable to the infringement and/or to pre-established damages”.

“Where infringing products or goods, the court shall have the authority to order the destruction or other reasonable disposition of those products or goods and their packaging outside the channels of commerce in such a manner as to avoid harm to the right holder, unless the owner of the right requests otherwise. This provision shall not be applicable to products or goods and their packaging which were acquired by a third party in good faith” to commit or continue to commit acts of infringement, the court shall, whenever and to the extent that it is reasonable, order their destruction or other reasonable.

Criminal Sanctions

“In keeping with the relevant provisions of the Penal Code and the Code on Criminal Procedure of Lao PDR, any infringement of a right protected under this Law, if committed willfully or by gross negligence and for profit-making purposes, shall be paid for a fine or punished by imprisonment for a period of between six months and two years, or by both. The amount of the fine shall be fixed by the court, taking into particular account the defendant’s profits attributable to the infringement”.

The court shall have the authority to increase up to double the upper limit of the penalties specified above, where the defendant has been convicted for a new act of infringement within five years of a previous conviction for an infringement”.
Institutional Organization

Actually the activity of intellectual property is under the responsibility of the Department of Intellectual Property Standardization and Metrology (DIPSM) since 1993 under the National Science and Technology Agency (NSTA) of the Prime Minister’s Office. The main responsibility of DIPSM is to advice the government through NSTA on issues in the field of Intellectual Property, Quality, Standards, Testing and Metrology (IQSTM) management in the whole country.

In term of legislation on intellectual property DIPSM under NSTA is a central management agency, and its functions are to prepare plans, laws, rules and regulations on IP and submit them to the higher authorities for approval; organize the supervision and centralize the implementation of the approved laws, rules and regulations.

DIPSM within NSTA under the Prime Minister’s Office is the focal point responsible for the IP matters, but coordination with all related agencies of different Ministries is required especially for the implementation of the regulations, decrees and laws.

Enforcement

In the past with regard to the enforcement of intellectual property rights the government provides both administrative and judicial procedures that permit the effective action against infringement of intellectual property rights.

For the dispute settlement by administrative procedure the petition or complaint shall be lodged to DIPSM, which is the focal point to contact with relevant authorities such as Department of Trade, Department of Customs, Economic Police and other to hear and consider data or information provided by parties concerned and the decision of a case will be based on the agreement of parties in writing and stated the reasons on which the decisions are based; and made available to the defendant for an appeal to the court if the case can not be agreed among them.

In term of trademarks the most infringement cases have been settled by administrative procedure or by the Department of Intellectual Property Standardization and Metrology (DIPSM) just only one case has been resolved by the Economic Arbitration Board under the Ministry of Justice and there is no any complaint has been appealed the court yet.

The basic problem is that Lao judges are trained primarily to deal with criminal, family and civil tort matters, and have little experience or interest in handling commercial disputes, especially in IP infringement. As a result, the courts often persuade the commercial disputants to seek other means of resolving their disputes, and if one party insists on court proceedings, then the court will often attempt to mediate or arbitrate the dispute instead of issuing judicial decisions.

The Lao court system is comprised of three levels of courts: District courts, Provincial courts and the Supreme court. Recently, Lao PDR has separated commercial court, thus commercial disputes are heard by judges at the Commercial court. Judgments of the Commercial courts can be appealed to the provincial courts and then to the Supreme court. At the discretion of the National Assembly, certain important decisions of the Supreme court can be appealed to the National Assembly.

For the enforcement of intellectual property rights at the border in case of the importation of trademark counterfeit goods, a complaint should be lodged also to DIPSM, which is going to communicate with authorities concerned to deal with the prompt investigation. After consideration DIPSM shall inform the complainer within a reasonable period whether the petition was accepted and, if so, the period for which the custom administration will take action for suspension or release of such goods into free circulation. Of course the defendant has the right to show necessary evidences to DIPSM to be reconsidered or to appeal to the Economic Arbitration Board or court for resolution settlement.

Up to present enforcement on copyright and related rights has been done, in particular an association of Laotian composers has been established under the auspice of Ministry of Culture and Information, and it role is to protect the legitimate interest of composers, especially how their works could be protected from any act of infringement. For example in term of phonogram such product or cassette before releasing to market shall be fixed by special stamp to mark a genuine product. If it is found that any product has been proven infringement, due to relevant regulation issued by the Ministry of Culture the infringer shall be subjected to pay for a fine more that 300,000 Kips (30 US$) per cassette, and if it’s not agreeable the case shall be appealed to the court for civil remedy. This procedure may be changed with the new IP Laws

LAOS IP System Structure [Download pdf file]

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Trade Mark Formality

Currently, we are using the International Classification System to cope with the WTO proposal and TRIPs Agreement. Our law requires that all goods or services for which protection is sought must be specifically itemized. This means we would always require very clear and specific description of each class. The broad description of goods might not be accepted.

The requirements for filing the applications on behalf of clients are:

 - Power of Attorney. This Power of Attorney requires notarization by a notary public.  The Power of Attorney must be filed together with the application. A notarized power of attorney can be used for several mark applications of the same proprietor.
-  Full name, address and nationality of the applicant.
-  Precise list of goods or services applied for.
-  Twelve (12) specimens of the mark to be attached to the application.

Recordal of Registered User and Assignment

According to the Recordal of the registered user status, only registered marks shall be granted Recordal, while validation of the non-registered marks’ users would be covered under private agreement. Consequently, the Trademark Office will not register any record of use for ones who utilize the non-registered marks even with the owner’s consent.

The required documents for Recordal are the following:
- A Registered User Agreement contains provision that owner would control quality of patent designated goods.
- Specific goods from patent designated ones owners granting such right to Exclusive or non-exclusive right of user.
- Original Certificate of Trademark Registration.
- A notarized Power of Attorney executed by the user.
- User’s identification documentation.

In this regard, the above Power of Attorney granted to a Lao agent that your Notary Public has notified validity of the document and its juristic status is enough.

Marks assignment must be proved in written contract. The parties may obtain Recordal of Assignment either during or after having been granted registration. In this regard, the required documents are:
- An Assignment Agreement.
- Original Certificate of Trademark Registration (if any).
- A notarized Power of Attorney executed by assignee.
- A notarized Power of Attorney executed by assignor.
- The parties’ identification documentation.

The Power of Attorney 3.and 4.granted to agents that your Notary Public has notified validity of the document and its juristic status are the proof.

Searching

Should there be a need for the proprietors to ensure their mark registration, the intensive search is recommended. The elaborate details of the mark have been kept in various forms, for instance: Gazette publication, as well as computerized datum in terms of text and graphic. The search may be conducted in the Department of Intellectual Property (DIP) of Lao PDR on an official fee payment.

Priority Claims

According to the priority claim, please provide us with the requested documents that must be submitted within thirty (30) days after the filing date such as the following:
- Certified true copy of the first application granted by the Intellectual Property Department.
- An official publication by the Intellectual Property Department to prove the trademark is your first application ever. and
- An official notification granted by the chief of Patent and Trademark Office or any higher personnel indicating that your country granted the same rights to Lao applicants and filed applications in your country.

All the above documents must be officially submitted by six (6) months after the first filing date in your country.

Time Frame

In case no complication emerges, especially for mark applications with proof of use, the Registrar shall grant registration from 6-7 months Application for Recordal of Registered User with required supplementary may be filed immediately after the registration; it takes approximately two (2) months for the Registrar to examine prior to proclaiming the Registered User.

Proof of Reputation (the helpful selective measure)

Previously, we learned that a number of conflict in terms of similar or identical marks are quite normal in our country; and the countermeasure is to appeal to the Trademark Committee accordingly. More over, the unexpected conflict such as the Registrar’s objection or opposition from the third party may occur any time during the Registrar’s stage.

We always expect that the clients will discuss with us in advance the marks’ presentation and their distinctiveness together with the patent designated goods or services as we would advise them the necessary steps or supporting documents. The method will ease our filing and help minimize any conflict to the Registrar’s opinion. This measure is also to minimize the process and expenses.

To ease the unexpected plight, evidence of the client’s and the marks’ reputation is necessary. It would be helpful if you are able to send us copies of the marks’ registration certificate or application, advertising material, or invoice.

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Patent Application Filing

1. Required documents:
- Application
- Notarized Power of Attorney
- Deed of Substitution ( if necessary)
- Description/ Specification
- Claim
- Drawings
- Abstract
- Search report by international or foreign authority ( as attachment ) if available

2. Language:
Native language of the applicant or preferably English or French at the time of the application then the Lao version should be submitted within 90 days from the filing date.

3. Time frame:
Provision of late documents within 90 days from the filing date
Claiming priority within 12 months from the 1st filing date with international or foreign authority and 30 months for PCT
Granting Patent within 50 months from the filing date, Petty Patent within 12 months, Industrial Design within 6 months.

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