Under the Law, violations of IP rights may be subject to civil enforcement proceedings, administrative enforcement and customs border measures including seizures of infringing property at point of importation into Lao PDR.
Civil enforcement proceedings may be brought by any interested party through a claim in the Peoples’ Court of Lao PDR. Such actions may also be initiated by federations and associations representing interested parties and by collective management organisations.
Remedies available from civil enforcement proceedings include orders of seizure of goods or suspension of import of goods, damages and expenses, and orders that the infringing goods be destroyed. Provisional measures may also be taken by the Courts in order to prevent an infringement of IP from occurring, to prevent infringing goods from entering the market, and to preserve evidence in regard to alleged infringements.
Under the Law, the Lao PDR Customs Department can provide for the suspension of goods that infringe a trademark, copyright or other IP rights from customs upon entry into Lao PDR. Such enforcement requires a complaint to be filed with the Department of Intellectual Property or the Customs Department, as relevant, informing such of the infringing goods.
Brand owners with business interests in Laos must therefore maintain high levels of vigilance to prevent the infringement of their IP. This necessity is particularly more pronounced for Thai brand owners, as Laos is one of the largest consumers of Thai-branded goods in the world.
Given that brand owners must have an astute understanding of the IP Law in order to uphold their IP rights in Laos, this article will delve into the laws and procedures that brand owners must consider to prevent and manage the infringement of their IP.
A trademark is categorized as industrial property and is defined as “any sign, or combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings,” which is to be used with “goods or services” and used to “distinguish between these goods or services and other goods or services.”
Trademark owners have the right:
- to prevent third parties from using identical or similar signs in the course of trade for goods or services which are identical, similar, or related to those in respect of which the trademark is registered, where such use would result in a likelihood of confusion;
- to prevent the sale or advertisement of goods bearing the mark or the use of the mark in connection with services and the importation or export of goods bearing such a mark; and
- to protect their rights under the laws and regulations against infringements by others, such as by instituting a court action, and the right to compensation from damages caused by others.
The infringement of a trademark, by any measures specified therein, is an explicit criminal offense. Civil remedies are also available in cases of trademark infringement.
As the IP Law is new to the general public and Lao IP officers are relatively inexperienced, in practice, the DIPR rarely recommends criminal and/or civil actions as a means of a legal recourse. Instead, the DIPR recommends use of administrative remedies, which have become the most common measures employed by trademark owners against infringers that are juristic persons and/or persons who allocate counterfeit goods to markets or consumers.
To confuse matters, however, administrative remedies are not defined in the IP Law. The trademark owners may opt for administrative remedies by requesting the Intellectual Property Administrative Authority (Authority) of the DIPR to take action on behalf of the owner to tackle the infringement.
In order to commence the process of obtaining an administrative remedy, trademark owners are required to submit the following documents to the Authority:
- A proposal letter that: (i) states the owner’s trademark and/or goods or services have been infringed on; (ii) describes how the trademark has been infringed on; and (iii) compares the genuine marks and/or goods or services with the infringing ones.
- A power of attorney from the trademark owner to the representative or agent (if any).
- Copies of the certificate of trademark registration of the infringed trademark.
- Photographs that make a comparison between the genuine goods, products, or trademarks and the infringing goods, products, or trademarks.
It is also worth noting that if a retail shop commits infringement by selling imitation products from an unidentified producer, the Authority will appoint a raid committee to plan and conduct the raids.
A raid committee is comprised of officers from the following organizations:
- Department of Intellectual Property: (i) Trademark Office; (ii) Division of IP Dispute Resolution
- Office of Economic Police
- Ministry of Industry and Commerce
- Ministry of Health
- Department of Tax
- Department of Customs
In the case of shops committing infringement that are located in provinces outside of Vientiane, the DIPR will coordinate with the local authorities in that province to tackle the infringement. The local authorities of each Division will be appointed to orchestrate the raid in lieu of the central unit from the list above.