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January 4, 2023

Lao Department of Intellectual Property Issues Country’s First Trademark Cancellation Decision

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World Trademark Review

In decisions dated 29 September 2022, the Lao Department of Intellectual Property (DIP) has cancelled two trademark registrations based on their confusing similarity to earlier marks. An official from the DIP unofficially confirmed that these decisions are the first of their kind in Laos and, as such, constitute a positive step that puts legal provisions into actual practice.

Background

In Laos, cancellation proceedings against a registered mark are not common, as the number of applications in the country is relatively low and thorough substantive examination only began to be carried out in recent years. There was previously no precedent for how cancellation decisions would be handled, despite the Law on Intellectual Property (No. 38/NA of 15 November 2017) allowing a third party to file a petition for the cancellation of a registered mark if it can be proven that the mark should not be granted registration.

The Law on Intellectual Property states that a third party may object to, or request the cancellation of, a trademark registration within five years of its date of publication in the Official Gazette. However, it is difficult to ascertain how to calculate the five-year period if the mark was registered before June 2019, as publication in the Official Gazette was first made available at that time. This could mean that the five-year statutory limitation for trademark cancellation in Laos could start from June 2024, but how this will be applied in practice remains to be seen.

The Case

This case began when Siam Kubota Corporation Co Ltd took action against two marks that looked similar to its own earlier marks (see Figure 1):

Figure 1. Earlier registered marks

Siam Kubota registered its marks in 2009 for goods in Class 12, and has extensively used and protected the marks in Laos.

After reviewing its options, Siam Kubota submitted petitions for the cancellation of the registration of the two similar-looking marks (see Figure 2), which were also registered for goods in Class 12.

Figure 2. Marks that were the subject of the petitions for cancellation

As Siam Kubota has a reputation as a longstanding, well-known seller of tractors throughout the Southeast Asian market, it was suggested that the applicant for the similar-looking marks was trying to associate itself with and imitate Siam Kubota’s marks because the parties’ marks shared essential elements. Additionally, because the products sold under these marks are marketed to consumers who use or purchase tractors, there was a substantial risk and a high likelihood of confusion in the marketplace as to the ownership and source of the goods.

In support of the cancellation petitions, Siam Kubota submitted evidence of actual use to prove that the applicant was acting in bad faith in an attempt to free-ride on the reputation of Siam Kubota’s marks. It also submitted proof of use related to sales, advertisement and promotion of goods for the DIP’s consideration.

Based on the overall representation, design and pronunciation of the marks, as well as the goods they were applied to, the DIP determined that the parties’ marks were confusingly similar. As these similarities were likely to cause confusion among the public, the DIP cancelled the contested registrations.

Comment

As the first of their kind in Laos, these decisions constitute a significant development in cancellation proceedings in the country, and will hopefully build momentum for other types of adversarial proceedings, such as oppositions. More broadly, however, these decisions mark the alignment of the law and practice in this area, which should lead to more effective protection of trademark rights.

 

This article first appeared in WTR Daily, part of World Trademark Review, in December 2022. For further information, please go to www.worldtrademarkreview.com.

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