Guidance

IP enforcement in Laos

To help you protect, manage and enforce your intellectual property (IP) rights in Laos.

• From: Intellectual Property Office
• Published: 2 March 2023

Introduction

This is a summary version of intellectual property (IP) rights enforcement manual for Laos. It is a question-and-answer guide to address commonly asked questions and concerns regarding Intellectual Property (IP) enforcement landscape in Laos. This Q&A is based on the Law on Intellectual Property (Amended) 2017, Penal Code 2017, Civil Procedure Law 2004, and Criminal Procedure Law 2012.

The IP enforcement procedures in the Guide are up to date as of April 2022.

Summary

1. General IP Enforcement Questions and Answers

1.1. What IP protection measures are available in Laos?

IP enforcement options in Laos include:

• civil litigation: IP right holders are entitled to initiate lawsuits with the Court, requesting injunctions, damages, as well as provisional measures (preliminary injunctions and search and seizure orders). Infringements against copyright and trademarks can be referred to the Provincial/Capital People’s Court (where the infringement has occurred or where the asset which forms the basis of the claim is located or where the defendant resides). Cases relating to violations of copyright and trademark are decided by the commercial chamber. The plaintiff (complainant) bears the burden of proof in asserting IP infringements. The plaintiff may also request the Court to order the defendant (offender) to disclose evidence when the plaintiff presented reasonably available evidence sufficient to support its claims and specified evidence under the adverse party’s control

• criminal action: Infringements against intellectual property rights especially counterfeit, deceit, fraud, unfair competition that result in serious damages, the production and sales of counterfeit goods, trademark counterfeiting, or infringement of copyrights or related rights and regulations on industrial property protection shall be punished by criminal measures. Criminal prosecution can be initiated through the Police, who refer the case to a public prosecutor for criminal court action

• administrative enforcement: The parties may approach the IP administration authority for IP dispute resolution. The Department of Intellectual Property (“DIP”) under the Ministry of Industry and Commerce is the main authority responsible for handling administrative IP dispute resolution. Conducting a market survey or individual visits to specific infringers can be helpful to collect evidence to file with the complaint. Complaint may include photos of the infringing goods, and guidelines for distinguishing authentic goods from counterfeit products.

• customs IP border enforcement: Laos allows for Customs recordal. Upon the recordal, the Customs will monitor the goods flowing through the border. The recordal dossier should include relevant registration certificates and documentation to help identify counterfeit/ infringing products, including pictures and general information about the genuine products subject to the recordal and relevant identifications

• alternative dispute resolution: Along with the above dispute resolution mechanisms, the parties can carry out to settle IP infringement cases. Such resolutions are Reconciliation, Mediation, Remedy through Economic Dispute Resolution Committee, and international dispute settlement

• warning letters and settlements: Many IP disputes are resolved by issuing a warning letter. It’s an amicable way to settle the case through negotiation. The objective is to request / demand infringers to stop infringing and educate / warn notify of the legal risks, liabilities, or consequence of infringement to raise awareness. The letter may simply enclose photos of the infringing products to show the infringements. Settlement Agreements and Undertakings can be used to reach a resolution

1.2. Do IP rights have to be registered to be protected?

Industrial property rights including trade marks, patents and industrial designs must be registered at the DIP under Ministry of Industry and Commerce to be protected.

Rights to well-known trademarks are established based on trademark use instead of registration.

Copyright (literary, artistic, literacy works and their compilation) and related rights (performances, phonograms, broadcasts and satellite signals carrying encrypted or unencrypted programs) are established automatically upon creation and fixation of the works, without registration required. However, holders of registration certificates may use the certificates for ownership evidence when it comes to a dispute or violation.

1.3. How effective is the IP enforcement system in Laos?

Laos is a civil law country and a member of some international treaties, including Berne Convention and TRIPS Agreement. Laos is a least developed country as categorized by the UN with a population of around 7.2 million and continued to be a difficult jurisdiction to enforce IP rights, especially copyright and related rights. In addition, IP enforcement authorities in Laos remain relatively inexperienced. IP case law in Laos is very rare too.

IP holders are therefore advised to put maximum pressure on infringers before bringing the case to more assertive enforcement venues.

2. Trade Mark

2.1. What is a trade mark infringement?

Trade mark infringement is constituted when a person or organization, without the trade mark owner’s authorization:

• uses identical or similar signs for goods or services which are identical, similar, or related to those in respect of which the trade mark is registered where such use would result in a likelihood of confusion; or
• sells, advertises, imports, or exports the goods or provides the services bearing the mark

The unauthorized use of a well-known trade mark will constitute infringement regardless of whether the mark has been registered.

2.2. What constitutes ‘counterfeit trade mark goods’?

‘Counterfeit trademark goods’ shall mean any goods, including packaging, bearing an identical trademark to a validly registered mark or which cannot be distinguished in its essential aspects from such a trademark for the same goods or services, without authorization

It shall be a violation to manufacture, sell, offer for sales, advertise, or otherwise market, or to import or export counterfeit trademark goods

3. Copyrights and Related Rights

3.1. What is a copyright infringement?

The infringements against copyright to a work include:

• conducting any acts that the copyright owner has exclusive rights to, without authorization, including:

• making a collection of the work;
• reproducing the work in any manner or form (including distribution of copies of such works);
• translating the work;
• broadcasting the work;
• communicating the works to the public by any wire or wireless diffusion on by rebroadcasting;
• communicating the broadcast of the work to the public by loudspeaker or any other analogous instrument transmitting, by signs, sounds or images;

• making the first disclosure and publication of the work

• misattributing the work.
• distorting, mutilating, or modifying the work, where such actions would be prejudicial to the author’s honour or integrity

3.2 What constitutes pirated copyright goods?

Pirated copyright goods shall mean any goods:

• made without the consent of the right holder or person duly authorized by the right holder in the country of production;
• made directly or indirectly from an article including the use of any instruments for recording cinematographic works in the movie theatres.

It shall be a violation of IP Law to produce pirated copyright goods, or to, sell, offer for sale, advertise, or otherwise market, or to export or import such goods.

4. IP Litigation

4.1. What remedies are available?

The plaintiff may request the People’s Court to order:

• the infringer to desist from an infringement;
• the suspension of Customs procedures;
• the seizure of goods to prevent the entry into the channels of commerce of imported goods that involve the infringement of an intellectual property right, immediately after customs clearance of such goods;
• a declaratory judgment of infringement;
• the infringer to pay damages adequate to compensate;
• the infringer to pay the right holder expenses, which may include appropriate attorney’s fees;
• that goods that have been found to be infringing, be destroyed or otherwise disposed of in such a manner that such goods will not enter channels of commerce;
• that materials and implements the predominant use of which has been in the creation of the infringing goods be disposed of outside the channels of commerce in such a manner as to minimize the risks of further infringements.

In addition, IP holders may file a complaint requesting the People’s Court to order prompt provisional measures to preserve relevant evidence on the alleged infringement and prevent:

• an infringement of any intellectual property right from occurring; and
• the entry into the channels of commerce of goods, including imported goods immediately after customs clearance

4.2. What is the civil procedure?

The plaintiff (complainant) may submit a claim to the People’s Court, stating the damage suffered, nature of dispute and the involved rights and interests.

The defendant has the rights to admit all or part of the plaintiff’s claim. Accordingly, the People’s Court may decide without trial. When the plaintiff withdraws his/her claim in part, the court shall only consider the part not withdrawn.

For commercial cases (including trademark and copyright violations), the proceedings must commence within fifteen days, upon receipt of the claim.

The plaintiff has the rights to appeal the decision of the People’s Court of first instance within 20 days from the date of the decision. Once the timeframe for appeal or objection has ended, the Court of first instance must submit the appeal to the Court of appeal within 20 days. From receipt of the appeal, the Court of appeal will have 60 days to consider it. The Court may summon the litigants to appear in the trial under a similar manner with the Court of first instance and should publish the decision within 30 days from the date of decision.

5. Criminal action

5.1. What are criminal penalties for IP offences?

Any person who violates the intellectual property, counterfeits, lies, deceives, competes improperly the intellectual property, which damages the other person, shall be

• punished by one year to three years of imprisonment or re-education without deprivation of liberty; and
• fined from 5,000,000 LAK (approx. US$436) to 20,000,000 LAK (approx. US$1,743)

5.2. What is the criminal procedure?

The cause of opening an investigation may include a compliant/petition on a criminal offence and proactive discovery of traces of an offence (by the Police or public prosecutor).

In case the individuals or organizations file a petition or complaint to the Police, the Police will have a period of 5 days (in straightforward cases) or 10 days (in complicated cases) to consider it before ordering an investigation, rejecting the complaint, or forwarding it to the relevant authorities for further proceedings. For rejection circumstance, the complainant could appeal the rejection in 7 days and the public prosecutor will have 5 days to consider it.

The Police must investigate, summarize the investigation, and prepare the case file together with exhibits, and shall send those to the public prosecutor within 3 months. They may also request for extending the investigation period up to 12 months in total.

The public prosecutor shall study the investigation result within 15 days since the receipt of the case file and inform the Police whether the result of the investigation is complete or not. In case the result of the investigation has proved to be not yet complete, the public prosecutor shall return the dossier of the case to the Police accompanied by instructions for additional investigation (within the timeframe of 2 months).

The People’s Court will have one month to consider the case since the date it receives such order from the public prosecutor. Upon consideration, the People’s Court may decide to

• send the case file back to the public prosecutor for additional investigation or for expanding the scope of the charges and involved individuals; or
• open a hearing

After the hearing, the People’s Court decision must be printed and given to the defendant within 30 days from the date of judgement announcement. The defendant will have 20 days to appeal the Court’s decision. The court of appeal will open proceedings of the concerned case within 45 days from the date of having received the case file. After deciding on the case, the People’s Court must print and send the decision to the office of judgement enforcement within 10 days.

6. Customs IP Border Enforcement

6.1. What is the procedure for border suspension of goods?

The Customs authorities shall, within 3 (three) working days from the receipt of such application, issue an instruction accompanied with the application and supporting documents to the relevant customs officer(s), in order to inspect suspected goods. Otherwise, the Customs shall serve the applicant a written notice with reasons in case of rejection.

If the Customs has found that the suspected goods are infringing goods, it shall immediately order the suspension of such goods and, within 24 hours, serve a written notice of such suspension to both the relevant importer or exporter and the applicant and send a copy of the notice to the Customs Department or relevant regional customs office.

Customs may maintain the suspension for ten (10) working days; however, the suspension period may continue if the applicant has provided evidence that judicial action has been initiated.

The applicant must initiate judicial action with the People’s Court against the owner of the allegedly infringing goods within ten (10) working days upon receipt of the notice of suspension. Failure to initiate judicial action within the statutory time entitles the customs officer to release the goods immediately.

Where a People’s Court decision has ruled that the suspended goods are infringing goods, the owner of the goods shall be fined in accordance with the Customs Law. Where the People’s Court decision has ruled that the suspended goods are not infringing goods, the customs officer shall apply the security of the applicant to pay for any expenses and damages arising from such suspension in accordance with People’s Court decision.

6.2. Are there fees for Customs measures?

There is no fee for informing Customs of counterfeit or pirated goods in Laos. However, the applicant must pay a security deposit of LAK 10,000,000 (approximately US$873).

This deposit serves as assurance for the suspended goods. If the applicant fails to initiate judicial action within the 10 working days, the Customs must immediately release the suspended goods, and the applicant’s security deposit will be applied to compensate the owner of the goods for damages suffered. The same applies in cases where Court action is initiated, but the People’s Court rules that the suspected goods are not infringing goods, the Customs shall apply the security deposit to pay for any expenses and damages arising from the suspension, in accordance with the People’s Court decision. (The remainder of the security deposit after such payment shall be returned to the applicant).

7. Administrative Enforcement

7.1. How to initiate an administrative action?

Right owners can request to the DIP to help enforce their rights via the administrative enforcement route. The documents required for submitting such a request to the DIP include:

• a complaint including details of the infringer, a case summary and a description between the genuine and counterfeit products (with photos of genuine and trade mark counterfeit products);
• a notarized Power of Attorney in case the action is taken via a trade mark lawyer/ agent;
• copy of the trade mark registration certificates;
• samples of genuine and fake goods

7.2. How does an enforcement action take place?

The DIP may work with Police to take the raid action and seize the counterfeit/ infringing products. In practice, the counterfeit goods will be seized and disposed of for destruction in the first raid action. First-time infringer may not be punished. If an infringer is a repeated offender, the authorities may consider taking the case before the criminal court which could lead to imprisonment or to a fine.

8. E-Commerce IP Infringement for Trademark and Copyright

IP Law contains no specific provisions on e-commerce IP infringement. Laos has Law on Electronic Transactions and Consumer Protection Law, but the law does not yet cover IP enforcement in E-commerce platforms.

In practice, IP owners can submit a C&D letter to the website operators/e-commerce platform operators to request taking down infringing posts. The other option is that they can contact EP and internet service provider for the administrative action.

Published 2 March 2023