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The Department of Intellectual Property of Laos (“Laos DIP”) recently issued a Notice sustaining an opposition against Trademark Application No. 50354 for “FUMARI” in Class 34, filed by Xuanfeng Biotechnology Sole Co., Ltd. In this matter, KENFOX IP & Law Office represented Fumari Inc. to challenge the adverse party's mark, steering the case to a successful outcome.
In its Notice, the Laos DIP confirmed that, following consideration of the opposition based on the relevant reasons and evidence submitted, the opposition was sustained. As a result, the opposed application will not proceed to the substantive examination stage.
This is a significant outcome for international brand owners. It demonstrates that, although trademark rights are territorial and Laos follows a registration-based system, the absence of a local trademark registration is not always an absolute bar to action. Where a foreign brand owner can establish prior commercial identity, global reputation, trade name rights, and indicia of bad faith, a carefully prepared opposition may still succeed.
The case involved a classic territoriality problem.
Fumari, Inc., established in 1997, is known in the hookah industry for premium hookah tobacco products. The company owns trademark registrations for FUMARI in multiple jurisdictions worldwide, including major markets such as the United States, the European Union, China, Brazil, Japan, and others.
However, at the time of the opposition, Fumari, Inc. did not have a registered trademark in Laos.
This created a major legal and practical weakness. In many first-to-file jurisdictions, the absence of a prior local registration can severely limit a brand owner’s ability to challenge a third-party application. A conventional opposition based only on prior registered trademark rights would not have been available.
The key question, therefore, was whether Fumari, Inc. could prevent registration of an identical mark in Laos by relying on other legally recognized interests, including its trade name, global use, reputation, and the applicant’s apparent bad faith.
To overcome the lack of a Lao trademark registration, the opposition could not be framed as a standard prior-rights dispute. Instead, the strategy needed to shift the legal focus from local trademark priority to trade name protection, likelihood of confusion, false association, and bad faith filing.
The opposition was primarily built on the following legal foundations under the Laos Law on Intellectual Property, as amended in 2023.
First, Lao law recognizes protection for trade names. Under Article 12, trade names are not required to be registered but are protected under the IP Law. Article 62 further provides that the term of protection for trade names is unlimited until the owner ceases use.
This was important because “FUMARI” is not merely a product mark. It is also the distinctive core of the company name Fumari, Inc., which has been used in commerce for many years in connection with hookah tobacco products.
Second, Article 23 provides that marks may be ineligible for registration if they are identical or similar to a trade name for a business providing the same, similar, or related goods or services. It also bars marks that would create a likelihood of confusion as to the source of goods or services, or falsely suggest an association with a registered mark, well-known mark, or trade name.
Third, Article 44 provides that the Ministry of Industry and Commerce may cancel or invalidate a registration if it has been falsely registered or filed in bad faith.
By combining these provisions, the opposition was able to address the central weakness of the case. The argument was not simply that Fumari owned registrations abroad. Rather, the argument was that the applicant’s filing of the identical sign FUMARI for Class 34 goods created a false association with Fumari, Inc.’s long-standing business identity and appeared to take unfair advantage of the goodwill accumulated by Fumari over nearly three decades.
This type of case is evidence-sensitive.
Foreign trademark registrations are helpful, but they do not automatically prove enforceable rights in Laos.
Likewise, general assertions of reputation or bad faith are rarely sufficient on their own.
The opposition therefore required a structured evidentiary approach to show that:
The success of the opposition shows the importance of presenting evidence as a coherent factual chain. In cases where the brand owner lacks a local registration, the attorney’s role becomes especially important: the case must be built not only on statutory provisions, but also on commercial logic, market context, and objective indicators of bad faith.
The Laos DIP sustained the opposition and confirmed that Trademark Application No. 50354 would not proceed to substantive examination.
This is procedurally important. The application was stopped before registration, preventing the applicant from acquiring a formal trademark right that could later have been used to disrupt Fumari’s market entry, commercial expansion, customs clearance, distribution, or enforcement strategy in Laos.
From a practical standpoint, this result avoided the need for more costly post-registration invalidation proceedings or defensive enforcement actions.
The decision highlights the strategic value of the opposition procedure in Laos.
A timely opposition allows a legitimate brand owner to challenge a problematic application before it matures into a registered right. This is particularly important in bad-faith filing cases, where delay can significantly increase legal and commercial risk.
Once a bad-faith mark is registered, the legitimate owner may face a more complex situation: invalidation proceedings, possible enforcement threats from the registrant, distributor uncertainty, customs issues, online marketplace complaints, or commercial pressure to buy back its own brand.
By contrast, pre-grant opposition can stop the problem at its source. The FUMARI case therefore illustrates that early monitoring and prompt opposition remain among the most cost-effective tools for protecting brands in Laos.
However, it also shows that where a foreign brand has no Lao registration, all is not necessarily lost. Trade name protection, global reputation, prior use, related goods, and bad faith circumstances may collectively provide a viable basis for opposition.
The stronger the evidentiary bridge between the foreign brand’s reputation and the applicant’s conduct, the greater the chance of success.
The FUMARI case demonstrates how practical experience in Laos IP proceedings can make a decisive difference: identifying the right legal hooks, selecting the strongest evidence, and presenting the facts in a way that allows the authority to see the filing not as an ordinary trademark application, but as an attempt to appropriate another party’s established commercial identity.
The successful opposition against Trademark Application No. 50354 “FUMARI” in Laos is a useful reminder for international brand owners: territoriality matters, but it is not always the end of the story.
A Lao trademark registration remains the best first line of defense. But where a third party files an identical or highly similar mark before the legitimate brand owner has registered locally, a prompt, evidence-driven opposition may still provide an effective remedy.
For foreign businesses, the lesson is clear: monitor Laos, file early where possible, and act quickly when suspicious applications are detected. For IP practitioners, the case underscores the value of combining local statutory tools with cross-border evidence of trade name use, reputation, and bad faith.
In the FUMARI matter, that strategy worked. The opposed application was stopped before substantive examination, preserving the legitimate brand owner’s position and sending a clear message that bad-faith attempts to capture foreign brands in Laos can be challenged successfully.
QUAN, Nguyen Vu | Partner, IP Attorney
PHAN, Do Thi | Special Counsel
HONG, Hoang Thi Tuyet | Senior Trademark Attorney
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