The Long - Term Fellowship Program
Organized by
World Intellectual Property Organization (WIPO) in Collaboration with the Japan Patent Office
(From April 2, 2007 to September 28, 2007)
Comparative Study Japanese Trademark System and Lao Trademark System.
Submitted By
Ms. Souligna SISOMNUCK Trademark Examiner
Under the Supervision of Professor. Yoshitoshi Tanaka, Tokyo Institute of Technology, JAPAN
Science Technology and Environment Agency Department of Intellectual Property, Standardization Metrology.
Table of Contents.
Chapter I. Page
- Introduction………………………………………………………………………………7 - Background and Purpose of research Introduction ………………………………..8
Chapter II. Legal system concerning trademark protection system in Japan.
2.1. Trademark Law and Unfair Competition Prevention Law……………………..10 2.2. Legal framework for trademark protection………………………………………..10 2.3. History of changing trademark protection system in Japan……………………11
Chapter. III. Current Situation of IP Protection in Lao 1. Organization. 1.1. Right and Duties of the Science Technology and Environment Agency. ………………………………………………………………………17 1.2. Right and Duties of the Science Technology and Environment Office of Province, Capital and Special Zones. ………………………..18
2. Intellectual Property Standardization and Metrology Dept. 2.1. Intellectual Property Standardization and Metrology Department. …………..19 2.2. Intellectual Property Division. ………………………………………………………20
3. Legal framework. and domestic Law regarding IP protection……………………21 4. IP Activities and Achievements. ……………………………………………………...23 5. Public Awareness Campaign. …………………………………………………………24 6. IP strategy Development Plan………………………………………………………...24 7. International Cooperation. ……………………………………………………………25 8. Enforcement. …………………………………………………………………………….25
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Chapter IV. Comparison of Legal framework in both countries. 1. Applicant. ……………………………………………………………………………….28 2. Purpose ………………………………………………………………………………….29 3. Definition of trademark ………………………………………………………………29 4. Type of trademark ……………………………………………………………………..30 5. Trademark Application ……………………………………………………………….31 6. Registrability. …………………………………………………………………………..31 7. Unregistrability ………………………………………………………………………..32 8. First to file rule ………………………………………………………………………...33 9. Unity in Application……………………………………………………………………34 10. Collective trademarks………………………………………………………………….35 11. Priority Claimed………………………………………………………………………..36 12. Trademark Right……………………………………………………………………….37 13. Term of Trademark Right.…………………………………………………………….37 14. Examination System…………………………………………………………………...38 15. Rejection…………………………………………………………………………………39 16. Requirement for the trademark Registration………………………………………40 17. Effect of trademark Right…………………………………………………………...... 41 18. Decision to register a trademark……………………………………………………..41 19. Term of Renewal Registration………………………………………………………..42 20. Opposition System……………………………………………………………………...43
Chapter V. Opposition System in Japan 1. Opposition to registration……………………………………………………………….44 2. Opposition Process……………………………………………………………………….45
Chapter VI. Trial System in Japan. 1. Trial against examiner’s decision of refusal……………………………………46 2. Trail against examiner’s decision of dismissal of amendment………………46 3. Trial for invalidation of trademark Registration……………………………...46 4. Trial for cancellation of trademark registration………………………………47
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Chapter VII. Defensive mark, collective mark and Publication in Japan. 1. Defensive mark. 1.1. Conversion of application……………………………………………………………..48 1.2. Term of Right based on defensive mark registration……………………………..48
2. Collective mark. 2.1. Introduction of the collective trademark system…………………………………..50 2.2. Requirement for the collective trademark registration…………………………..50 2.3. Conversion of application……………………………………………………………..51 3. Publication on trademark Gazette……………………………………………...52 4. Re-classification of goods and services………………………………………….53 5. Well-known and famous marks in Japan………………………………………54 5.1. Criteria when is mark ‘’ Famous ’’ or Well-know…………………………………..57 5.2. Parameter when trademark become Famous and Well-Known…………………58
Chapter VIII. Examination System both countries. 1. Organization of division relate to trademark examination. 1.1. Role and duties of Japan Patent Office. 1.1.1. Granting Exclusive Right to Patents……………………………………………..60 1.1.2. Drafting Plans for Industrial Property Policies…………………………………61 1.1.3. International Exchange and Cooperation………………………………………..61 1.1.4. Improving the system for IP Rights and operation……………………………..61 of the system 1.1.5. Dissemination of Information about IP Rights………………………………….62
2. Procedure of obtaining Trademark Right in Japan…………………………..63 3. Explanatory note of examination process in Japan…………………………..64 4. Special Examination. 4.1. Accelerated Examination System……………………………………………………67 4.2. Procedure for submitting the explanation of circumstance concerning the accelerated Examination……………………………….69
4 4.3. The conducting of examination through interview………………………………..71 5. Examination system in Practice in Laos. 5.1. Procedure of obtaining Trademark Right in Laos………………………………72 5.1.1. Explanation note of Examination process in Laos………………………………72 5.1.2. Formalities Check……………………………………………………………………73 5.1.3. Substantive Examination…………………………………………………………..74 5.1.4. Decision to Registration and Publication...... 75
6. Comparative trademark examination process and the difference between two countries…………………………………………...75 7. Comparative Trademark Examination Guideline and Trademark Examination Manual………………………………………….82 8. Act of Infringement………………………………………………………………..87
Chapter IX. Information Technology.
1. Paperless System…………………………………………………………………………88 2. Industrial Property Digital Library (IPDL)…………………………………………..89 3. Intellectual Property Awareness Dissemination in Japan…………………………90
Chapter X. Conclusions and recommendations. 1. Summary of JP trademark System based on comparison……….……………………91 2. Summary of trademark system in Laos based on comparison……………………….93 3. Comment on the different point found by comparison…………………………………94 4. Recommendation to Laos based on this research……………………………………..97
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Acknowledgements.
I am solely responsible for the contents of this research paper. First of all, I would like to address my highly appreciation and express my sincere thanks to The World Intellectual Property Organization （WIPO）and Japan Patent Office （JPO）for organizing the useful program and financial assistance and Asia Pacific Industrial Property Center（APIC） of Japan Institute of Invention and Innovation（JIII）in providing facilities and supporting any documentations for my research. My sincere thanks to Mr. Shin-ichiro Suzuki Director General Asia-Pacific Industrial Property Center, Japan Institute of Invention and Innovation all kind staff of APIC, Mr. TOSHIYASU Matsutani, Ms. NOSHIRO Chie, who take care of my study and any help during staying in Japan and all staffs of APIC.
I would like to convey my gratitude to Ms. Emi TAGUCHI, Assistant Director of International Affairs Division, General Affairs Department under and Ms. Mari MORI, Developing Country Cooperation Section, International Affairs Division under JPO for their kind assistance and supporting any documents concerning my research work.
I would like to convey my sincere thanks to Mr. Nheune SISAVAD, Director General, Department of Intellectual Property Standardization and Metrology and Mr. Makha CHANTHALA, Director of Intellectual Property Division, for giving me this opportunity and encourage to participation in this program and my special thanks to Ms. Khamgnong SICHANTHAVONG, Deputy Director of IP Division for her suggestions and commends during making my research work in Japan.
This research work have been done under the supervisor and instruction by Prof. Yoshitoshi Tanaka, Associate Professor of Tokyo Institute of Technology, I would like to express my sincere gratitude to him for his suggestion and any assistances in my research work until its completed.
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Chapter: I. Introduction. ------
The intellectual property system is one of the cornerstones of modern economic policy at the national level and a catalyst for development. It will increasingly become an important tool for sustainable development of developing countries, especially the least developed in the knowledge-base society of this millennium. Therefore, understanding the legal and economic foundation of the intellectual property system is a prerequisite for comprehending its increasing importance and role in the national strategies for enhancing competitiveness and socio-economic development.
As far as trademark are concerned any sign, or combination of sign, capable of distinguishing the goods or services from one enterprise to another. A mark may be in the form of word, figurative element or combination thereof represented in one or any colors.
The trademark enable its owner or enterprise to build up a reputation for goods offered in relation to that trademark, and compels the owner of the trademark to strive to maintain and improve the quality of goods or services offered under the mark.
Trademark registration not only give the exclusive right of the owner of the mark and build up a reputation for goods, but it has encouraged and promote the foreign investment, stimulate the internal and external commerce in the production in ensuring the quality of goods and national economic development. Protecting the consumers, and to suppress the fraudulence of goods and illegal commercial practice.
Now a day, there is a growing awareness that Intellectual Property Rights protection is crucial part of the new global trading system international trade in goods and services protection by Intellectual Property Rights in increasing and both developed and developing countries recognized that it is in their interest to provide strong intellectual property rights protection in order to participate in the benefits of such trade. 7
Background and purpose of the research
Lao PDR has gone a long way in moving from a centrally planned to a market economy. Economy is agriculture base thus contributing 51% of GDP （ Industry: 23% and service : 26% ）. An economic reform program initiated a transition from central planning to a market-oriented economy which launching of the New Economic Mechanism. The reform resulted in a remarkable economic performance. Exports of minerals and hydropower continued to be important sources of much needed foreign exchange. The growth performance of the 1990s brought about impressive progress in reducing poverty while Lao PDR remains one of the poorest countries in the world, with a per capita GDP of around US$320, a landlocked country of 5.7 million inhabitants on surface area of 236, 800 Km2.
modernizing social and economic infrastructure through trade liberalization, higher agricultural productivity, foreign direct investment and private sector development. As far as intellectual property rights (IPRs) protection are considered to be an important element for Socio-economic development of any given Country, because it promote trade, investment and creativeness of human mind. As my research relate to a comparative study between Japanese Trademark System and Lao Trademark System, the main The Government recognizes the objective of this research is to explore need to create an enabling environment the recognition, improve industrial for development by aiming at fostering property system, develop further legal economic growth, developing and basic proving strong and effective 8 protection, modernize the IP system, protection system with the other least especially encouragement people in the developing countries, still need more country create and seek commercial improvement and development again. benefit from IP, increasing the number Particularly, comparative study with the of domestic applications for IP other countries is further step proving protection. As you can see in the strong and effective protection; statistic almost the applications which especially Japanese trademark system concerning the IP protection 97% are Since Japanese Trademark system has from oversea which file through the IP a long history of changing trademark office in Laos and only 3% is the protection system and revising Industrial domestic applications, so far since 1992, Property Law from time in order to meet which IP Office have done IPRs the international treaties requirement. registration and administration through Otherwise, it is considered as model for the country. But if we compare IP this study.
The major part of this report is the comparison of the Japanese trademark system with Lao trademark system by referring to procedure such as trademark application, the rule and standards requirement for determining trademark registration as well as the difference between two systems.
The purpose of this research is done in order to modernize IP system, ensure the effect of IP protection and making people in the country understand and make more use of IP protection system.
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Chapter II. Legal system concerning to trademark protection system in Japan.
Since Japan established first legal system to protect trademarks in the Meji era, Japan has carried out a series of revisions to its trademark law. From time to time, these revision have been made as required to match domestic industrial developments calling for changes in the trademark protection system and to comply with requirement under various international the country has acceded to.
Japan had joined a party of various international treaties such as Paris Convention, Nice Agreement, Trademark Law Treaty, and Madrid Agreement for the Repression of False or Deceptive Indication of Source on goods, Madrid Protocol Concerning the International Registration of marks and become a member of TRIPS Agreement.
2.1. Trademark Law and Unfair Competition Prevention Law.
The trademark protection system in Japan is under Trademark Law and unfair Competition Prevention Law, the two Law are common in seeking to “establish economic order through the maintenance, etc. of the business reputation of persons using trademarks and contribute to the interests of consumers”
2.2. Legal framework for Trademark Protection.
Trademark system in Japan is protected under the trademark Law. z Trademark Law Enforcement Set forth “Classification of goods and services, Qualification of Examiners and Trail Examiners” z Trademark Registration Order. Set forth “Matter to be registered concerning trademark, procedures for registration” z Order on Fees Relating to the Patent Law, etc Sets forth the specific amount of fees, such as “Application fee, Trail Demand Fee” 10 z Enforcement Orders related to the Exempted Procedures for IP Set forth the trademark application for registration etc. as Specific procedures which may be applied through electronic information processing systems. z Regulation under trademark Law Set forth “Form of application for registration of trademark, form of requirement for renewal registration of the term of the trademark” z Trademark Registration order Enforcement Regulation Set forth “Method for registration of Establishment of trademark right, form of requirement ” z Enforcement regulations related to the exempted procedure for IP.
Sets forth “ assignment of identification numbers,” comprehensive proxy and filling of deposit as exemptions of procedures related to industrial properties including trademarks. z Ministerial Ordinance related to the Procedures for cash payment of IP fees sets forth “ cases in which cash payments of the fee for industrial properties and allowed ”, “ Issuance of payment ”and in order to accept bank transfer payment of fees for industrial properties including trademarks.
2.3. History of changing trademark protection system in Japan.
1. Adoption of Trademark Ordinance in 1884 including the following: （1 ） - Adoption of the first-to-register Principle - Obligation to attach a specification to a request. - Definition of non-registration mark, such as: - A mark identical with confusingly similar to registered trademark for use the same kind of goods. - Common names such as geographical appellation and personal name 11 national or foreign flags. - A mark customarily used the industry. - A mark identical with or confusingly similar to a trademark having existed before adoption of the trademark ordinance for use of goods as the same kind.
2. Revision of trademark Law in 1888 Trademark ordinance of 1884 was not complete as far as in regard to examination and trial it was revised as following: -.It was stipulated that a trademark was ‘’ for indicating one’s own goods ’’ clarifying its function to distinguish one’s goods from those of others. - Provision was added setting a 20 year term of exclusive use of a trademark. - Provision was added to recognize the cancellation of a registered trademark right due to non-use. - Registered trademark invalidation was revised from ex officio invalidation to trial-based invalidation. - Infringement on the exclusive use of a registered trademark was made liable to the payment of damage.
3. Revision of Trademark Law in 1909 The major points of revision were following: - Formulate the concept of trademark, the owner of the trademark was defined as ‘’ a person using trademark to indicate production, manufacture, processing, certification of sale of goods ’’. - Limit on the use of colors was adopted. - Requirement for registration of a trademark shall be composed of characters, sign, or their combination thereof. - Associated trademark system was adopted. - Added the provision of the protection of well-know trademark.
4. Revision of Trademark Law in 1921
The majority of the revision was as following: - Concept of similar goods was introduced (making it possible to protect a similar 12 trademark with respect to identical goods and identical similar trademark with respect to similar goods with scope of protection expanded) - The meaning of well-know trademark was clearer. - Collective trademark system was introduced. - The act of infringement on trademark was revised from offenses prosecutable upon complaint to offenses prosecutable without complaint. - Invalidation trial with respect to registered trademark was improved. - It was stipulated that cancellation of registered trademarks due to non-use would be effected through trial. - A notification of reasons for refusal was introduced.
5. Revision of Trademark Law in 1959 - Trademark Law was revised incorporating the following: - Adoption of objective and definition section. - Exemplification of a function to distinguish goods was required for trademark right was shorted from 20 years to 10 year, with free transfer recognized. - Defensive mark system was adopted. - The collective trademark was abolished. - A judgment was introduced to judge the effect of trademark right and - A system was introduced for licensing a right to use with respect to a registered trademark.
6. Revision of trademark Law in 1975 With the number of trademark application and pending trademark application rapidly increasing after revision of trademark law in 1959 and some measures needed to be taken. The major points of revision were as follows: -Revision of provision concerning the registration of renewed term for registered trademark rights. - Revision of provision concerning the trial for cancellation of non-use. - Revision of a regulation under trademark law concerning business of applicant.
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7. Revision of Trademark Law in 1991 Japan acceded to the Nice Agreement in February 1990 an international treaty established to adopt a common classification of goods and services. (International Classification) The main point of the revision was as follows: - A system to register service marks was introduced. - Adoption of international classification. - The extension of time limit for application for registration of term renewals until final date of registered trademark’s term.
8. Revision of Trademark Law in 1996 The trademark Law treaty was concluded in 1994 to simplify trademark application related procedure and harmonize national trademark system from one country to another. The major point of revision was as follows: - Revision to trademark law made for correspondence to the trademark. - Measures taken in regard to unused trademark. - Securing early grant to right. - Protection of famous and other trademark. - Other: - Insertion of three-dimensional trademark (Definition and condition for registration) - Insertion system for collective mark. (Transfer right of individual member to the collective)
9. Revision of Trademark Law in 1999 In order to protect business trust through use of trademark from when a trademark application is filed until its registration; The revision was made:
- A system for right to request financial recompense in regard to a trademark prior to its registration. 14 - A system evaluates insertion of disclosure of trademark registration applications. In addition systematic revision were made to quality for entry to the Madrid Protocol (International Registration System)
10. Revision of Trademark Law in 2002 Trademark Law revision to - Clarification acts equivalent to trademark use - Amendment to the system for installed payments for individual processing fee incur
15 1 Chapter III. Current Situation of IP protection in Lao. 1. Organization. The Intellectual Property system was established in 1992 following an executive decision of the Council of Ministers. The Department of Intellectual Property, Standardization and Metrology under the supervision of the Science Technology and Environment Agency (STEA) is in charge of the day-to-day intellectual property matters. The Organization responsible for the protection and inspection of intellectual property activity consists of the Science Technology and Environment Agency and the Science Technology and Environment Office of a Province, Capital, and Special Zone.
Organization Chart.
Prime Minister’s Office Science Technology and Environment Agency (STEA)
DISM DST DOE CABINET SRI TRI ERI
DISM: Department of Intellectual Property, SRI: Scientific Research Institute Standardization and Metrology TRI: Technology Research Institute DST: Department of Science and Technology ERI: Environmental Research Institute
DOE: Department of Environment
1 See the text book on History of Japanese Industrial Property System published by Japan Patent Office in the year 2005. 16
1.1. Rights and Duties of the Science Technology and Environment Agency for the Protection of Intellectual Property
The Science Technology and Environment Agency is the organization responsible for the protection and inspection of intellectual property at the central level having the right and duties as follows:
1. To assist the Government in research and expand strategies and policies for detailed plans and provisions for the protection and inspection of intellectual property; 2. To protect and inspect the intellectual property activities, and report regularly to the Government; 3. To issue rules, regulations, guidance, and hold specific meetings on intellectual property according to its own duties; 4. To establish a registration system, and provide services on intellectual property; 5. To issue or cancel the certificate of registration of intellectual property and to issue or revoke the license of any individual or legal entity that offers services on intellectual property; 6. To accept and undertake remedies by administrative procedures of complaints and petitions and the resolution of disputes regarding the infringement of intellectual property; 7. To be a focal point in coordinating with sectors and local administrative authorities at different levels for the protection and inspection of intellectual property; 8. To promote advertising and promote the public awareness on intellectual property; 9. To coordinate and cooperate with international organizations in the area of intellectual property. 10. To exercise all other rights and duties relating to intellectual property as delegated by the Government or as stipulated in relevant laws and regulations. 17
1.2. Rights and Duties of the Science Technology and Environment Office of Provinces, Capital and Special Zones The Science Technology and Environment Office of Provinces, Capital, and Special Zones are responsible for the protection and inspection of intellectual property comprising the following rights and duties:
1. To implement, and expand laws and regulations, plan strategies and policies into detailed plans for the protection and inspection of intellectual property; 2. To protect and inspect intellectual property and report regularly any outcomes to the authority responsible for the protection and inspection of intellectual property at the central level; 3. To organize specific meetings on intellectual property according to duties; 4. Accept complaints and petitions regarding the infringement of intellectual property and report to the authority responsible for the protection and inspection of intellectual property at the central level for remedy as stipulated in this law; 5. To be a focal point in coordinating with the relevant authorities for the protection and inspection of intellectual property; 6. To promote advertising and promote the public awareness on intellectual property; 7. To exercise all other rights and duties relating to intellectual property according to the direction of the authority responsible for the protection and inspection of intellectual property at the central level as stipulated in relevant laws and regulations.
2. Intellectual Property Standardization and Metrology Department.( DISM ) Actually the activity on intellectual property is under the responsibility of the Department of Intellectual Property Standardization and Metrology since 1993 by Decree of the Prime Minister establishing the Science Technology and Environment Agency (STEA). DISM are consisted of 4 Divisions: Intellectual Property division, Standard division, Dissemination Affair division and Metrology division. 18 The main responsibility of DISM is to advice the government through STEA on issues in the field of Intellectual Property, Quality, Standard, Testing and Metrology (IQSTM) management in the whole country. DISM Chart
Director General
Deputy Director Deputy Director
General General
Intellectual Property Standard and Quality Metrology Dissemination and Division Division Division General Affairs
2.1. Intellectual Property Standardization and Metrology Department. Acting as the chief of staff for the DIP is central intellectual property administration agency. The main functions are to prepare strategic development plans on intellectual property, to draft laws, decree and regulations on intellectual property and to organize the supervision and implementation of the approved laws, decrees and regulations. The main role and duty are as follows:
A. Role: - To act as chief of staff for the government in the formulation and implementation of intellectual property strategy and policy in compliance with international requirements; - Build intellectual property material and technical infrastructure and provide necessary tools to render full intellectual property services; 19 - To disseminate information and promote intellectual property public awareness; - Coordinate with other relevant agencies to integrate intellectual property curriculum at Universities. - Modernize intellectual property management mainly on IP database and the filing of intellectual property applications for registration via computer network; - Train and update the skill of managerial officers and technical staff in both government officials as well as private sector working on intellectual property locally and abroad.
B. Duty: Administer intellectual Property matters in a uniform way throughout the Lao PDR. - Encourage and promote inventiveness, creativeness, Technology transfer, and scientific and technological research and development; - To coordinate and cooperate with international organization in area of intellectual property; - Draft laws and regulation on intellectual property rights to insure the protection of the rights of legal owners and consumers; - Implement the law by means of registration of IP matters and enforcement; - To be a focal point in coordinating with line ministries and provincial authorities at different level to set up a system of management and control of intellectual property; - Disseminate information regarding intellectual property.
2.2. Intellectual Property Division. The Intellectual Property Division divided to 5 sections such as: Legislation section, Trademark section ,Patent section, IP information section and Copyright section.
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Intellectual Property Division Chart
Director of IP Division
Deputy Director Deputy Director
Section of Section of Trademark Section of Patent IP information Section of Legislation Copyright
Legislation Trademark Patent Granting General IP Copyright Unit
Unit registration Unit Unit information
Appeal Unit Geographical indication Petty Patent Trademark Neighboring
registration Unit granting Unit Information Unit Right Unit
Trade secret Industrial Design Patent
registration Unit granting Unit information Unit
Integrated Circuits
granting Unit
3. Legal Framework and domestic Law regarding IP Protection. For the purpose of protection intellectual property inn Lao PDR, the Government has proclaimed 2 Decrees. The first is the Prime Minister Decree No. 06 on trademark Registration promulgated January 18, 1995 and the other one is the 21 Prime Minister Decree No. 1 on Patent, Petty Paten and Industrial Designs dated January 17, 2002. The two Decrees are supported by implementing regulations respectively. The DISM has proposed a new draft law on Intellectual property that covers all areas of industrial property and copyrights and submitted to the National Assembly (NA) for approval. The new proposed intellectual property law will be an integrated law covering the principle and administration of all subjects of intellectual property, e.g. patent, petty patent, industrial design, trademark, copyrights and related rights, integrated-circuit layout-design, geographical indication, trade secret and plant variety.
Domestic Law relating to Intellectual Property Rights Protection in Laos
Subject of Non-established/ Current Law Entered into force Comments
protection Already established
Lao IP Law ◆
Trademark Prime Minister’s January 18, 1995 Implemented ◇ Decree No. 06/PM on Trademark
Patent Prime Minister’s January 17, 2002 Implemented on Patent, ◇ Decree No. 01/PM Petty Patent and Design
Petty Patent Prime Minister’s January 17, 2002 Implemented on Patent, ◇ Decree No. 01/PM Petty Patent and Design
Industrial Design Prime Minister’s January 17, 2002 Implemented on Patent,
Decree No. 01/PM Petty Patent and Design
Copyright ◆
Trade secret ◆
Computer programs ◆
22 Layout Designs of ◆ Integrated Circuits
Series of marks ◆
Associated mark ◆
Defensive mark ◆
Appeal/Trial ◆
Opposition ◆
Cancellation ◆
Limitation of time ◆ for action to cancel
Third Party Right ◆
Abandonment ◆
Enforcement ◆ and Customs
Note : Already established ➟ ◇
None-established ➟ ◆
4. Intellectual Property Activities and Achievements. Actually the activities on intellectual property is under the responsibility of the DIP of Department of Intellectual Property Standardization and Metrology ( DISM ) .
In the term of legislation on intellectual property, the DISM under STEA is a central Intellectual Property administration agency. The main functions are to prepare 23 strategic development plans on intellectual property, to draft laws, decrees and regulations on intellectual property and to organize the supervision and implementation of the approved laws, decrees and regulation. The DIP had opened for applications of protection of Patent, Petty Patent and Industrial Design in September 1, 2004 and Trademark Registration since 1991. Up to now 80 applications relating to patents and industrial designs are received by this office. All registration made by foreigners or foreign entities are filed through local representatives. As far as the trademark registration, more than 16.000 applications for trademark have been registered and granted certificates in the Lao PDR in which about 97% of applications are from overseas.
5. Intellectual Property Strategy Development Plan. In order to ensure the IP development from now to the year to 2020, the main of objectives has been planning such :Encourage and Promote local and foreign investment in Science and R ＆D and Transfer of Technology, protect inventions and consumers; and combat infringement. Particularly, to reach the main objective the following activities should be completed:
Establish Lao IP Policy Establish a complete IP system Enhance capacity building Build the public awareness by promulgate, IP dissemination, public awareness and IP Database. Provide quality IP service and registration system Provide the necessary legislation with international conference. Strengthen cooperation and seek support from WIPO, ASEAN, EU and JAPAN etc.
6. Public Awareness Campaign. In order to promote intellectual property public awareness, the DIP has organized several national seminars and workshops on Intellectual Property Rights in cooperation with WIPO. The seminars and workshops are to provide the public and private sector with the understanding of the importance role of Intellectual Property in 24 economic and social development, to encourage invention and scientific research within the country, to create favorable conditions for technology transfer, to attract foreign investment, to enhance domestic and foreign trade and at the same time to fight against infringement of goods an illegal business activities and to protect the consumers as well.
7. International Cooperation. Member of WIPO in January 17, 1995 and the Paris Convention in October 8, 1998, member of PCT in the year 2006, the Lao PDR is now considering of becoming a signatory to the Bern Convention for the Protection of Copyrights, and Copyright Cooperation Treaty.
Lao PDR joined ASEAN in July 1997 and enjoyed a multifaceted cooperation with Thailand, Vietnam and other IP offices of the ASEAN countries mainly in the field of information exchange, human resource development and study visit. Under the ASEAN framework the Lao PDR is actively participating in workshops, conferences and working group in order to advance the cause of intellectual property (IP). The Lao PDR is preparing to join ASEAN common filing system on trademarks and patent. Besides, the DIP maintains close cooperation with Japanese organizations particularly, JPO, JCO and JIII that from time to time assist the DIP with training of staff and IP practitioners in Japan.
8. Enforcement. DISM is the focal point for coordinating of line Ministries to deal with IP enforcement. When DISM received complaints and petitions from any owner IP Rights, we organize meetings with line Ministries to make a joined decision and then assign duties to deal with its responsibility.
The main duties of line Ministries concerned are as following:
• Department of Custom, Ministry of Finance, to suppress the counterfeit and piracy products at the border for relevant case by seizing or stopping of import
25 • Department of Economic Police, Ministry of Public Security, to suppress illegal trade by seizing and arresting of counterfeit and piracy products. • Department of Internal trade, Ministry of Commerce to issue the permission for legal trade and control of illegal trade • Chamber of trade and industry to look for legal business practices. • DISM, STEA, to arrange administration measure by Mediation and arbitration. • If any cases could not be solved by administration measures, we proceed by judicial measures and sent the case to the Court.
PROCEDURE ON ENFORCEMENT BY CRIMINAL CASE
ENFORCEMENT BY JUDICIARY PROCEDURE: It is possible to apply the Civil Code and Penal Code to Judicial Procedures for Intellectual Property Protection. The injured person is entitled to bring the case to the Court. The related documents, all proof of evidence and all related information are to be submitted and produced to the Court for prosecution under both Civil and Criminal Law
ENFORCEMENT BY SPECIAL CIRCUMSTANCE: If it is found that the matter is dangerous to the society and the country of Lao PDR, the police (Economic Police) in co-operation with Lao DIP shall arrest the infringer without prior notification.
PROCEDURE ON ENFORCEMENT BY CUSTOMS The injured person is entitled to apply for a recording or registering their rights in advance with the police and legal climate and the corporation of the Police Boarder. The effective period of the registration would vary upon case-by-case basis and upon the police, political and legal climate at the present time.
Theoretically, the enforcement for Patent, Petty Patent, Industrial Design and Trademark by the Customs can be taken. However, practically, trademarks are the subjects of such registry and monitoring by the custom authority. The customs office would monitor and inspect both export and import. 26
There are the following measures that can also be taken: ▪ ENFORCEMENT BY ADMINISTRATIVE MEASURE: Claims and disputes can be resolved by mediation through the Department Of Intellectual Property, Standardization & Metrology (DISM) or the Economic Arbitration Committee.
▪ ENFORCEMENT BY MEDIATION: The procedures of the meditation are as follows: ➟ Conducting an investigation; ➟ Inviting all related parties to confront, identify and discuss the issues arisen; ➟ Presenting proof evidences to all related parties; ➟ Sending a warning notice to the infringer; ➟The infringer executes the acknowledgement document of infringement and executes the declaration of the deadline of desisting of the counterfeit activities.
▪ ENFORCEMENT PROCEDURES:
➟ The procedures for enforcement are as follows: ➟ Monitoring and inspecting all targeted locations, manufacturers, distributors and infringers. ➟ Preparing all the required documents, evidences and all related information in order to form all the necessary legal documentation and submit the case of infringement to the competent authority.
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IV. Comparison of legal framework in both countries. 1. Applicant: ◈In Japan, an applicant must be a person ( individual ) or legal entity. A foreign application which has neither address nor residence (office, if the applicant is legal entities) In Japan is allowed to apply for Industrial Property Right is required to appoint an agent, or a patent attorney, having an address or residence in Japan as patent administrator. The applicant must be conduct any procedure requires by the Japan Patent Office through agent.
◈ In Lao, the applicants is an individual or legal entities having residence and from foreign countries engaged in lawful production, commercial and services activities shall be entitled of foreign countries requesting to register trademark must be filed through a authorized representative in Lao PDR. - The applicant who is the owner of registered trademark in Lao PDR received protection for exclusive use by the owner in that jurisdiction. - The owner may intend to use the trademark in Lao or authorized it use by some other entity in Lao PDR. - License or intend to license its use by some other entity in Lao PDR.
In both countries the meaning of applicant is a person who filed the application must be an individual or legal entity who is engaged in lawful production, commercial and services. For foreign application must be filed through trademark or patent attorney or agent.
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2. Purpose of promulgated Trademark Law. 2 ◈ Trademark registration in Japan under the Trademark Law, purpose of this law is to unsure the maintenance of the business reputation of persons using trademarks by protecting trademarks and contribute to development of industry and to protect the interest of consumers. （ Section 1 ）
◈ In Lao, trademark registration is under Prime Minister’s Decree on Trademark, purpose of this Decree is to encourage and promote the foreign investment, to stimulate the internal and external commerce, the production in ensuring the quality of goods and protect the consumers. （ Article 1 ）
The legal system in both countries is difference, because the trademark protection in Japan under Japanese trademark Law, but in Laos is under the Prime’s Minister Decree on trademark and regulation under Science Technology and Environment Agency. But the main objectives are to protect the interest of consumers and give the exclusive right, and maintain the business reputation.
3. Definition of Trademark. ◈ In Japan, ‘’a trademark’’ means characters, figures, sign, three-dimensional shapes or any combination thereof and color （ Section 2 ）which are used in respect of goods and services by a person. ◈ In Lao, ‘’ a trademark ’’ is defined as a sign used to be a mark of goods and services belong to owner of the created trademark and service mark. A mark may be in the form of word, figurative element, characters or combination thereof represented in one or any colors.
In both countries the definition of trademark described in the trademark Law and Decree on trademark registration is the same meaning as figure, sign used to be a mark of goods or services.
2 Source: see the Japanese Laws relating to Industrial Property. Published by AIPPI.JAPAN/2006 and Prime Minister’s Decree on Trademark Registration in Laos No/06/PM , January 18, 1995 29
4. Type of Trademark. 3 ◈ In Japan, Trademark consisting of characters including Japanese characters, alphabetical characters and other foreign characters, trademarks consisting of devices or symbols and three-dimensional trademarks (this is a new addition to the law included in a revision in 1996; at present, dolls, spheres and three-dimensional signs are protected).
◈ In Lao, refer to Decree Article 2. A mark may be in the form of a word, figurative element, or combination thereof represented in one or any colors as trademarks, service marks and collective marks.
For registration of olfactory （ smell ）mark, sound marks or those consisting merely of a colors does not allow registration.
Three dimensional marks not allow registration which may be represented figuratively in a drawing or photograph as it is covered by the word ‘’ visible sign ’’. it is important that the three dimensional marks of this kind are not the goods which are to be covered by the registration as they may be merely the goods of interest to the applicant. If the three dimensional marks are combination with words, letters, number or graphics, ability to distinguish the goods or services of one trader from those of another. Where there is doubt about the distinctiveness of the trademark the owner may be able to provide evidence that the mark is distinctive through use and is recognized in the market place as identifying his/her goods from those of other traders.
From comparative type of trademark protection, in Laos the type of trademark protection are trademark, service mark, certification mark and collective mark. For the three dimensional marks and smell mark are not protected, but in Japan three dimensional marks are protected under trademark Law and insertion the definition and
3 Japanese Law relating to Industrial Property published by AIPPI.JAPAN./2006 and Prime Minister’s Decree on Trademark Registration in Laos No/06/PM , January 18, 1995
30 condition for registration in 1996. 5. Trademark Application. 4 ◈ In Japan, any person desiring a registration of trademark shall submit a request to the commissioner of the Patent Office together with any necessary documents as consisting of the name and the domicile or residence of the applicant, trademark sought, designated goods, or designated services and class of goods or services as prescribed by Cabinet Order. Where a person desires a trademark registration consisting of three-dimensional shape, the request shall contain a statement to that effect. Where a person desires a trademark registration consisting of characters designated by the Commissioner of Patent Office and the request shall contain a statement to that effect. Where a person desires a trademark registration consisting of characters designated by the Commissioner of Patent Office and the request shall contain a statement to that effect. （ Section 5 ）
◈ In Lao, any individual or legal entities have a request to register trademark shall apply to Science Technology and Environment Agency which the application for registration of trademark, some specimens of trademark and list of goods or services with the description of characteristics and quality that are to bear the mark and other necessary relevant documents. （ Article 7 ）
Filing trademark application in Laos, in case of foreign application mean the foreign applicant neither has the address nor resident in Laos, must be file trademark application through the authorized agent in Laos, for domestic application can be filed directly to IP office.
6. Registrability of Trademarks. ◈ In Japan, according to trademark law, any person may obtain a trademark registration of a trademark to be used in respect of goods or services in connection with business, except the trademark which consist solely of a mark indicating in common
4 Japanese Law relating to Industrial Property published by AIPPI.JAPAN./2006 and Prime Minister’s Decree on Trademark Registration in Laos No/06/PM , January 18, 1995
31 way, common name of the goods or services, trademark which indicating the origin, place of sale, quality, raw materials, shape, price of the goods, method or time of manufacturing, common place surname or name of a legal entity, trademark which do not enable consumers to recognize the goods or services as being connected with a certain person’s business, trademark registration may be obtained notwithstanding the above mentioned.（ Section 3 ）.
◈ In Lao, according to Prime Minister’ s Decree on Trademark, any visible sign capable of distinguishing the goods of an enterprise can be registered as trademark, if it is not felt into one of any categories of article 12.
Both countries has specific concept for unregistered trademark but, the same things that trademark must be used in respect of goods or services. In case the trademark consist solely of mark which indicate the quality, raw material and original place of sale or price, and trademark which is not enable customer recognize, could not registered.
7. Unregistrability Trademarks. ◈ In Japan, trademark can not be registered, if the trademarks are identical with, or similar to the national flag, the imperial chrysanthemum-crest, a decoration, a medal of merit or a national flag, a state coat of arms or other emblem of a country party to the Paris Convention （ meaning the Paris Convention for protection of Industrial Property ）a mark indicating the United Nation or any other international organization and designated by the Minister of Economy, Trade and Industry.
- Trademark comprising a mark identical with or similar to, an official seal or sign which indicates supervision or certification by government of Japan, trademark liable to contravene public order or morality, containing the portrait of another person, professional name or pen name.
- Trademark comprising a mark which is identical with, or similar to, a prize awarded at an exhibition held by the government or local public entity. - Trademark which are well-known among consumers as indicating the goods or services as being connected with another person’ s business, similar to registered 32 trademark applied for prior. - Trademark which are identical with another person’ s registered defensive mark （ meaning a mark registered as defensive mark ）
- Trademark which are liable to cause confusion and misleading as to the quality of goods and services, consisting solely of a three-dimensional shape of goods or their packaging with the shape being indispensable to secure the function of the goods or their packaging. - Trademark which are well-known among consumers in Japan or abroad as indicating goods and services connected with another person’ business and the trademarks identical with or similar which are used by the applicant for unfair intention.
◈ In Lao, a trademark can’t be register, if it is incapable of distinguishing the goods or services of one enterprise from those of other enterprises. Trademark which is contrary to the national cultural morality and public order, likely to mislead the public or trade circle, particularly the geographical origin, nature, characteristics of goods or services, trademark contains as an element, an armorial bearing, flag, emblem, national typical culture or history site, abbreviation of any state, intergovernmental organization created by international convention, a mark possess official sign or hallmark relating to control and certification of any state or international organization, or similar to a trademark or trade name of goods or services which are widely well-known. （ Article 12 ）
It is clear for both countries which unregistered trademark, if it is not unable to distinguishing the goods or service of one enterprise and trademark which is make the public misunderstanding and trade circle and also emblem of countries party of Paris convention are recorded as unregistered trademark.
8. First to file rule. ◈ In Japan, according to trademark law （ Section 8 ）, where to or more trademark applications are filed to identical or similar trademark which are to be used or identical or similar goods and service as following： 1. Where two or more trademark applications which are filed on the same date only one applicant, agreed upon after mutual consultation among all the applicants may obtain a 33 trademark registration for the trademark. 2. Where two or more trademark applications are filed on different date, only earliest applicants may obtain a trademark registration for the trademark concerned. Where no agreement is reached in the consultations under subsection is not made within the time limit, registration of the trademark concerned may be obtain only by one applicant chosen by the drawing of lots conducted in a fair and just manner by the Commissioner of Patent Office.
◈ In Lao, where two or more persons are filed application for the registration of identical or confusingly similar trademarks of the same kind, priority shall be considered and granted to the person who has first filed his application as to its conformity with article 7 （ Article 10 ）
In both countries established the first to file system, in case there is one or more trademark applications are filed the same date, the right will give to the applicant who is the first filing completed trademark application.
9. Unity in Application. ◈ In Japan, an application for a trademark registration shall related to a single trademark and shall designate one or more items of goods or services in respect of which the trademarks is to be used, according to classes of the classification of goods and services are prescribed by Cabinet Order. （ Section 6 ）
◈ In Lao, according to regulation on registration of trademark No. 466/STEA-PMO, where the trademark owner has several trademark and several classes to apply for registration at the same time, the applications for trademark registration must be filed separately one trademark application with one class of good and service （ Article 8, 9 ）
Both countries use International Classification （ Nice Classification System ） however, there are the difference in the unity of application. In Japan one trademark application can designate more than one class of goods or services in single application, but one application can designate only one or two goods or services in one
34 class. （ multi-class system ）. In Laos, one trademark application can designate only one class of goods （ single-class-system ）but the applicant claim specific of goods or services or all goods or service in a class. As in the past years ago the system in Laos changed the designated of goods or service in one application, which is make more benefit for national economic and income for government. The writer thinks that, in the future if Lao is accessed to Madrid Protocol, the single-class-system would change into multi and specific goods or service one or two in one application same as Japan.
10. Collective Trademark. ◈ In Japan, according to trademark law ‘’ collective trademark ’’ means aggregated corporation established under the provision of civil code （ Law No 89 of 1896 ） （ Section 34 ）or industrial business corporative association or foreign legal entities corresponding thereto shall be entitled to obtain a collective trademark registration with respect to a trademark for use by their member any person desiring the registration of the collective mark shall submit the request to Commissioner of Patent Office with respect of trademark application and a document proving that applicant is a legal entity. Referred to subsection （ 1 ）of the said law.
Besides that, in Japan, the applicant would submit to Commissioner of Patent Office for protecting special collective trademark for geographical names, when such trademark as a result of its use, has become well-known among consumers as indicating the goods or services as being connected with their own or their member’s business.
◈ In Lao, according to Prime Minister’s Decree on trademark, the type of the trademark registration is trademarks, service marks and Collective mark under the （ Article 9 ）of said Decree. ‘’ Collective mark ’’ means a trademark used with goods or services of different enterprises who are using the same mark under the control of the registered owner of the collective mark.
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The application for registration of a collective mark shall contain documents and pursuant to the requirements defined in article （ 7 ） in addition with the rules governing the use of the collective mark. In the case of any changing to use the said collective mark, the registered owner must notify the Science Technology and Environment Agency for the approval.
The definition of collective mark is clear for both countries, which collective is to be used by member of difference enterprises but the same registered trademark which is well-known by consumers
11. Priority Claimed. ◈ In Japan, priority claim base on an trademark registration application （ limited to a trademark equivalent to that defined in section 2（ 1 ）（ ii ）filed in or for a country party to the Paris Convention may be declared as governed by the provision in article 4 of the Paris Convention for Priority Claim base on the application for trademark registration ）.
◈ In Lao, As Lao PDR is member of Paris Convention and referred to article 4 of the said convention, if there are two or more persons file applications for the registration of identical or confusingly similar trademarks of the same kind, priority shall be considered and granted to the person who has first filed his application as to its conformity with article 7（ article 10 ） In case of an applicant who has registered a trademark of the same kind in a foreign country, he has the right to appeal the priority date during the filing of an application for registration in the Lao PDR, but his application may be attached with a reference according to the international principles and laws or regulations of the country concerned relating to the protection of intellectual property.（ article 15 ）
Both countries are member of Paris Convention, in case there are two persons file the same trademark, the applicant can claim the priority date which the same trademark has been registered in foreign country.
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12. Trademark Right. ◈（ Section 18 ）of the Japanese trademark law, a trademark right shall come into force upon registration of its establishment, a trademark right shell be registered when the registration fee due to paid within 30 days from the date of transmittal of the examiner’s decision or the trial decision that trademark is to be registered and trademark right is a right to exclusively use a trademark with respect to its designated goods or designated services. （ Section 25 ）.
◈ In Lao, the owner of registered trademark shall have the right as following: The exclusive rights of use of the trademark, right to assign or license his/her right to any other person. The use of a registered trademark by any other person than the registered proprietor in connection with any goods and services must obtain agreement from proprietor. The court proceedings against any individual or legal entity who infringes or uses a trademark without his agreement（ article 13 ）of the Prime Minister Decree on trademark.
The trademark right will be effect based on the registration in both countries and will valid for 10 year from the date of registration in Japan. But in Laos, trademark right starts from the filing date.
13. Term of Trademark Right. ◈ In Japan, term of a trademark right shall be ten year from the filing date of registration, term of trademark right may be renewed by making request for registration of renewal and submit to Commissioner of Patent Office, the term shall be deemed to have been renewed upon expiration of the term Section 19 ）
◈ In Lao, the registration of the trademark shall be valid for a period of ten （ 10 ） years from the filing date of the application for registration and may be renewed every ten（ 10 ）years （ article 11 ）of Prime Minister’s Decree on trademark. - In case the application for trademark registration is not complete, the registry Unit will inform the applicant for amendment but the filing number and date can only be issued
37 on the date the complete an correct application is submitted （ Article 10 ）of the regulation on registration of trademarks. Term of trademark right in both countries after registration is for ten years and can be renew every ten years. In the past term of trademark right in Japan was valid for 20 years. But after revision of trademark Law, it was shorted from 20 years into 10 years.
14. Examination System. ◈ In Japan, trademark examination decides to register trademark, if there is no reason for refusing a trademark application within the time prescribed by Cabinet Order. In case the trademark in the trademark application is not registrable where it falls under any of the following paragraph: Section 3,4（ 1 ）, 7bis（ 7-2 ）（ 1 ）, 8（ 2 ）or（ 5 ）,51（ 2 ）of this Japanese Trademark Law, trademark application is to be refused, The examiner will notify the applicant for the trademark registration of the reasons for refusal and give him an opportunity to submit a statement of his arguments, designating an adequate time limit.
◈ In Lao, a principle of trademark Examination referred to regulation on trademark registration under Science Technology and Environment Agency, （ Article 10 ）after receiving application for trademark registration, the Registry Unit will check the application for formalities in conformity with article 7（ the application for registration of trademark shall contain : Application for registration of trademark, ten（ 10 ）specimens of the mark, a power of attorney （ if the application for trademark registration is applied through an authorized representative ）. In case that the priority date is for in accordance with the Paris Convention on the protection of Industrial Property, documents evidencing must be accompanied with application for registration of the trademark of this regulation and issue an official receipt with filing number and date. Within six（ 6 ）months starting from filing date of the application for trademark registration or the date the Registry Unit confirms the filing number and date, then the examiner will undertake the substantial examination, issue the certificate of registration, record the mark on the trademark Registry and publish the registered mark on Official Trademark Gazette（ Article 11 ）
38 Both countries, during examination if the examiner finds the reasons for refusal, the notification will send to the applicants of the reasons for refusal and give them the opportunity to submit written arguments. In Japan the time for submitting the written argument should send within forty 40 days from the date of notification, whether the problems are overcame, the decision to register trademark will be done. But in Lao the period gives to applicant longer than Japan within 90 days, from the date of notification if the writer thinks that, the system in Laos, the time period for submitting the written argument is more flexible time than in Japan and all matter should be solved within the designated time period before granting certificate.
15. Rejection. ◈ In Japan, in the case of a trademark application fall into one or more the following categories the examiner will be refused: 1. The trademark in the trademark application is not registered in accordance with section 3,4（ 1 ）{ Section 7-1, Section 7-3, Section 8-2, Section 8-5 or Section 5, 51 （ 5 ）} （ including its application under section 52 bis ）of the trademark Law or Section （ 25 ）of the patent law as applied under Section 77（ 3 ）. 2. Trademark in the trademark application is not registrable in accordance with a treaty. 3. Trademark which do not meet requirement of provision with section 6（ 1 ）or（ 2 ）.
◈ In Lao, if the trademark application for registration falls under one or more categories in Article 12 of the Prime Minister’s Decree on Trademark.
In case the application for trademark registration is rejected, the registry Unit will notify in writing the applicant and authorizes applicant to file argument and evidence in relation to the rejection with the Registry Unit within 90 days from the date of rejection notice.
During the examination period, the applicant can apply for amendment of the application for trademark registration in written form to the Registry Unit. （ Article 12 ） of the regulation under STEA.
39 The difference between two systems, If the trademark applications for registration fall under the above mention and not meet the requirement for registration, the examiner will be refusal. If the applicants not satisfy with the decision for refusal trademark application for registration by examiner, they can appeal against the decision for refusal. Whether the trademark systems in Laos we don’t have provision for appeal against decision to refusal, but in case of refusal, we also give the opportunity to applicant to amend the mark or submit evidence to IP office for reconsider again. If all problems could not solve, the examiner will make consultation meeting with senior official. All matters are not overcome, then the decision to refuse trademark application for registration.
16. Requirement for the trademark Registration. ◈ In Japan, a person desiring a trademark registration shall submit a request to Commissioner of Patent Office the request shall state the following: 1. The name and the domicile or residence of the applicant for the trademark registration. 2. The trademark for which registration is sought. 3. Designated goods or designated services and the class of goods or services. 4. A trademark registration consisting three-dimensional shapes the request shall contain a statement of that effect. The statement of the trademark for which registration is sought, any part is in the same color as a section for a trademark shall be deemed not to form part of the trademark （ Article 5 ）.
◈ In Lao, the requirement of application for trademark registration shall be only used for registration for registration of trademark shall contain: 1. An application for the registration of trademark. 2. ten （ 10 ）specimens of the mark presented on good quality paper by drawing or printing images. The size of the specimens shall not be less than 4x4 cm and not more than 8x8 cm. In case of the trademark consist of one color or several colors, such a color or colors shall be clearly identified. 3. A power of attorney （ if the application for trademark registration is applied through
40 an authorized representative ） 4. In case the priority date is claiming for in accordance with the Paris Convention on the Protection of Industrial Property, documents evidencing the filing date of application for trademark registration is first filed should be accompanied with its application. 5. The rules governing the use of the mark （ in case of the collective mark ）. 6. The receipt of the prescribed charges for trademark registration and other services.
17. Effect of Trademark Right. ◈ In Japan, trademark right shall have an exclusive right to use the registered trademark with respect to designated goods or designated services, However the trademark right shall not apply to the extent that the owner’s right has exclusive right to use the registered trademark （ Section 25 ）and the trademark right comes into force upon the registration of its establishment. After examiner’s decision of registration and registration fee due to be paid within 30 days from the date of the transmittal of the examiner’s decision
◈ In Lao, the effect of the trademark registration confers the following rights on the owner: the exclusive right to use the trademark or to authorize another to use it in compliance with the law, and the right to institute court proceeding against any natural or legal person who infringes the trademark or who uses it without consent. The right of registered trademark owner, or any consent he gives to another, shall not extend to other acts carried out in Laos with respect to the goods and services.
The owner of the registered trademark will have the exclusive after the registration.
18. Decision to register a trademark. ◈ In Japan, where the examiner is not found the season to refuse a trademark application within the time limit prescribed by Cabinet Order, then he shall render a decision that a trademark is to be registered （ Section 16 ）and the following particular shall be published in the Trademark Gazette（ Section 18 ） - Name and domicile or residence of the owner of the trademark right. - Number and date of the trademark application.
41 - Contents of the trademark stated in the request. - Designated goods or designated services. - Other necessary particulars.
Only within two months from the date of publication of the Gazette, any person may be filed an opposition to Commissioner of Patent Office and also during the said period, the commissioner allow public inspection with attached documents.
◈ In Lao, after receiving application for trademark registration, where the examiner could not find any reason for refusing application or the trademark is not felt into one of the paragraph concerning article 12 of the Prime Minister’s Decree on trademark, then the examiner will decide that trademark is to be registered. Within six （ 6 ）months the certificate of trademark registration will be issued, record the registered trademark on the trademark Registry and publish the registered trademark on the official trademark gazette.
In case of an applicant who has registered a trademark of the same kind in a foreign country, he has the right to appeal the priority date during the filing of an application for registration in the Lao PDR, but his application may be attached with a reference according to the international principles and laws or regulations of the country concerned relating to the protection of intellectual property.
In the examination process in both countries, if the trademark examiner could not find the reasons for refusal, then the decision to register has been done. In Japan after establishing of trademark right and content of the trademark will be published in trademark gazette within two month for public inspection. During this time any person can file the opposition, where the trademark registration system in Laos from filing application and do substantive examination within six months, if there is no reason for rejection, the trademark will be registered, granting certificate and publish on Official Trademark Gazette. In Japan, the registration fee will be paid after decision to registration of trademark within the adequate time limit. But in Laos registration must be paid when filing trademark application.
42 19. Term of Renewal registration. ◈ In Japan, the term of a trademark right is 10 years from the registered date of its establishment. The term can be renewed upon request for the registration of a term renewal for trademark right need to be filed within six month prior to the term expiration date and may be filed alter six month following the term expiration. In case, the request for the registration of renewal is not filed after six months of the date of expiration due to reason outside of one’s control. A request can be made within 14 day （ or two months for a resident abroad ）but not more than six months from the expiration of the above period. In such case, however, a surcharge must be paid in addition to the normal registration fee.
◈ In Lao, the registration of trademark can be renewed every ten (10) years. The renewal application must be filed within six (6) months prior to the expiration of the registration. Late renewal can be made within not exceeding six (6) months after the expiration of the validity. The Certificate of Renewal will be issued, recorded in the Trademark Registry and published in the Official Trademark Gazette. Both countries are member of Paris Convention which the renewal should be done before six months and belatedly within six months from the expiration date. As in Japan has the system for restoration of trademark right in case the applicant is unable to make a request for registration of renewal within adequate time limited, this system will give the applicant more 14 days for resident and two months for non- resident from the date of the reasons ceased to be applicable. In this case in Laos we don’t restoration of trademark right. The registered trademark should be renewed 6 months before the due date. It also allows renewal within a grace period of six months with submission of reason for delay.
20. Opposition System. ◈ In Japan, only two months from publication of the Gazette containing the trademark, any person may file an opposition to Commissioner of Patent Office that the trademark registration falls under any of the mentioned paragraphs, 1. where the trademark registration has been effected contrary which is not distinctive （ Section 3,4（ 10 ） ）. 2. An opposition concerning with the examination and a ruling shall be conducted by a collegial body of three or five trial examiners. 43 3. The trademark right shall be deemed never to have existed, if it become final and conclusive. 4. Where it is not found that the trademark registration in the opposition fall under any paragraphs of section 43bis（ 43-2 ）the trademark registration is to be maintained by the trial examiners.
◈ In Lao, we have not had any provision for opposition yet.
Chapter V. Opposition System in Japan 1. Opposition to registration. 5 ◈ In Japan, within two months from the date of publication on the Trademark Gazette containing the registered trademark, any person may write opposition against the registration has been filed to Japan Patent Office. if there are two or more items of designated goods or designated services are covered by trademark registration, the opposition may be filed with respect to each of such designated goods or designated services.
The opposition may make on the ground that the trademark registration falls under the following reasons: 6
Violation of registrability of trademarks （ Section 3 ） Violation of reason of unregistrability （ Section 4（ 1 ） ） Violation of reason of unregistrability （ Section 7（ 2 ） ） Violation of the first-to-file rule （ Section 8（ 1 ）（ 2 ）（ 5 ） ） Violation of provision prohibiting re-registration of cancelled trademarks （ Section 51（ 2 ）, （ Section 52-2（ 2 ）and 53（ 3 ） ） Violation of the enjoyment of trademark rights by foreign nationals （ Section 25 of the Patent Law applied under Section 77（ 3 ）of the Trademark Law ） Infringement of the provisions of the Trademark Law Treaty, Paris Convention and relevant Treaties.
5 Japanese Law relating to Industrial Property published by AIPPI.JAPAN./2006 and Prime Minister’s Decree on trademark Registration in Laos No/06/PM , January 18, 1995
6 http://www.wipo.int/export/sites/www/sct/en/comments/pdf/sct17/jp_2.pdf 44 Registered defensive trademarks （ Section 68（ 4 ） ） Violation of requirements for defensive mark registration （ Section 64 ）
2. Opposition Proceeding. In Japan, a person filing an opposition to a trademark registration shall submit a written opposition to the Commissioner of the Patent Office stating. The written opposition statement may contain the fallowing information: 1. The name and the domicile or residence of the opponent and his representative; 2. The grounds for making the opposition and indication of the supporting evidence. 3. An amendment of the written opposition submitted under the preceding subsection shall not change the gist thereof. However, this shall not apply to an amendment made to the matter prescribed in Paragraph （ iii ）before a lapse of 30 days after the expiration of the time limit prescribed in Section 43 bis. 4. When the written opposition is filed against a trademark registration, one copy of the opposition will be sent to the owner of trademark right. The owner is required to submit a statement when a notification of reason for revocation is served.
In order ensure the examination after decision to register by examiner, the JPO will lay open trademark application for public inspection, particularly, it will give the opportunity to the third party to file an opposition against trademark registration. Whether the system in Laos do not have the provision for making opposition, don’t give the opportunity to the third parties file the opposition against the decision to registered trademark. Even we do not have specific provision for the opposition, any complaints or petitions can file to IP office. The writer think that IP office also gives the opportunity to any persons who are not satisfy with any IP office decisions. The writer thinks that in the future if we have such kind of system, it would be more enhance trust and confidence in the trademark registration for public interest inspection.
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Chapter VI. Trial System in Japan. 1. Trial against examiner’s decision of refusal. 7 A person who received an examiner’s decision that the trademark application is to be refused and is dissatisfied may file a request for a trial against the examiner’s decision of refusal within 30 days from date of transcript of examiner’s decision has been served. In case the request is unable to file with adequate time limit the said person may file the request with 14 days （ two months from non-resident ） but not more than six month after the expiration of the time limit.
2. Trial against examiner’s decision of dismissal of amendment. Any person who is dissatisfied a decision of dismissal amendments under [ Article 16-2（ 1 ）] may file a request for a trial against decision within 30 days from the date of the transcript of the decision has been served. This provision shall not apply where a new application for trademark registration provided in Article 17-2（ 1 ）of this Act is filed.
3. Trial for invalidation of trademark registration. A trial for invalidation of the trademark registration may be filed where the trademark registration falls under any of the following items: A. where the trademark registration has been made in violation of Article 3,4,7,8（ 1 ）,8（ 2-5 ）,51-52（ 2 ）, 53（ 2 ）. B. Where the trademark registration has been made in violation of treaty. C. Where the trademark registration has been made on an application for trademark registration filed by a person who has not succeeded the right deriving from the application for trademark registration. D. The holder of trademark right has become unable to enjoy the trademark right pursuant to Article 25 of the Patent Act or trademark registration has become in violation of treaty.
7 Japanese Law relating to Industrial Property published by AIPPI.JAPAN./2006 46 E. where the registered trademark has become a trademark that fall under any of Article 4（ 1 ）（ i - iii, v, vii and xvi ） G. where, after the trademark registration as collective trademark, the trademark right holder has ceased to be an Association or registered trademark has ceased to be well-know among customers or fall under any of items of Article 7-2（ 1 ）. A request for trial under preceding paragraph may be filed after the extinguishment of the trademark right. Where a request is to be filed the chief trial examiner will notify exclusive right holder to use in connection with the trademark right.
4. Trial for cancellation of trademark registration. ◈ In Japan, any person may be filed the request for trial for rescission of trademark registration when the trademark registration is effective. The registered trademark in connection with the designated goods or designated services for three consecutive years or longer by the holder of trademark right, or non-use exclusive right has used the registered trademark in Japan with designated goods or designated services pertaining to the request within three years prior to the registration of the request for the trial. Or due to illegal use by trademark owner of the use exclusive right, or a holder of trademark right intentionally uses as similar to a registered trademark in connection with the designated goods and designated services in a manner misleads the quality of goods or services or cause confusion. Where the ground is found, the trial examiners shall make a decision of cancellation, the applicant can take an action to the Tokyo High Court. （ 50, 51, 52bis and 53bis ）
There is no specific provision for trial system in Laos mention in legislation for the invalidation, cancellation and trial against the examiner’s decision for dismissal amendment, any petition can file to IP office. Concerning the cancellation of registered trademark, if the owner of trademark did not use for five consecutive years, the third party can submit the written and evidence in order to appeal for cancellation of trademark registration and in case of the certificate of registration is expired. As Japan Patent Office has the Trial Board who is conducting the trial documents from the third parties filed through JPO.
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Chapter VII. Defensive mark, Collective mark, Publication and Re-classification. 1. Defensive mark. 8 The purpose of a defensive mark registration is to protect a famous mark beyond the limited scope of an exclusive right established by ordinary trademark registration to use the mark for the designated goods or service.
◈ In Japan, the defensive trademark system allow the owner of trademark right, when his registered trademark in respect of goods has become well-know among consumers as indicating the designated goods as belong connected with his business and when the use of the registered trademark by any other person in respect of goods other than the designated goods covered by the registered trademark and goods similar thereto or services similar to the designated goods is likely to cause confusion between such goods or services and the designated goods in connection with his/her business, obtain a defensive mark registration of a mark identical with the registered trademark with respect to goods or services for which such possibility of confusion exits.
1.1. Conversion of applications. - An applicant may convert his/her ordinary application for trademark registration into an application for registration of a defensive mark and from application for registration of a defensive mark into ordinary application. - An applicant may not be converted under the preceding subsection after the examiner’s decision or the trial decision with respect to the application has become final and conclusive. - Section 10（ 2 ） and （ 3 ）and 11（ 4 ）shall apply mutatis mutandis to the case of conversion of an application under subsection（ 1 ）.
1.2. Term of right based on defensive mark registration. The term of right based on a defensive mark registration shall be 10 years from the
8 Japanese Law relating to Industrial Property Published by AIPPI.JAPAN/2006 48 date of the registration of its establishment. The term of the right based on defensive mark registration may be renewed by making a request for registration of a renewal of its registration. When a registration fee has been paid, the renewal of the term of the right based on the defensive mark registration shall be registered （ Section 65 ter ）. Upon the registration under the preceding subsection, the following will be published - Name and domicile or residence of the owner of the right based on defensive mark registration - The number and date of registration
49 9 2. Collective Trademark. 2.1. Introduction of the collective trademark System 10 ◈ In Japan, collective trademark is a trademark which a collective （ corporation, a business cooperative society or an association ） allow members to use. A collective trademark clearly identifies the source of the goods or services as being related to the members of the collective. Section 7bis of the Paris Convention for the Protection of Industrial Property, Japanese was first added to the provision of the Japanese Trademark Law in 1922 as ‘’ collective system ’’. But in 1959, this provision was deleted with the introduction of the licensing system since the new system was deemed to accord substantial protection to collective trademarks. The recently amended Japanese Trademark Law of 1996 once again reincorporated provision which is specific to a collective trademark system, in recognition of the different attributes possessed by a collective trademark when compared to an ordinary trademark, and to ensure international harmonization with trademark systems in other countries. a. Individual members （ business ） can not register the trademark. A collective trademark is registered by collective. b. From the beginning, the trademark is expected to be used by a member who differs from the trademark right owner （ collective ）
2.2. Requirement for the collective trademark registration. The condition for registration stipulated in section 7 of the Japanese Trademark Law. - Incorporate associations or business cooperation associations established under the provision of （ Article 34 Civil Code of Japan ）and other associations established under the special Law （ excluding which are not legal entities ） - The trademark for which the trademark application has been filed is the trademark that is for use by the members. - Document must be submitted to prove that the applicant of the trademark application is a legal collective as defined in section 7（ 1 ）of Japanese
9 Japanese Law relating to Industrial Property Published by AIPPI.JAPAN/2006 10 http://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/pdf/27-01.pdf 50 Trademark Law. 2.3. Conversion of application. 11 An applicant may concert his collective trademark application into an ordinary trademark application, or an applicant may concert his ordinary trademark application into a collective trademark application （ Section 11 of the Japanese Trademark Law ）
A person who convert an ordinary trademark application into a collective trademark application pursuant to Section 11（ 2 ）of the Japanese Trademark Law must submit the documents that are required under the provisions of Section 7（ 3 ） of the Japanese Trademark Law （ a document proving that the applicant is a legal entity referred to in Section 7（ 1 ）of the JTL ）
Moreover a trademark right may fall under a collective trademark, the content and scope of that the trademark right are basically identical to that of an ordinary trademark right. However, because of the unique attributes of a collective trademark with respect to the transfer of the right （ Section 24ter of JTL ）and the members’ right to use the registered trademark （ the trademark owner can not prohibit a third party from using the trademark, Section 31 bis of the JTL ）The provision stipulate that the collective trademark right must be handle differently from an ordinary trademark right.
◈ In Lao, special articles refer to Decree Article 9, and Regulation Article 7. A collective mark must meet the same requirements as a trademark except that is filed by a specific class of applicant. If follows then that a collective mark is any visible sign capable of distinguishing the goods or services of an enterprise.
The owner of a collective mark may be: - A group of management committee, association or union whose members use the collective mark but the owner of the mark does not use it, or - An entity which maintains the standard of the mark while sanctioning its use by different enterprises not connected to the owner. When filing an application to register a collective mark, the owner must provide,
11 http://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/pdf/27-01.pdf 51 in addition to any other requirements for filing a mark, the rules governing the use of the collective mark. While the owner does not use the mark, the associated members or separate entities are deemed to be using the collective mark as long as the use is in accord with the rules filed with the application.
The examiner will need to scrutinize the rules to ensure that the applicant/owner has control over the use of the mark. The rules must not be so stringent that they cannot be met by those who wish to use the mark nor so controlling that the users are not able to produce the goods or provide the services without constant supervision from the owner. Nor should use of the mark contain prohibitively high charge to those who are intending to use the mark.
Rules governing the use of the collective trademark must be filed with Trademark Office. If the trademark is assessed as being registrabble the owner of the trademark permits its use in accordance with the rules.
3. Publication on Trademark Gazette. ◈ In Japan, when a trademark applications are filed, the Commissioner of Patent Office shall publish unexamined application （ Section 12 ）and upon registration of a trademark, particular in the said Law shall be published in Trademark Gazette （ Section 18（ 3 ） ）and also Patent Office shall publish on the trademark Gazette which contain the following content: 1. A decision that trademark application is to be refuse, or abandonment, withdrawal or declining of an application for trademark registration or for the defensive mark registration, which is made after the application having been laid open. 2. Succession to right resulting from and application for trademark registration, which is gained after the application having been laid open. 3. Amendment for designated goods or designated services stated in an application or for the trademark registration is sought. 4. Extinguishment of a right （ excluding extinguishment due to the expiration of the term or falling under section 41bis （ 41-2 ）（ 4 ） ） 5. An opposition to trademark registration or demand for a trial or a trial and 52 their withdrawal. 6. Final and conclusive ruling on an opposition to trademark registration and final conclusive decision of a trail or a retrial. 7. A final judgment in an action under section 63（ 1 ）
◈ In Lao, for the publication of trademark application, after filing application of trademark, the Science Technology and Environment Agency（ STEA ）proceed to receive and examine the application for registration. According to the Prime Minister Decree on trademark and regulation not mentioned the publication un-examination after filing application for public inspection like in Japan, but we will public the result of registered trademark and renewal in the Trademark Official Gazette. The writer’ opinion, in the future, if the number of domestic applications is increasing, it the IP office lay open the un-examined application for public interest inspection, it will be ensure and confident for trademark examination.
The difference between two systems, which Japan will publish unexamined application after filing and after decision to register trademark within two month for public inspection on Official trademark Gazette. In Laos do not publish unexamined application but we will publish only the registered trademark and renewal on the Official Trademark Gazette.
4. Re-classification of goods designated under former classification. 1. 1. Purpose of re-classification of goods designated. Japan has become a member of Nice Agreement in February 1990 and has been adopting the International Classification （ current classification ）since April 1, 1992 as the major classification system instead of the Japanese original classification （ former classification ）system continued to be applied after the establishment of the first Trademark Law. ‘’ Re- classification ’’ is the system by which the designated goods as applied to trademark applications filed before March 31, 1992 （ Trademark Rights under the old classification under Trademark Law of 1899, 1909, 1921 and 1959 ）were reclassified under the International Classification （ Section 2, Supplementary Provision to the
53 Japan Trademark Law ）.
1.2. Requirement of re-classification. The former classification is different from the current classification in class organization and complicated scopes of rights unclear, and caused other problems.
1.3. Application Period. An application for registration of re-classification are to be made during the period following the starting date of acceptance 6 months prior to the first expiration date up to one year after expiration date. JPO will send notification that the period for filing an application fore re-classification registration is nearing the end to the trademark right owner whose right is subject to re-classification. An application for registration of a re-classification for designated goods will be accepted on a date after April 1, 1998 as designated by Commissioner of the Patent Office.
5. Well-Know and famous mark in Japan. The Patent Office has published a list of established famous and well-know mark on the Internet. The list include two kind of trademark : a trademark which have been registered as defensive marks, the other being trademarks which have been recognized as famous or well-known trademark in decision rendered by Trial Board of the Patent Office or the courts. There no system to register famous and well-known trademark in Japan. Within the laws of Japan, in particular the trademark Law and unfair competition prevention Law has been enacted related to well-known and famous trademark.
1. Japanese trademark Law relating well-known trademark. 12 Provision which relate to protection of well-known and famous trademark have existed in the trademark law since long times ago and the requirement for adopting these provisions were interpreted rather flexible so as to achieve the very purpose to
12 Japanese Law relating to Industrial Property Published by AIPPI.JAPAN/2006 54 prohibit any unfair practice in this field so that they would be used more effectively until they reached their present form. - Relating Japanese trademark Law section 4 of the trademark Act list 16 categories of trademark that are unregistrable on the ground of public interest or for the purpose of protecting private interests of the consuming public, even though they meet the requirement of distinctiveness under Article 3. Article 4 （ 1 ）（ x ）makes unregistrable ‘’ A trademark which is well-known among consumers as indicating the goods or services related to the business of another person or a trademark similar to it and such trademark is to be used for those goods or services or goods or services is similar to them ’’ it should be noted that Article 4（ 1 ）（ vi ）and （ viii ）incorporates the adjective ‘’ famous ’’ in respect a mark used by a public or non profit entity as well as a pseudonym of a person or abbreviation of his real or pen name.
- Article 64（ 1 ）of the Trademark Act entitles the owner of a trademark to obtain a defensive mark registration, when its registered trademark ‘’ has been well-known among consumers as indicating the designated goods relating to its business and if another person uses the registered trademark ’’ for dissimilar goods or services and ‘’ thereby confusion is likely to be created ‘’ The term ‘’ well-know ’’ use in Article 64（ 1 ）should be interpreted to mean ‘’ famous ’’
The unfair Competition Prevention Act list, in the definition of ‘’ unfair competition ’’ under Article 2（ 1 ）, 12 categories of acts of unfair competition including: （ i ）An act of using an indication of goods or other matter （ meaning the name, trade name, trademark, mark container, or packaging of goods or other indications of goods or business pertaining to the undertaking of a person ）identical with or similar to the indications of goods or other matter of another person which is well-know among consumers and thereby causes confusion with the goods or business of such another person and （ ii ）An act of using, as the indication of one’s own goods or other matter, an indication identical with or similar to the ‘’ famous ’’ indication of goods or other matter of another person or of assigning, delivering, and displaying for the purpose 55 of assigning or delivery, exporting or importing goods on which such an indication of goods or other matter is used. The terms of ‘’ famous ’’ and ‘’ well-know ’’ are correctly distinguished. Under Article 2（ 1 ）（ ii ）, confusion is not required is not required for the protection of ‘’ famous ’’ marks. The old Unfair Competition Act prohibited the unauthorized use of ‘’ well-know ’’ marks which create confusion as to the goods and business establishment or activities respectively under Article 1（ 1 ）（ i ） and （ ii ）. Thus, the courts were required to interpret ‘’ confusion ’’ very broadly as is discussed below. Protection well-known trademark in Japan not only fulfills the obligations under Article 6bis of the Paris Convention and Articles 16（ 2 ）and 16（ 3 ）of the TRIPs Agreement, but goes beyond their limited scope.
In Laos, such the defensive mark does not provide in the legislation as Japanese Trademark Law when his/her registered trademark in respect of goods and services has become well-known among consumers as indicating of designated goods or services being connected with his/her business and when the use of the registered trademark by other person in respect of goods and service covered by registered trademark which is likely to cause confusion. From this view point the applicant may apply for registration of addition classes of goods or services, but procedure for registration of marks is the same as regular mark protection.
◈ In Laos, there is no system for protection of well-known mark yet. The writer thinks that, in the future the number of domestic well-known trademark would be increasing, in order to prevent the third party trademark which is well-known among consumers, the IP office should be taken consideration system for the protection of well-known mark under unfair competition Law.
56 13 5.1. The criteria when is a mark ‘’ Famous ‘’ or ‘’ Well-Known ’’ 14
The patent office must refuse the registration of a trademark applied for if it is identical or similar to a well-known trademark of another used for identical or similar goods or services under Article 4(1) (x) of the Trademark Act.
The trademark Examination Standards set forth the following rules: 1. (x) ‘’ A trademark which is well-know among consumers’ referred to in this item applies not only to a trademark well-known among the end-users, but also to a trademark well-known among traders. It also applies not only to a trademark known throughout the country, but also to a trademark well-known in particular region;’’
2. A trademark to be cited when the provision of this items applied must be well-know among consumers in Japan at the time of the filing of the application for trademark registration ( See, Article 4( 3));
3. With respect to the method of proof in the application of the provision of this item, Chapter 2( Article 3( 2)), Section 2( 1) and ( 2) of the Examination Standards are applicable mutatis mutandis;
4. With respect to a trademark for goods which are handled by a special manner of transactions ( Such as goods distributed in a specific market like pharmaceutical products for medical treatment ) the practical aspects of the transactions of such goods should be taken into full consideration in the aforementioned method of proof and the finding of a well-known status ( shuchisei ) based on such proof;
5. In the finding of the well-known status of a foreign trademark in Japan, materials showing that the trademark is well-known in foreign countries and that the goods are exported to a number of countries must be taken into full consideration if such materials have been presented.
When a well-known trademark is registered, an exclusive right to use the mark is established for the designated goods or services, just like any other trademarks
13 Japanese Law relating to Industrial Property Published by AIPPI.JAPAN/2006 14 Source: Famous and Well Known Marks. ( An international analysis by Frederick W.Mostert, Published in 1997)
57 which are not well- known or have not been used at the time of filing. The owner of a ‘’’ famous’’ trademark may, in order to prevent third parties from using its trademark for non-designated goods or services and thereby crate confusion, obtain a defensive mark registration under Article 64( 1) 15
The Trademark Examination Standards interpret the term ‘’ well-known’’ as used in Article 64(1) and set forth the following criteria for the filing of this status:
1. Where ( a registered trademark ) has been well-known among consumers means where it has become famous; 2. The standards for the determination of fame ( chomeisei ) shall be as follows: (1) When the use of the registered trademark under application for defensive mark registration ( hereinafter referred to as the ‘’ original registered trademark ’’) commenced, the period of its use, the area of its use, the scope of the goods or services for which it is used and other relevant facts shall be considered; (2) The degree of advertisement, promotion, etc. of the original registered trademark or its coverage shall be taken into consideration; (3) The size of the business enterprise of the right holder of the original registered trademark, its business activities (such as production or sales activities), and the goods handled by the enterprise shall be considered, in addition, the condition of the enterprise shall be reviewed; (4) Whether or not the fame of the original registered or not the fame of the original registered trademark is an indisputable fact (kenchona Jujitsu) shall be examined by the Patent Office.
5.2. Parameter when trademark becomes famous and well-known. Under both the Trademark Act and the Unfair Competition Prevention Act of 1993, the two adjective ‘’ famous ’’ and ‘’ well-known ’’ are distinguished. Article 4( 1)( x) of the Trademark Act prohibits registration of a trademark identical or similar to a well-known trademark for identical or similar goods or services. For a well-known trademark to be protected under Article 4( 1) ( x), registration is not required.
If the well-known trademark is registered, registration of an identical or similar
15 Source: Famous and Well Known Marks. ( An international analysis by Frederick W.Mostert, Published in 1997)
58 trademark is prohibited under Article 4(1) (xi) which is applicable to registered trademarks of earlier application. Thus, the adjective ‘’ well-known ’’ is used when protection against possible use for competing goods or services is at issue.
When a registered trademark has become well-known and its owner obtains a defensive mark registration for goods or services other than goods or services designated in the original trademark registration, it can prevent registration of an identical trademark for goods or services designated in its defensive mark registration under Article 4(1)(xii)
59 16 Chapter VIII. Trademark Examination System in both countries. 1. Organization of division relate to trademark examination. 1.1. Role and duties of Japan Patent Office.
The JPO deals with the Protection of Industrial Property right including patent, utility model, design and trademarks. The JPO also provides information related to IPR and responds to general inquiries. The Japan Patent Office contains the General Affairs Department, Examination Departments, and the Appeal Department, etc. The JPO are promoting the following measure towards development of Japanese Industrial property policy; international cooperation and negotiation; revisions of industrial property system; and upgrading and expanding of industrial property information, etc.
The main functions of these departments are included: ￭ General Affairs Department: General coordination of JPO affairs ￭ Trademark, Design and Administrative Affairs Department: Acceptance of application, formality examination, registration, maintenance and administration of the information system and examination of design and trademark applications. ￭ First Patent Examination Department: Examination of inventions related to the extraction and processing of agricultural, forestry and livestock products, as well as construction, unclear energy, measurement and office products. Second and Third Patent Department deal with examination of inventions related to machinery and chemistry. ￭ Fourth Patent Examination Department: Examination of inventions related to electrics and communications. ￭ Appeals Department: Dealing with appeal/Trial concerning industrial Property right.
1.1.1 Granting Exclusive Rights to Patents. The Patent Office receives an application from anywhere in the world, the examiners
16 Source: Famous and Well Known Marks. ( An international analysis by Frederick W.Mostert, Published in 1997) http://www.jpo.go.jp/shoukai_e/index.htm 60 must be examine the filed documents with strictly from the viewpoint of technological and legal standards, could be granted or objection an application. A trial hearing will be conducted according to a strict procedure, which is based on the Code of Civil Procedure by an examiner during a first trial hearing instead of a District court hearing. 1.1.2. Drafting Plans for Industrial Property Policies. Another role of the JPO is to plan and design a policy for Industrial Property Rights, Which is the country is on the threshold of a creative age requiring an Intellectual Property Policy for Twenty First Century. - Expending the subject of Protection of Intellectual Property Rights, - Revising the amounts for compensation for damages, - Promoting the activities of universities and research institutions, - Activating dormant patent, and other promotional activities.
1.1.3. International Exchange and Co-operations. The JPO dispatches experts and seminar instructors specialized in various areas of intellectual property rights to developing countries through WIPO Fund in-Trust/Japan1 and Japan International Cooperation Agency (JICA). The dispatched experts mainly provide on-site instructions regarding examination practices, computerization, more than 2,287 government and civilian trainees from 42 countries. Besides that JPO invites those who are taking or who will be taking leadership in the field of intellectual property in the developing countries to Japan for six months as part of the WIPO Funds-in-Trust/Japan operations to offer an opportunity for self-initiated studies on intellectual property and achievements of the major meetings in Asia and Pacific region managed by the WIPO Funds-in-Trust/Japan.
Now Japan is a member of the following multilateral agreements:
• Paris Convention, TRIPS Agreement, Madrid Protocol, Trademark Treaty and Nice Agreement.
1.1.4. Improving the System for Industrial Property Rights and improving the system operation. Japan Patent Office revised legal ordinance and amends regulations, revises its 61 guidelines for examination (software technology, bio-technology, etc.), to create a system suitable for its functions.
1.1.5. Dissemination of Information about Industrial Property Rights. General information relating to industrial property rights, information for meetings, etc., relation to industrial property rights, is published in electronic format (CDROM), which circulated as information about industrial property rights, and is available for inspection in reading rooms.
1.1.2. JPO Chart. 17
17 http://www.jpo.go.jp/quick_e/index_sh.htm 62 2. Procedure of obtaining Trademark Rights in Japan.
18
18 http://www.jpo.go.jp/quick_e/index_sh.htm 63 3. Explanatory note of examination process in Japan.
Japanese trademark system is a first -to -file system especially a trademark application filed prior to other applications for identical or similar trademarks will be registered trademark owner should file the application as soon as possible in order to secure an earlier filing date.
■ In Japan, when the trademark application is filed for registration, the Patent Office will be published in accordance with the system for laying-open applications, then the application will be examined to determine whether it fulfills the necessary procedural and formal requirement, if there is some documents missing or required sections have not filled, the invitation for correction will be sending to applicant in order to give an opportunity submit written correction or written amendment documents at adequate time limit, prescribe by Cabinet Order.
➣ If the applicant not submit the written correction or amendment adequate time limit prescribe by Cabinet Order, the trademark application will decide for dismissal then the
All applications are examined to determine whether they meet the substantive requirement, particular the examination is made regarding the distinctive of a mark and its similarity to a third party’s prior registration application
During substantive process, if the examiner have found the reasons for refusal, then the examiner will issue a preliminary notice of refuse and the applicant can file an argument or amendment to overcome the official notice within forty（40）days. If the reasons for refusal are not eliminated, the decision of rejection will stand.
The applicant fails to file a written argument against a notice of reasons for refusal, the examiner think it is not necessary to withdraw the notice of reasons for refusal and then the examiner will issue a decision of refusal for the trademark application and applicant may appeal against the examiner’s decision for refusal. The applicant may institute an appeal against the decision of refusal with Trial Board of the 64 Patent Office within thirty (30) days from the transmittal of the examiner’s decision. (Article 44 of The Trademark Law).
➣ The appeal is examined by three Trial Examiners based only upon the reasons for the appeal and the evidence filed by the applicant. An official decision regarding an appeal is generally issued about 18 months or later, after filing of the appeal. It official decision is issued upon completion of examination then the decision to maintain the registration.
➣ In case the decision of revocation, the applicant is dissatisfaction with that official decision can filed a court action to Tokyo High Court in order to seek the revocation of decision.
As the reasons which a decision of refusal will be pertaining following cases: ➣ Trademark not be use in respect to goods or services in connection with the applicant’s business or one lacking distinguishing capabilities ( Article 3) ➣ Trademark identical to similar a prior trademark, or one falling under other ground of unregistrability (18 paragraph of article 4 ) . ➣ An application filed by a person other than the applicant qualified, as determined upon consultation or the drawing of lots in case there are two or more trademark applications are of treaties. ➣ Trademark not consisting of a single mark where goods or services are not designated, which prescribe classifications by Cabinet Order. (Article 6)
■ Decision to Registration. If there is no reasons for refusal or the applicant can overcome the official notice, an official decision for trademark registration will be done by examiner and the registration fee is paid by applicant within thirty (30) days from receipt of the decision of registration then the trademark right will be effectively established by the above. ▪ The registration fee may be paid in installments for the first five years and last five years respectively multiplied by the number of classes which is difference from a ten years total payment. 65 ▪ The registered trademark will be published in the Trademark Gazette for two months, any person can made opposition to grant of a trademark registration.
An opposition is to be submitted to the Commissioner of Patent Office within two (2) months from the date of publication of the Trademark Gazette. There no extension period is allowable, a notice of opposition must be filed within two months in order to secure title as an opponent. An opponent must file substantial reasons for the opposition and evidence supporting those reasons within three ( 3 ) months after that expiration of the opposition term.
The examiner of the Trial Board of the Patent Office will examine the opposition, if they consider it unreasonable, they will issue an official decision dismissing the opposition and maintaining the registration. In the order hand, if the examiner considers that the reasons is reasonable, they will send a preliminary notice of cancellation of the registration to applicant. Generally official decision is about six ( 6 ) months after filing of the opposition. An applicant who receives notification of decision canceling a registration and dissatisfied can file court action to Tokyo High Court seeking the revocation of the decision
As the reasons for filing an opposition as following: 19
▪Breach of requirements for trademark registration.(Article 3 of the trademark Law) ▪ Breach of unregistrable trademark （ Article 4 paragraph 1 of the trademark Law ） ▪ A breach of prior application (Article 8 paragraph 1, 2 and 5 of trademark Law) ▪ Prohibit of re-registration for a cancelled trademark registration ▪ A breach of eligibility for a foreign citizen ( Article 25 of Patent Law, applied in Article 77, paragraph 3 of the trademark Law ). ▪ A breach of treaties (Article 43bis, paragraph 2 of Trademark Law)
19 See: Industrial Property Right Standard Textbook published by Japan Institute of Invention and Innovation in March 2007 66 ■ Trial for Invalidation or Cancellation. In Japan, term of cancellation trial to indicate a cancellation action against a trademark registration based on non-used for three consecutive years in Japan with respect to all or some of the designated goods of the registration and the term of invalidation trial indicate action against a trademark registration based on a third person’s prior right to a similar mark or lack of distinctiveness. In order to seek the invalidation of trademark registration, it is necessary to demand a trial for invalidation of the trademark registration at issue with the Trial Board of the Patent Office. If the registrant find the good reasons justifying non-use of the mark. The cancellation trial will be accepted and the registration will be cancelled with respect to the goods sought to be cancelled.
Regarding an invalidation trial, it can be demanded only by a person who has a legal interest in the trademark registration at issue (unlike a cancellation trial which can be demanded by anyone). But procedure for the invalidation trial is the same as cancellation trial.
An official decision in an invalidation trial is generally received about 20 months after the trial are filed. An official decision in a cancellation trial based on non-used generally is about 10 months after are filed.
4. Special Examination.
4.1. Accelerated Examination System. 20 The accelerated Examination System for trademark is designed to protect the interest of the applicant when a trademark claimed in a filed trademark application requires an urgent granting of the trademark right because it is being used by a third party without the applicant’s permission. This system was introduced in September 1, 1997. Usually, from the time of filing application to a decision regarding registration, it takes a trademark application roughly 25 months to be processed. There are many case where the trademark application need to be registered urgently.
20 https://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/pdf/20-02.pdf , 67 The application that is subject to be the accelerated examination must be examined as soon as possible after a motion for an accelerated examination has been made.
（1）Trademark application subject to accelerated examination. When a trademark application meets the following conditions, that trademark registration can receive an accelerated examination:
A. When the applicant of the trademark application or licensee（ the person who has received the license from the applicant to use the trademark of the trademark application ） is either already using the trademark for the designated goods or designated services （ including parts of goods or part of services ）, or the preparation for using the trademark is already well advanced.
B. When the trademark right need to be granted urgently for the trademark application. ‘’ An application for which a trademark right must be granted urgently ’’ mean that there is a need for granting the trademark right, this situation may occur in any of the following cases:
1. When a third party is using the claimed trademark or a similar trademark or is well advance in the preparation for using the trademark or similar trademark without the authorization of the applicant or his licensee, for designated goods or services or similar goods and services that are already in use by the applicant or his licensee or in preparation for use have already made. 2. When a warning has been issued by a third party with respect to the use of the trademark under application. 3. When a third party is demanding that the applicant agree to his use of the trademark of the application. 4. When the applicant has also submitted the trademark for application to patent office other than the JPO or to an intergovernmental organization. 21
21 https://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/pdf/20-02.pdf 68 4.2. Procedure for submitting the explanation of circumstances concerning the accelerated examination.
A. Person who submits the explanation. The person who submits the explanation of circumstances concerning the accelerated examination for a trademark application that will be subject to the accelerated examination must be the applicant of the pertinent trademark application.
B. Submission of documents. 1. Submitted directly to the submission desk of the JPO 2. To send by the Commissioner of Japanese Patent Office by postal mail, indicating explanation of circumstance concerning the accelerated examination enclosed herein on the envelope. 3. The explanation of circumstances concerning the accelerated examination may be submitted anytime after the date when the trademark application that requires the urgent granting of the trademark right was submitted. 4. Each trademark application that require an accelerated examination must be accompanied by one explanation of circumstances concerning the accelerated examination when submitted. When the explanation of circumstances concerning the accelerated examination is submitted at the time that the trademark application is filed, the documents should not be attached to the request, but prepared and submitted separately. No fee will be charged when the explanation of circumstances concerning the accelerated examination is submitted.
C. Procedure for handling the explanation of circumstances concerning the accelerated examination. When the explanation of circumstances concerning the accelerated examination has bee submitted, the application will be reviewed to determine whether or not it warrants an accelerated examination. The trademark application that has been determined to warrant an accelerated examination will be examined speedily, and the examination process and following procedures will be promoted without delay. 69 If it has been determined that the application does not warrant an accelerated examination, a postcard notifying the reason for that decision will be sent to the applicant.
D. Disclosure in the trademark gazette. The following information will be publicized in the trademark gazette for trademark application that are deemed to warrant an accelerated examination.
1. The word ‘’ accelerated ’’ will be shown in the table of content of the trademark gazette. 2. The ‘’ explanation of circumstance concerning the accelerated examination ’’ will be give in the trademark gazette.
22
22 https://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/pdf/20-02.pdf , 70 4.3. The conducting of examination through interview. When the trademark application has been filed according to Principle only the document are examine, in order to facilitate adequate communication between examiner and the applicant and to promote speedy and accurate examination, the examiner need the applicant or representative give explanation by interview, telephone or other means to facilitate his understanding of the designated goods/services. At the same time the examiner will explain the reason for refusal or provide applicant with instructions for correction and the examiner may request the applicant to submit an appropriately written amendment. 23
The following cases may be conducted examination through an interview:
1. When it is difficult to understand the designated goods or designated service. 2. When the description given for the designated goods or services is unclear and amendment can be easily made. 3. When it is clear that the application falls under the conditions stipulated in section 4 （1）（xvi）of the Japanese Trademark Law. 4. When a notification of reasons for refusal has been sent under the conditions stipulated in section 4（1）（xi）of the Japanese Trademark Law, and the applicant makes an amendment in response. But the designated goods/services still infringes upon another trademark. However by reducing the scope of the designated goods or designated services the reason for refusal can be eliminated.
However, except for （1） and （2）, in principle examination through interview will be applied only to those trademark applications where no other reasons for refusal exist, and making necessary document will quality the application for a decision of registration.
23 http://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/pdf/20-01.pdf 71 5. Examination System in Practice in Lao. 5.1. Procedure of obtaining Trademark Right in Laos.
Application and fee received
Office Action Formality Check
Notification of filing Office Action date and number
Substantive Argument/amendments
Examination
Decision Registration
Issuance of certificate Argument
Publication Refusal
5.1.1. Explanatory note of examination process in Laos. The examination process in Lao PDR is administered by examiner and staff who are very knowledgeable in the provision set out in the Prime Minister’s Decree and regulation under Science Technology and Environment Agency on trademark registration. Filing trademark application, if a trademark applicant has an address in another country must make the application through an authorized representative in Lao PDR.
When the trademark application is filed at Department of Intellectual Property, the process will be done by examiner as following: 72 5.1.2. Formalities: The formalities are checked by the Registry Clerk when the applications are filed in order to review all the documents, if they are not in order, the examiner will inform the owner or agent in order to meet requirement of formalities. The formality requirement is following: - The name of the applicant (the applicant would be individual or legal entities). - One application consist of one mark and class; - Goods or services are identified of the trademark - Goods or services are identified as being a NICE class. （ the application form may specify the goods or services using the NICE classification to identify them in the correct class and so the application would need to specific number as well as a description of the goods or services and one applicant may claim all goods in one class, Virtually all filing under Lao PDR trademark legislation claim all goods or services in class of interest ） - 10 specimen which is good and clear reproductions of the trademark; - If the owner/applicant is an overseas entity, that an authorized is acting in the matter; - The correct filing fee is paid; - The power of attorney; - Deed of substitution
Whether the trademark or collective mark, the rule of an organization filing an application for a collective mark are filed, the documents accompany with application can make photocopies or duplicated that the filing number on which the original can be found is noted on them.
Besides, in formalities process whether the trademark application met formalities requirement, the mark is a combination of a figurative element and a word, the word may be the key element. The formalities examiner put the Vienna Classification in order to help examiner in searching prior trademark registration in Lao PDR. ☞ if the application is filed, it is not in order or met formalities requirement the formalities examiner will inform the owner or agency to submit the correct documents
73 within three （ 3 ） months are provided to rectify the problem and bring the application into order.
5.1.3. Substantive Examination. In order to ensure the application meets the requirements, there are two types of examination:
- Ensuring all formalities of the filing are in order, and - The trademark or collective mark meets the requirements of the Decree or regulation. The examiner will take another look at the formalities requirements to ensure they are in order and examination for registrability under Article 12 of the Decree. Then examination will be done by examiner, search using the WIPO trademark system which has been set up past few years ago. If there are any problem found during the examination are collated, the examiner will report of all problems is prepared for the owner through the Agent within three （ 3 ） months.
☞ The response is received it is considered, if the matters are put order and no problems remain then the trademark application proceeds to registration.
☞ If the response are not in order, the application will be refused. Some case not only examiner can decide to refuse application for registration but also bring case making consultant with Director of IP Department.
74 5.1.4. Decision to registration and publication trademark right.
Whether the trademark application for registration is meet substantive requirement, there no reasons for refusal, the trademark right will be registered in Registration section, not more than six months for new filing applications will be issue certificate of trademark registration. After registration of trademark right, will be published on Official Trademark Gazette.
6. Comparative trademark system and the difference between two countries.
Title TRADEMARK SYSTEM IN JAPAN TRADEMARK SYSTEM IN LAOS Difference from JP
First to file system: First to file system:
Where two or more trademark application file the Where two or more persons file
same date only one completed application, application for the trademark
agreed upon after mutual consultation among registration or indicating similar
Trademark system applicants or the application file different date trademarks of the same kind, priority
only earliest applicant may obtain trademark shall be considered and give right to
registration. a person who has first filed the
completed application and also in
the Article 15 of Decree which allows
an application to claim the filing date
of an overseas filing for the same
trademark relating to the same
goods or services.
Definition of trademark A trademark is any character, figure, sign, any combination thereof, or any combination thereof with colour which
is used in respect of goods or services by a person.
Type of Trademark Trademark, services mark, three dimensional Trademark, services mark, collective Three dimensional protection mark, collective mark and defensive mark and mark and certification mark. mark and defensive
mark are not
protected
75 Unity in application Application for trademark registration shall relate Application for trademark Protection all
to single trademark, designated goods/services registration shall relate to single goods/services in
two or more in one application and can be trademark, can be claimed specify single application
designated multi-classification in single the goods or services, or applicant
application （multi-classification application may claim all goods or services in
system ） single application and class.（single
class application system ）
Documents required Document required when filing trademark application consist of Power of Attorney, a certificate established that when filing application the applicant is engaged in business relating to goods or services and specimens of mark. The maximum size is
8x8 presented on good quality paper.
There is not system to register famous and There no system to register There is no specific
well-known trademark, but the Patent Office has well-known trademarks, but a list of provision for
published a list of established famous and marks which are well-known and protection of
well-known mark on the Internet which there are famous, an armorial bearing, flag or well-know and
two kinds of trademarks. First trademark, which emblem, a name or abbreviation of famous trademark.
has been recognized as famous or well-known any state, intergovernmental
Well-known Trademark trademarks are rendered by the Appeal Board of organization or organization created
Patent Office or Courts and other one is by an international convention have
trademark, which have been registered as been recorded in the examination
defensive marks. sections
Classification Both countries are member of NICE Agreement for international Classification in designation goods and services
for trademark registration
After joining the Nice Agreement, Japan has There no history of reclassification
Re-Classification adopted the international classification since of goods or services. Since 1993, as
System 1992 under the revised Trademark Law of 1996. we have been dealing trademark
The former classification differs from the current registration we use NICE
classification in class organization and classification in order to meet
indications of goods. This has made the work of international standard.
search complicated scopes of rights, unclear, and
caused other such problems. As Re-classification
76 of goods or service is very useful in helping
trademark examiner in searching
If the trademark application falls under categories When the trademark application is
that sought of trademark is not clear, name of filed at IP office. The registry clerk
applicant is not state can’t enable the will check all documents that
Effective of Filing date identification of applicant or designated of goods accompany with trademark
or services is not stated. The filing date will be application for registration. If the
effected when submitting the correction application is in order then the
trademark application. In case the applicant can’t registry will issue filing date. if not,
submit the correction application, the the invitation to applicant or
commissioner of Patent Office within adequate Trademark Agency to submit
time limit, the application may be dismissal. corrected documents within three
（3 ）months.
Both countries are member of Paris Convention which Priority claim based on application for trademark
Priority Claim registration under the provision in article 4 of Paris convention for protection of Industrial Property that the
trademark application is file in a country party can be claimed the priority within six （6 ）months. The periods shall
start from the date of filing of the first application; the day of filing shall not be included in the period.
During substantive process, if the examiner have In case the application for trademark The period in
found the reasons for refusal, then the examiner registration is to be refusal, the submitting argument
Period for amendment will issue a preliminary notice of refuse and the registry will notify in writing the or written statement application in case of applicant can file an argument or amendment to applicant or Authorized for applicant is longer refusal overcome the official notice within forty （40 ） representative to file argument or than Japan, in case
days. If the reasons for refusal are not eliminated, written statement and evidence in the trademark
the decision of rejection will stand. relation to the rejection with the application is refusal
Registry Unit within ninety （90 ）
days from the date of rejection
notice.
Accelerated examination requirement by There is no provision
applicant When the applicant of the trademark relating accelerated
application or licensee（ the person who has examination.
received the license from the applicant to use the Examination process
77 trademark of the trademark application ） is under rule and
Accelerated Examination either already using the trademark for the regulation
designated goods or designated services proceeding.
（including parts of goods or part of services ）,
or the preparation for using the trademark is
already well advanced and the trademark right
need to be granted urgently for the trademark
application.
Registration Period Usually, from the time of filing application to a From filing application to The term of
decision regarding registration, it takes a registration, it takes not more six consideration for
trademark application more than one year to be （６ ）months to be processed trademark
processed. registration is shorter
than
The owner of registered trademark shall have the exclusive right to use the registered trademark with respect to
Trademark Right the designated goods or services.
Ten （10 ）year start from the date of the Ten （10 ）year start from filing date Registration term will
Term of registration registration be effected for ten
year from filing date
When the trademark application is filed, Patent After filing trademark application for We don’t publish
Publication Office will publish unexamined application for registration within 6 months from unexamined
laying-open applications for public inspection. If filing date of the application, the application after filing
there no reason for refusal and the trademark registry will undertake the trademark application
right will be effect when its registration and substantive examination, if there no for public inspection.
registration fee is paid and when its registered , reason for refusal, the decision for
then it will be published on trademark gazette . registration is done. The trademark
right will be effected and issuance a
certificate of registration and publish
the registered mark on the Official
Trademark Gazette.
78 If the applicant is dissatisfaction with decision of If the applicant is not satisfy decision No specific provision
refusal of a trademark application, an appeal for any refusal, can file a request and for appeal.
against the decision can be filed with the Trial evidence to IP office after receiving
Appeal system Board of the Patent Office. An appeal examination the notification for refusal within
against a decision of refusal is performed by a adequate time limit.
collegial body of three or five appeal examiners.
Decision of the appeal examiners is called appeal
decision. When the reasons for refusal was
solved, an appeal decision to register a
trademark is performed, and when the reasons
for refusal is judged that the reasons cannot
cancel and the trademark cannot be registered,
an appeal decision of refusal is performed
Any person may file an opposition to the There is no specific provision, but No specific provision
Commissioner of Patent Office within two ( 2 ) the third party can make request to for oppositions
months from the date of publication of the invalidate a mark by submitting
Trademark Gazette. There no extension period is written statement to IP Department
allowable, a notice of opposition must be filed where it can be shown that it was
Opposition system within two months in order to secure title as an incorrectly registered in the first
opponent. An opposition to a trademark instance.
registration on the grounds that the trademark re
fall under any criteria for trademark can’t be
registered. An opponent must file substantial
reasons for the opposition and evidence
supporting those reasons within three (3) months
after that expiration of the opposition term.
Under Japanese Trademark Law, the term of There is no specific provision, No specific provision
invalidation trial is used to indicate a forfeiture Individual or legal entity is entitled to
action against a trademark registration base on a apply for cancellation of a registered
third person’s prior right to a similar mark or lack trademark with the Trademark
79 of distinctiveness and the term of cancellation Registry. The cancellation can be
Trial system indicate a cancellation action against a trademark based on the ground of prior
registration based on non-used. Anyone can registration, prior use (in respect of
demand a cancellation trial against a trademark well know marks) and non-use by
registration based on non-use for three（3 ） himself or consent during （ 5 ）
consecutive years in Japan with respect to all or consecutive years and the certificate
some of the designated goods or services of the of registration is expired. Except
registration. Besides, there are trial against a where it has been renewed at
decision of refusal, trial to invalidate a trademark adequate time
registration etc....
The duration of a trademark registration is ten The registered trademark can be
years from the registration date and the renewed within 6 months prior to the
application for renewal can be filed six months expiration date of certificate. If in
prior expiration date of the current registration case the requirement of renewal is
and six months after grace period. In case the not submitted on time, the trademark
Renewal Period applicant can’t filed the request for the term of owner still have the right to apply for
renewal after six months from the date of renewal application after six
expiration due to the reason outside of one’s months with submission of reason
control, a request can be made within 14 days or for delay, but the delay would not be
two months for non-resident from the date on exceeded 6 months from the date of
which these reasons ceased to apply, but not expiration of certificate.
more than six months.
There are two kind of trademark licenses, one is The owner of registered trademark
Licensing an exclusive license and the other is a may file a request accompany with
non-exclusive license which will be effected, the agreement between the owner of
when it is recorded on the official register and the a trademark and a licensee of the
holder of the right recognized as having an trademark to IP office. Any license
exclusive right to a registered trademark on the contract concerning a registered
extent of licensing agreement. trademark would be recorded on the
register. The use of the trademark by
a license will be protected the
registration from an action of
80 removal for non-use.
Under the Japanese trademark Law, the The application for Assignment or
assignment of trademark application will be Merger must be filed and approve by
effected when it is recorded in the official the IP Division. The assignment is
register. The necessary document which is available only for a whole class of
Assignment accompanied with application is deed of goods or services. Not for a selection
assignment or agreement between the assignor of goods or services within one class
and assignee concerning the assignment. of one or more classes of goods or
services from multi-class
registration will require the creation
of a new registration covering those
goods or services and partial
assignment, the agreement must
confer upon the trademark owner the
right to verify the quality of the
goods and services.
The application for change of name and address will be effected when it is recorded on the register. Which
Change of Name and necessary document is accompanied with a Power of Attorney. The information presented on these applications address should be clear detail of the change of the ownership of the registered mark.
The difference from comparative Japanese trademark system in Japan which the writer would be summary main points as: system in Laos protection all goods or services in single application, whether the Japanese trademark system is multi-classification and lay open un-examined application after filing application for public interest inspection in order to ensure and confident the examiner in examination of trademark for registration. Besides that, the third parties may have the chance for filing the opposition against of examiners’ decision for registration of the trademark. The time period for consideration trademark can be registered or not, or from substantive examination until granting certificate, the system in Laos more flexible and shorter than in Japan (only six months).
81 7. Compare examination guideline and Examination Manual for Trademark. 1. Trademark Examination Guideline of Japan Patent Office. ◆ In Japan In order to prevent Trademark Law being executed differently during the examination in practice requires to adopt standard to secure the smooth operation of Trademark Law and prompt and precise examinations. From this view point, the Examination Guidelines for Trademark was adopted by Japan Patent Office in 1992.
The purpose of the "Examination Guidelines for Trademarks" are made and published for the sake of standardization and uniformity in the examination of trademark application at the Japanese Patent Office. There are some examples which have been changed partly from the original Japanese version for easy understanding.
Some view point of trademark examination guideline as following: 24 1. Distinctiveness of trademarks. Trademark which is lacking of distinctiveness and cannot distinguish the source of goods or services are unregistrable in Japan.
The following are not distinctive trademark:
（ A ）Trademark consisted solely of a mark indicating, in a common way, the common name of the goods or services, which include abbreviations and popular term, etc used for the goods or services; （ B ）Trademark customarily used in respect of the goods or services, which means trademarks having become commonly used with respect to the same type of goods or services distinguish the goods or services of one party from those of other parties; （ C ）Trademark consisted solely of a mark indicating in a common way, the origin, place of sale, quality, raw materials, efficacy, use, quantity, shape or price of the goods, or the method or time of manufacturing or using them; or the location of provision of the services, quality, articles for use in such provision, efficacy, use, quantity, modes, price or method or time of the provision of services;
24 Source : Trademark Examination Guideline and Trademark Examination Manual of JPO 82 （ D ）Trademark which consist solely of a mark indicating, in a common way, a commonplace surname or name of a legal entity; （ E ）Trademark consisted solely of a very simple and commonplace mark; numerals fall under the provision of this paragraph, in principle. （ F ）Besides the above mention in each of the preceding paragraphs, trademark which do not enable consumers to recognize the goods or services as being connected with a certain person’s business, such as a mark consisting solely of a pattern, a motto, letter used for indicating the quality of goods, etc...
According to Japanese Trademark Law Section Article 4(1) (i), (ii), (iii) and (v) (State Coat of Arms and Other Emblems) 1. “A decoration, a medal or a foreign national flag” are limited to those presently in existence. The word “foreign” not only means countries which Japan has recognized but also includes countries which Japan has not recognized.
2. Trademarks with parts conspicuously showing a figure of the Japanese flag or a foreign national flag are judged to be similar to the Japanese flag or a foreign national flag. Trademarks with figures indicated in a manner that may impair the dignity and honor of the Japanese flag or a foreign national flag are judged to fall under the provision of Article 4(1)(vii) even if they are not similar to them.
3. A chrysanthemum crest with its petals numbering between 12 and 24 or a mark with parts conspicuously showing the Imperial chrysanthemum crest or the said chrysanthemum crest is judged to similar to the imperial chrysanthemum crest, in principle. However, this does not apply to the following marks: (1) A chrysanthemum with petals larger than the diameter of its center; (2) A chrysanthemum with more than one-third covered or cut off; (3) A chrysanthemum with its center deviating to a length of more than a quarter of the flower’s radius; and (4) A chrysanthemum not clearly constituting a crest and judged to imitate a live flower. (ii) Trademarks which are identical with, or similar to, the coats of arms or any other State emblems (except national flags of any country of the Union to the Paris 83 Convention, member of the World Trade Organization or Contracting Party to the Trademark Law Treaty) of a country of the Union to the Paris Convention (refers to the Paris Convention for the Protection of Industrial Property of March 20, 1883, as revised at Brussels on December 14, 1900, at Washington on June 2, 1911, at the Hague on November 6, 1925, at London on June 2, 1934, at Lisbon on October 31, 1958 and at Stockholm on July 14, 1967, the same shall apply hereinafter), a member of the World Trade Organization or a Contracting Party to the Trademark Act Treaty designated by the Minister of Economy, Trade and Industry; (iii) Trademarks which are identical with, or similar to, a mark indicating the United Nations or any other international organization which has been designated by the Minister of Economy, Trade and Industry; (v) Trademarks which are comprised of a mark identical with, or similar to, an official hallmark or sign indicating control or warranty by the national or a local government of Japan, a country of the Union to the Paris Convention, a member of the World Trade Organization or a Contracting Party to the Trademark Act Treaty which has been designated by the Minister of Economy, Trade and Industry, if such a trademark is used in connection with goods or services identical with, or similar to, the goods or services in connection with which the hallmark or sign is used;
Trademark Examination Manual was adopted in 1981, it is necessary for the examination to follow a certain standard in a uniform the trademark manual has been organized into categories of laws and regulations, handling and material/evidence that are required for the daily administration of examinations Trademark Examination. Trademark Examination Manual was only available to JPO examiners for use as examination material to be used in executing their practical duties.
25 ◈ In Lao, there is not trademark examination guideline and examination manual for examination. Refer to article 12 of the Decree sets out the reasons why a trademark may not be registered as following:
25 Source : Trademark Examination Guideline and Trademark Examination Manual of JPO 84 1. Not capable of distinguishing. A trademark which is not capable of distinguishing the goods or services of one enterprise from those of another cannot be registered as it will have no inherent adaptation to distinguish the goods of one trader from those of another.
☞ Here are some of example of mark that can not register or capable of distinguishing : ▪ A letter, number, geometric figure with no added matter. ▪ A mix of letters and numbers that might indicate the goods are a particular model of a machine or a specific size of goods. Example: ‘’ 42 ’’ for shoes. ▪ An indication that the trademark is a single colour such as the word ‘’ Blue’’ for almost any goods or services. ▪ Common words which are other trades are entitled to use in the normal course of their business. Example: ‘’ Best restaurant ’’ for restaurant services or the single word ‘’ Best ’’ with no other distinctive word or device for any goods or services. ▪ A simple line drawing of the goods to be covered by the registration. Example is a box for packing material. ▪ A mark which is foreign characters which on translation, has a direct reference to the goods or services. ▪A figurative element will be a single element or the dominant element which consists of the goods. Example: drawing of a badminton racket for badminton rackets. ▪ Trademark which contrary to the national culture morality and the public order. For example trademark which representation of the national monuments, Buddha, an immodestly clothes person, religious words or the name of the nation. ▪ Trademark which is likely to mislead the public or trade circles, because of something in the mark, is likely to mislead people into believing that it has a particular geographical origin, or that the nature or characteristics of the mark in connection the goods or services. (Article12). For example a mark which included the words ‘’silk’’ when applied to man-made cloth would be misleading.
85 ☞ Mark which similar to those protected by a state or an international organization. (Article 12) of the Decree prevent registration of marks which are identical to or imitate or contain an element protected by a state or international organization unless the use is authorized by the state or organization such marks which are included: a flag, emblem, or coat-of-arms of a state, culture or historical site, name of state or abbreviation of that name, official sign or hallmark relating to the control and certification of any state or international organization.
A list of above mentioned marks is available from the WIPO are recorded in trademark section. If the application is filed which include the figurative items or words which may be fall of formalities requirement or will be check against the above mentioned list.
Widely well-know trademarks. (Article 12) of the Decree prevent registration in Lao PDR of trademark which is widely well known. A list of well-known trademark is also kept in the trademark section
86 8. Act of Infringement. ◈ In Japan, the following actions shall be deemed to infringe the trademark right or an exclusive license. 26
1. Use of a trademark similar to the registered trademark on or in connection with the Identified Goods or Services or use of the registered mark or a mark similar thereto on goods or services similar to the Identified Goods or Services. 2. Possession of goods which are the same as or similar to the Identified Goods or Services with the intention of transferring or delivering such goods or on their packaging. 3. Possession or importation of articles bearing the registered trademark or a mark similar thereto which are to be used by recipients of those services, in conjunction with the offering of the Identified Services or Services similar to the Identified Goods or Services for the purpose of offering those relevant services. 4. Transfer, delivery, or possession or importation for the purpose of transfer or delivery of articles bearing the registered trademark or a mark similar thereto which are to be used by recipients of those services, in conjunction with the offering of the Identified Services or Services similar to the Identified a Goods or Services for the purpose of causing the relevant services to be rendered with these articles. 5. Possession of articles bearing registered trademark or a trademark similar thereto for the purpose of using the registered trademark or a trademark which is similar services similar thereto. 6. Transfer, delivery or possession for the purposes of transfer or delivery of articles bearing the registered trademark or a trademark similar thereto for the purpose of causing such mark to be used on or in connection with the Identified Goods or Services or goods or services similar thereto. 7. Manufacture or importation of articles bearing registered trademark or trademark similar thereto for the purpose of using or causing such mark to be used on or in connection with the Identified Goods or Services or Goods or services similar thereto.
26 Source : Japanese Trademark Jurisprudence.
87 8. Manufacture, transfer, delivery or importation of articles which are used solely for the purpose of manufacturing items bearing the registered trademark or a trademark similar thereto in the ordinary of business.
◈ In Lao, the act of infringement under the trademark registration if someone use the registered trademark without authorization of the owner of the registered trademark. In addition use of goods or services which are not covered by the registration of a widely well-known mark could be considered infringing use.
The following actions shall be deemed to infringe the trademark right or an exclusive license: ➟ Any use by a third party of the mark on goods or services for which a trademark is protection; ➟ Applying a trademark to protected goods by an unauthorised third party; ➟ Using the mark in advertising, business stationery or any other documents.
Chapter IX. Information Technology. 1. Paperless System. The JPO has led the world in promoting paperless project and started receiving online application for patent and utility model in December 1990. Around 38.000 applicants have filed application using PC electronic filing software by the end of FY 2005. The online application rates for patent 97% utility model 83% Design 83% and trademark 98% all very high rate. The hours for accepting electronic applications were extended to around clock and throughout the year. For electronic application via the internet, the JPO use electronic certificate supporting the government public key structure （ GPKI ） for user identification and prevention of document alternations moreover, JPO introduced and ‘’ Electronic Payment System’’ for paying registration fee through internet banking in coordination with the Ministry of Finance’s electronic revenues payment system and multi-payment network.
88 2. Industrial Property Digital Library (IPDL) The JPO launched the Industrial Property Digital Library （IPDL）in order to provide IP information free of charge via the internet in 1999 and developing an environment in which industrial property information in used more widely and easily. The user can access and search 61 million documents such as the legal status of examination, registration and appeal/trials, based on the document numbers, classification and key word.
In addition to internet service, JPO has installed terminals at Nation Center of Industrial Property Information （ NCIPI ）, regional conference rooms for NCIPI, Intellectual Property Center at each prefecture, etc to provide the high-speed service through dedicated lines for further convenient of users.
The IPDL updates every year in the term of improve usability and broadened range of services. In March 2006, a function that allows users to batch download and print out data from patent and utility model gazettes was added. Additionally file wrapper documents that is the past could only be inspected by paying a fee are now partially provided free of change or trial basis. Furthermore, the IPDL also started to provide documents of publicly known designs and documents from foreign design gazettes.
The active use of industrial Property information through the IPDL is expected to further promote exploitation of industrial Property rights. After launching of the IPDL the number of users increased in line with the subsequent upgrading of the service and the annual number of searches in FY 2005 reached about 65.3 million.
http://www.ipdl.inpit.go.jp/homepg_e.ipdl
89 3. Intellectual Property Awareness Dissemination in Japan It is important to establish a nationwide environment for raising awareness and cultivating knowledge on the intellectual property system through fostering intellectual property-conscious minds from early childhood, developing human resources with goods knowledge of IP at University and promoting understanding and interest in intellectual property among university researches, SMEs and venture companies.
1. Raising Public Awareness. The JPO has held explanatory meeting on the intellectual property right system targeting adults in general and IP system targeting specific participants nationwide since FY 1998 to disseminate and raise public awareness on IP system. In order to develop human resources with practical knowledge on IP system, the JPO has also provided industrial property standard textbooks to upper secondary school （ special courses ）, colleges of technology and universities. In addition, it has held workshops for teachers to explain how to utilize the standard textbooks and other teaching materials as well as seminar for students using standard textbook nationwide. Also, in order to raise IP public awareness from school education stage, JPO has provided industrial property education supplementary textbook suitable for each age group in elementary school and lower and upper secondary school through school educational institutions, and held IP education support seminars for school staff to disseminate IP system and raise public awareness.
The JPO also holds seminar for researchers at universities and public research institutions to acquire the rights for research results and how to manage and exploit the right to researchers at universities and other institutions. It also holds seminar for SMEs and venture companies to explain strategies exploitation of IP and licensing Agreement including technology transfer for SMEs and venture company managers and person who responsible for R & D. Additionally, JPO holds Expert training seminars for management and technical consultant.
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Japan Patent Office Annual Report 2006. 90 Chapter X. Conclusion and Recommendation.
As Japanese has a long history of revision of trademark protection system in order to be harmonized with international standard and need to be efficiently administered and effectively enforcement. As Japanese trademark system is better developed with broader protection scope with diversity of systems which are some view different view points from comparison as following:
1. Summary of Japanese examination system based on comparison. 1. 1. Japanese Trial /appeal system. Since Japan has revised the domestic classification of goods and services in compliance with Nice Classification which is an international classification and also establishment of a re-classification system, Nice Classification system was introduced into Japan, because the former classification designated goods and services are different from International classification under the Nice Agreement. In order to accelerate the procedures of the administrative oppositions and request for trial against examiner’s decision, if the examiner has a reason to reject that application, he will notice of preliminary rejection to the applicant. The applicant can file and argument against to the Preliminary Rejection section. When the Preliminary Rejection makes for The decision of rejection that application again, then the applicant can file an Appeal against the decision of Rejection before the Appeal Board of the JPO. When the Appeal Board of the JPO is not overcome the decision of Rejection. The applicant can file and appeal against the decision of Appeal Board of the JPO before the Tokyo high Court within thirty days, and the case of foreigner who hasn’t residents in Japan has plus three months from the date of receipt of the decision when the Tokyo High Court confirms the decision of rejection. If the applicant is not dissatisfied the decision for rejection by High Court they would have a chance to file, and appeal to the Supreme Court. Provision regarding authorization of the IP Office as the judiciary for examination and pending to the administrative oppositions and trial against examiner’s decision may take action into consideration and in case of dissatisfaction can be taken through the court. The Japanese trademark system allows the third party to file the opposition after establishment of trademark right protection.
91 1.2. Guideline in Examination. In order to ensure the smooth operation of the Trademark Law and prompt examination, the Japan Patent Office provided an examination Guideline for examiner in order to ensure examination and deal with the handling of trademark applications requirements for registration, which examination guideline clearance the reasons for unregistrability and Trademark Examination Manual are used by the trademark examiner in daily examination work, where some view point of trademark Law related to the registrability and unregistrability of trademark, the examiner can make decision to grant or refusal based on the provisions and principle and the guideline. In the other hand Trademark Examination Manual is the supplement for trademark examination guideline which is focusing on practical trademark examination, which help trademark examiner how to handle the dismissal of applications. Besides that Examination Guideline among key elements, the sound of a trademark seems much more highlighted when being compared with another trademark and trademark restoration system for an owner of extinguished trademark right is unable to make a request for registration of the renewal within the time limit due to reasons outside his control can restore his or her trademark right under certain circumstance. In order to provide the prompt and precise examination, JPO has established the accelerated examination system to protect the applicant’s interest by meeting the urgent need of grating a trademark right and special examination through the interview. Besides that IP public awareness promotion in Japan is the strong construction through government’ s policy and corporate comprehensive and strategic activities such in the field of Human Resources by organizing IP seminar and training. And cultivating IP minds start on elementary school, Junior high school, high school, university institute, enterprises, and organizations, for learning specialized IP practical ability, supporting on IP Promotion as Information Technology on Internet from IPDL-JPO provided by IP center at local area.
1.3. Human Resources Developments and IP Awareness Promotion. In the field of the human resources development and IP public awareness promotion, Japan has the training institute offers various training programs for young professional talents to broaden their knowledge on intellectual property affair. The training institute also provides education programs for government officials and special 92 course target for being examiners and public service employees. In order to make people in the country well understanding IP Awareness, JPO has done the publication IP textbooks, by JPO and special IP textbook distribute to domestically junior schools, universities and research institutes and IP Gazettes on CD-ROM, Publication’s judicial information of Japanese IP trials. The writer can see many people through the country understand the meaning of IP, human mind, creativeness and innovative creation which is indication in increasing the number of IP domestic applications receive by JPO every year. The above-mention activities, IP public awareness promotion in Laos is still lake of, people in the country not enough understand and know the importance of IP protection, the negative attitude of the local people towards the protection of IPR needs to be clarified and corrected by conducting more close the attention of dissemination and public awareness to ensure that the local people understand and realize the fact and benefits of the IP protection. Providing IP standard textbook in many levels such primary, secondary schools and universities and other teaching material. There are many ways or approaches the aims, the writer would like to propose the national IP Offices can take into consideration to alter the above attitude of the people and overcome this serious problem.
2. Summary of trademark system in Laos based on comparison. As Intellectual Property System in Laos is common system, the type of trademark protection are trademarks, service marks, collective marks and certification marks, There no system to register well-known trademarks, but a list of marks which are well-known and famous, an armorial bearing, flag or emblem, a name or abbreviation of any state, intergovernmental organization or organization created by an international convention have been recorded in the examination sections. It we have compared our trademark system with Japanese trademark system there are some different points such publication of unexamined applications and after established of trademark right for public inspection. The IP System in Lao, we will be done publication the result of trademark registration after registration and renewal trademark. We don’t public the unexamined applications after filing. There is no specific provision for trial system such Trial against examiner’s decision of refusal, trial against ruling to decline an amendment, trial for invalidation of a trademark registration and trial for cancellation of a trademark registration and opposition system against the trademark registration. 93 However, the systems are not allowed for any trial and opposition, but in case the applicants do not satisfy with decision for refusal the trademark applications. They could submit the written argument or evidence to IP office after receiving the notification for refusal in order to reconsider again. For the trial of cancellation of trademark registration based on the ground of prior registration, prior use (in respect of well know marks) and non-use by himself or consent during（5）consecutive years and the certificate of registration is expired. Except where it has been renewed at adequate time and also there no specific provision for opposition system after registration, if the registered trademark fall under the criteria of unregistrability, but the third party can make request to invalidate a mark by submitting written statement to IP Department where it can be shown that it was incorrectly registered in the first instance. In the examination process the examiners do not have any Trademark Examination Guideline and Trademark Examination Manual, just refer to some view point of decree and regulation which is trademark can be registered and can’t be registered and examiners’ real experiences in working for long time. Apart from above-mentioned matter and in order to ensure the smooth operation of examination, the writer would like to propose Department of Intellectual Property Standardization and Metrology/DISM should have the examination guideline and examination manual like in Japan, because it would be very useful for examiners and in order to ensure the trademark examination which is deemed necessary for the IP office and well-known trademark should introduce to the guideline. Although, the Decree and legislation on trademark registration set forth requirements for registration of trademark and reasons for unregistrability. Besides that the DISM should have the special training course for government officials and public employee who work in the field of IPRs protection how it promote and develop the national economic, particularly, course which is focusing on a person who is being the examiners or assistant examiners and determine the qualification.
3. Comments on the different points which found by comparison. 3.1. Unity in application. There are some the difference points in the unity of application, whether in Japan one trademark application can designate more than one class of goods or services in single application, but one application can designate only one or two goods or services in one
94 class. （ multi-class system ）. In Laos, one trademark application can designate only one class of goods （ single-class-system ）but the applicant claim specific of goods or services or all goods or service in a class. As in the past years ago the system in Laos changed the designated of goods or service in one application, which is make more benefit for national economic and income for government. The writer thinks that, in the future if Lao is accessed to Madrid Protocol, the single-class-system would change into multi and specific goods or service one or two in one application same as Japan.
3.2. Opposition system. Whether the system in Laos do not have the provision for making opposition, don’t give the opportunity to the third parties file the opposition against the decision to registered trademark. Even we do not have specific provision for the opposition, any complaints or petitions can file to IP office. The writer think that IP office also gives the opportunity to any persons who are not satisfy with any IP office decisions. The writer thinks that in the future if we have such kind of system, it would be more enhance trust and confidence in the trademark registration for public interest inspection. The writer thinks that in the future if we have such kind of system in the future, it would be more enhance trust and confidence in the trademark registration for public interest inspection.
3.3. Trial system. There is no specific provision for trial system in Laos mention in legislation for the invalidation, cancellation of registered trademark in connection with the designated goods or designated services for three consecutive years or longer by the holder of trademark right, or non-use exclusive right has used the registered trademark in Japan and trial against the examiner’s decision for dismissal amendment, any petition can file to IP office. Concerning the cancellation of registered trademark, if the owner of trademark did not use for five consecutive years, the third party can submit the written and evidence in order to appeal for cancellation of trademark registration and in case of the certificate of registration is expired. As Japan Patent Office has the Trial Board who is conducting the trial documents from the third parties filed through JPO.
95 3.4. Defensive mark. Such kind of the defensive marks are not protected and included in the legislation as Japanese Trademark Law when his/her registered trademark in respect of goods and services has become well-known among consumers as indicating of designated goods or services being connected with his/her business and when the use of the registered trademark by other person in respect of goods and service covered by registered trademark which is likely to cause confusion. From this view point the applicant may apply for registration of addition classes of goods or services, but procedure for registration of marks is the same as regular mark protection.
3.5. Publication application. The difference between two systems, which Japan will publish unexamined application after filing and after decision to register trademark within two month for public inspection on Official trademark Gazette. In Laos do not publish unexamined application but we will publish only the registered trademark and renewal on the Official Trademark Gazette. The system in Laos does not disclose un-examination application after filing for public inspection like in Japan, but we will public the result of registered trademark and renewal in the Trademark Official Gazette. The writer’ opinion, in the future, if the number of domestic applications is increasing, it the IP office lay open the un-examined application for public interest inspection, it will be ensure and confident for trademark examination.
3.6. Examination Guideline and Examination Manual. In the examination process the examiners do not have any Trademark Examination Guideline and Trademark Examination Manual, just refer to some view point of decree and regulation which are trademark can be registered and can’t be registered and examiners’ real experiences in working for long time. Apart from above-mentioned matter and in order to ensure the smooth operation of examination, the writer would like to propose Department of Intellectual Property Standardization and Metrology/DISM should have the examination guideline and examination manual like in Japan, because it would be very useful for examiners and in order to ensure the trademark examination which is deemed necessary for the IP office and well-known trademark should introduce to the guideline 96 4. Recommendation to IP Lao office based on this research. 4.1. If the national IP office haves the trademark examination guideline, the writer think that it would be useful for trademark examiner with dealing with examination and in order to ensure trademark examination. 4.2. The writer would like to propose the national IP Office would take consideration about laying open un-examined applications for publish interest inspection in the future, In order to disclose and let the publish interest knows the current status of application file to IP office. 4.3. The writer would like to propose the IP office to modernize the trademark examination system which will be useful and make sure in prompt examination. 4.4. The writer would like to propose the national IP Offices would take consideration for IP awareness dissemination through the countries especially by providing IP standard textbook in many levels such primary, secondary schools, universities and other teaching material which there are many ways approaches the aims
The above recommendation, the writer thinks that IP office would require more assistance and close cooperation such fund and experts from international organization, especially from World Intellectual Property Organization and Japan Patent Office in supporting fund such kind of these activities.
97 ✿ Statistics of trademark applications for 5 years.
Statistics of trademark application filed and granted in Laos..
Year Number of filing application Number of granting
LA For Total LA For Total 2000 25 676 701 26 721 747 2001 14 563 577 18 513 531 2002 25 656 681 19 672 691 2003 54 970 1024 45 675 720 2004 36 1395 1431 36 928 964 2005 68 1718 1786 42 997 1039 Total 222 5978 6200 186 4506 4692
LA: Domestic Applications
For: Foreign Applications
Statistics of application filed and granted in Japan
Year Applications First actions Decision of registration Registration 2000 145,668 122,681 95,423 94,493 2001 123,754 142,380 104,269 93,548 2002 117,406 145,859 113,853 105,114 2003 123,325 138,717 112,366 108,568 2004 128,843 126,284 100,889 95,866 2005 135,776 122,858 97,939 94,439
Source : http://www.jpo.go.jp/cgi/linke.cgi?url=/shiryou_e/toushin_e/kenkyukai_e/annual_report2006.htm
Note 1: The number of registration include the number of renewal and defensive mark registration.
Note.2.The number of the first actions indicates the number of the first notice of the first examination results made by examiners, mainly the decision of registration or notification of reasons for refusal which were sent to applicants.
98 RESEARCH REFERENCES.
1. Intellectual Property Right Standard Textbook on Trademark. (Produced by Japan Institute of Invention and Innovation in March 2007) 2. Japanese Trademark Law/Published by AIPPI.JAPAN in the Year 2006 3. Prime’s Decree and Regulation under STEA on trademark registration （No. 01/PM, dated January 17, 2002 ） 4. Outline of trademark system and trademark Law : by Kenji WATANABE, Examination Administrator/JPO-JIII. Dated : January 17, 2007 5. Textbook on procedure from filing to registration of trademark application/ Japan Patent Office with Collaboration : Sadayuki HOSOI Patent Office and Eichi International Patent Office/2006 6. Textbook on Introduction to Intellectual Property Right. Japan Patent Office with Collaboration with Ken-ichi KUMAGAI, Professor, Intellectual Property Law, Kyushu University, Graduate School of Law. 7. Trademark Examination guideline （http://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/tt1302-002.htm）Accessing the website in June 8. Trademark Examination Manual of JPO （http://www.jpo.go.jp/quick_e/index_sh.htm）Accessing in June. 9. Japanese Trademark Jurisprudence (Kenneth L. Port. Associate Professor of Law Marquette University, Fist published in 1998) 10. Japan Patent Office Annual Report 2006. 11. The protection of well-known mark in Asia. (Christopher Heath Kung-Chung Liu, First Published in the year 2000 ) 12. Famous and Well Known Marks (An international analysis by Frederick W.Mostert, Published in 1997)
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