Geographical Indication

A Geographical Indication (GI) is a distinctive sign used to identify a product as originating in the territory of a particular country, region, or locality where its quality, reputation, or other characteristics are linked to its geographical origin. GIs differ from trade marks in the sense that GIs may be used by all producers or traders whose products originate from that place and which share a particular quality, reputation or other characteristics, while trade marks may only be used by the trade mark owner or with the owner’s consent. “Champagne” from France, “Parmigiano-Reggiano” from Italy, “Scotch Whisky” from Scotland and “Feta cheese” from Greece are all examples of European GIs. 

The general rule is that a GI is a collective right of use and does not belong to one individual or company. This rule, however, has exceptions whereby a single person/legal entity can apply for a GI. This is only applicable in exceptional cases, according to the regulations governing GIs. GIs protect both the producers’ interests and the consumers’ interests. 

What you need to know. 

In Laos, protection of GIs is devolved to inter-agency cooperation among the following key organisations: (i) the Ministry of Science and Technology (MOST), which includes the Department of Intellectual Property (DIP), competent for registration and protection, and the Department for Standardisation and Metrology (DoSM), competent for product standards; and (ii) the Ministry of Agriculture and Forestry (MAF). 

Geographical Indication recognition is undergoing rapid expansion in Laos with 19 potential indications identified at the national level. Two GI products have been selected as priority pilot projects for GI registration: Bolaven plateau coffee from Champasak province and small chicken rice (special sticky rice) from Xiengkhouang and Huaphanh provinces. 

The Geographical Indication symbol is used as a sign to indicate goods as originating in the territory of a country or region or locality in that territory, where a given quality and reputation, or other characteristics of the goods are essentially attributable to the goods’ geographical origin. To date, GI protection is mainly seen as a means to contribute to the local development of agriculture and within ASEAN. 

Regarding the timeframe for the whole process of the registration, for foreign GIs, the duration of the process may not be the same if the GI has been subject to a previous registration in a country with which Laos has signed a Memorandum of Understanding (MOU) in order to accelerate the examination process. To date, Laos has signed MOUs with the following four countries: (i) Japan; (ii) Cambodia; (iii) Vietnam; and (iv) Singapore. According to the government’s plan, this list should grow bigger. Accordingly, if an applicant has proof that its GI has been registered in one of the above countries, the issuance of a certificate may progress much quicker. 

Officials have stated that in this case, registration may take between 1 to 3 months before the GI certificate is issued. Otherwise, the timeframe for registering a GI will not differ from the registration of a local GI, that is, around 12 months. These timeframes may be subject to change in the future, as the registration process remains untested. 

The authority in charge of the registration of GIs in Laos is the Department of Intellectual Property (DIP). Accordingly, GI applications should be filed with the DIP. 

Duration of Protection 

There is no specific duration of protection of a GI. Therefore, the GI benefits from an unlimited term of protection. The protection starts as from the filing date, which is when the required documents are approved, and the service fees (along with official fees) are paid. 

Industrial Design

An industrial design certificate protects a product’s special appearance (i.e., the combination of applied art and applied science of product). In order to obtain an industrial design certificate, the design must meet the following requirements: (1) it must be new in the sense that it has not been disclosed to the public by publication, display, or some other means in Laos or internationally prior to the filing date, or priority date (if priority is claimed); and (2) it must be ornamental. An industrial design is considered ornamental if “it gives a special appearance to the object to which the design is applied or in which it is embodied” (Article 15.2 of the IP Law). 

In Laos, industrial designs are a type of patent, and therefore, their protection follows a similar principle. Laos applies the first to-file principle, meaning that priority is determined by whoever files the industrial design application first, or if priority is claimed, the earliest priority date. An application may contain a declaration claiming priority based on one or more earlier national, regional or international applications filed by the applicant, either in Laos or in another country, which is a party to the Paris Convention (or another international treaty to which Laos is a signatory). Therefore, applications from Convention countries will be granted the same priority date in Laos. In the case of such international applications, the relevant Lao authority only conducts a formal examination of the patent application. While the authority does not make a substantive examination, it recognises and accepts search and examination reports from other IP offices around the world. 

The time frame from the filing to granting date of a design application is approximately 6 to 12 months. 

Once an application is made to Ministry of Science and Technology (MOST), MOST will conduct a formality examination to ensure that the application is complete and meets the requirements. If the application is incomplete, MOST will notify the applicant, who will then have 60 days from the date of the notification to complete the application. Applications for industrial designs are not examined as to substance.  

Duration of Protection 

An industrial design shall expire five years after the filing date of the application and may be renewed for two continuous periods, with each period taking five years and where the application for renewal shall apply during 90 days before the expiry date [Article 35]. In order to maintain an industrial design registration, an annual fee, pursuant to the IP Law, must be paid in advance by the rights-holder. The IP Law, however, does not specify the annual fees. The maintenance fees and registration fees are expected to be established by guiding decrees/regulations following the promulgation of the IP Law. 

In order to maintain the industrial design, an annual official fee must be paid by the owner of the design from the 2nd year onward until the industrial design certificate expires.

Patents and Petty Patents

Patents are the set of exclusive rights granted to inventors or their assignees to exploit an invention for a limited period of time. Patenting an invention publicly discloses information concerning it but also gives the patent holder the right to protect it. The IP Law defines patents as the “official certificate from the state Organisation issued to protect inventions that are new, involve an inventive step, and are capable of industrial application” (Article 3.4 of the IP Law). 

An invention is considered new if it has not existed and has not been disclosed to the public by publication or by use (or by any other means) in Laos or any other country prior to the filing date of the patent application, or prior to the priority date (if priority is claimed). An invention has an inventive step when the invention is not obvious to a person having ordinary knowledge in the invention’s field of technology. An invention is considered industrially applicable if it has use in an industry. 

The IP Law excludes certain types of inventions from patent protection, including: 

• Discoveries, scientific theories, and mathematical methods.
  • Schemes, rules, or methods for doing business, performing mentalacts or playing games.
  • Methods for the treatment of the human or animal body.
  • Inventions contrary to public order or national cultural morality 

Petty patents are the official certificates issued to protect utility innovations. The IP Law defines utility innovations as “new innovative work[s] derived through technical improvements, which involve simpler [inventive] steps than with inventions” (Article 3.7 of the IP Law). In order to receive a petty patent, the utility innovation must be new in the sense that it has not been previously known or used in Laos within one year prior to the date of the application or the priority date (if priority is claimed). The requirement as to the inventive step means that the utility innovation must involve a new technical improvement, but the level of the inventive step may be simpler than for patents. Finally, the innovative work must be industrially applicable, having the same definition as for patents set out above. 

What you need to know 

Laos applies the first-to-file principle, meaning that priority is determined by whoever files the patent or petty patent application first, or if priority is claimed, the earliest priority date. An application may contain a declaration claiming priority based on one or more earlier national, regional, or international applications filed by the applicant, either in Laos or in another country, which is a party to the Paris Convention (or another international treaty to which Laos is a signatory). Therefore, applications from convention countries will be granted the same priority date in Laos. In the case of such international applications, the relevant Lao authority only conducts a formal examination of the patent application. While the authority does not conduct a substantive examination, it recognises and accepts search and examination reports from other IP offices around the world. 

The time from the filing date to the granting date is approximately 4 to 5 years (as for patents) and two to three years (as for petty patents). Owners of petty patents, like the ones of ordinary patents, will have exclusive rights to exploit their inventions and grant licenses to others. 

Once the Ministry of Science and Technology (MOST) receives an application for a patent, petty patent, or industrial design, MOST will conduct a formal examination to ensure that the application is complete and meets the requirements. If the application is incomplete, MOST will notify the applicant, who will then have 60 days from the date of the notification to complete the application. 

After the formality examination, MOST will conduct a substantive examination of the application to determine whether it meets the requirements for patentability or for obtaining a patent or petty patent. The substantive examination for patents and petty patents is based on a search of existing technical knowledge. In the case where the application had previously been subject to a search or examination by another authority (in another country), the applicant can submit a copy of that report and request that it be accepted in lieu of conducting a search in Laos. If there are no previous examination reports (or the applicant is otherwise unable to provide such report), the applicant must request MOST to examine the application as to its substance. Notably, MOST is required by law to undertake this examination within 32 months for an invention (patent) and 12 months for a utility innovation (petty patent) from the filing date of the application or the priority date (if priority is claimed). All of MOST’s expenses to examine the invention or utility innovation are charged to the applicant. 

After consideration and examination of the registration for a patent, petty patent, or industrial design application, if it is considered to meet the requirements provided by the IP Law, MOST will issue a patent, petty patent, or industrial design certificate. 

Duration of Protection 

A patent lasts for 20 years after the filing date of the application. A petty patent lasts 10 years from the filing date of the application. However, in order to maintain the patent, an annual fee must be paid by the owner of the invention from the 5th year onward until the patent expires.

Trademark

A trademark is a sign, such as a word, device, brand, shape, colour, sound, or a combination of these elements, which is capable of being graphically represented and used by a person in the course of trade to distinguish his or her goods or services from another person’s. The IP Law provides trademark owners with the right to prevent others from using identical or confusingly similar marks for their goods and services. 

What you need to know 

Laos became a member of the Madrid Protocol in December 2015, and the Protocol entered into force in March 2016. The Madrid Protocol is administered by the World Intellectual Property Organisation (WIPO). It provides a cost-effective and efficient means for trademark owners to obtain protection for their marks in multiple countries through filing one application, called an “international application,” at a single Trade mark Office, in one language, and with one set of fees. Currently, the Ministerial Regulation concerning the implementation of the Madrid Protocol is not yet available. 

Trade mark protection may be granted for any sign or combination of signs capable of distinguishing the goods or services of one undertaking from those of other undertakings. That is, the sign, or combination of signs, must have distinctive character. 

Signs eligible for protection include: 

• Words, including personal names, letters, numerals, figurative elements, and combinations ofcolors, as well as any combination of such signs;
  • Signs not identical to a previously registered mark for the same goods or services; 
  • Signs not similar to a previously registered mark for the same, similar, or related goods and services, where the use of the later mark would cause confusion as to the source of the goods or services or create a false impression that they are connected or associated with another party; and 
  • Signs not having any of the prohibited characteristics under the IP Law (prohibited characteristics include, inter alia, nondistinctive marks, imitative or counterfeit marks, marks confusingly similar to already registered marks, marks contrary to the national security, social order, rules, laws, culture, and tradition) 

Laos applies the first-to-file system for trademarks. Moreover, the same priority requirements apply to trademark applications. If the applicant wishes to claim its priority rights from a foreign application, the national application must be filed with Ministry of Science and Technology  (MOST) within 6 months after the filing date of the foreign application. Furthermore, the same registration procedure as for industrial designs set out above applies to trademark applications. Therefore, MOST conducts a formal examination of the trademark application but does not examine it as to its substance. Trademark applicants do not have to show prior use of the trademark. Once registered, however, the trademark must be used in Laos for the registration to be maintained. Rights in a trademark can be lost through the action or inaction of the trademark’s owner. Trademark rights can also be lost unintentionally by SMEs if a continuous period of non-use exceeds 5 years. The period of non–use required to show abandonment of a mark in Laos is five years. 

The requirements for trade mark registrations are prescribed by the Decision of the Minister of Science and Technology on the Implementation of Law on Intellectual Property concerning Trademarks and Trade Names was issued in September 2012. 

Duration of Protection
Trademark protection lasts for ten years from the filing date, and at the end of the initial ten-year period, the mark can be further renewed for ten years each time. A renewal fee applies, which must be paid in advance for ten years.