TRADEMARK LAW OF CAMBODIA

In February 2002, the National Assembly adopted the Law on Marks, Trade Names and Acts of Unfair Competition. This was followed in 2006 by a Sub-Decree on its implementation.1 As the legislation, and indeed much of the Cambodian legal system, is so recent, trademark law is not as developed or sophisticated as in many countries.

 

 

UNREGISTERED TRADEMARK 

The Trademark Law sets forth six specific bars to registration. A mark cannot be validly registered, and is subject to opposition and invalidation if it is:
• Incapable of distinguishing the goods or services of one enterprise from those of other enterprises;
• Contrary to public order or good custom;
• Likely to mislead as to the origin of the goods or services concerned or their nature or characteristics;
• Identical with, or is an imitation of or contains as an element, an armorial bearing, flag and other emblem, a name or abbreviation or initials of the name of or official sign or hallmark adopted by any State, intergovernmental organization or organization created by an international convention, unless authorized by the competent authority of that State or organization;
• Identical with, or confusingly similar to, or constitutes a translation of a mark or trade name which is well-known and registered in the Kingdom of Cambodia for goods or services which are not identical or similar to those in respect of which is applied for, provided that use of the mark in relation to those goods or services would indicate a connection between those goods or services and the interests of the owner of the well-known mark are likely to be damaged by such use; or
• If it is identical with a mark belonging to a different proprietor and already on the Register, or with an earlier filing or priority date, in respect of the same goods or services or closely related goods or services, or it is so nearly resembles such mark as to be likely to deceive or cause confusion.

 

 

REGISTRABLE MARKS

Cambodian trademark law protects trademarks, service marks, collective marks, and trade names. The definitions resemble those of many other countries and treaty agreements.

Trademarks and service marks are defined as any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise. This definition excludes non-visible marks, such as smell, sound, or taste marks. Although not specifically addressed in the law, three-dimensional trademarks can also be registered if they comport with the statutory requirements of “distinctiveness.” Depending on the circumstances, it may be easier to register a product as a three-dimensional trademark than as an industrial design.
 

Collective marks must be a visible sign capable of distinguishing the origin or any other common characteristic, including the quality, of goods or services of different enterprises which use the sign under the control of the registered owner of the collective mark.
 

A trade name means the name and/or designation identifying and distinguishing an enterprise. According to the Article 21 of the Trademark Law, unregistered trade names are protected against any “unlawful act.” Nevertheless, it is wise to register one’s business name as a trademark, as it strengthens one’s rights and simplifies enforcement.

 

 

TERM OF PROTECTION

The initial registration is valid for ten years from the date of filing, and may be renewed indefinitely for consecutive ten year  periods. The application for renewal may be made within six months preceding the expiration, or six months following with payment of a late fee.

In the year following the fifth annivesary of the initial registration date, and each renewal registration date, the mark owner must submit an Affidavit of Use or Non-Use, and pay the official fee.

The owner thereby states that either the mark is currently in use in Cambodia, or that it is justifiably not in use but is intended to be used, and there is no intention to abandon the mark. Failure to submit the affidavit will lead to automatic cancellation by the DIP.

 

 

PROCEDURE OF REGISTRATION

Trademarks are registered with the Ministry of Commerce’s Department of Intellectual Property (DIP). Cambodia uses a first-to-file system, so the use of a mark is not required when filing an application. Applications and supporting documents may be in either Khmer or English; documents in other languages must be accompanied by a Khmer or English translation. Foreign applicants must be represented by an agent residing and practicing in Cambodia.

The application process begins with the filing of an application form (provided by the DIP free of charge), fifteen specimens of the mark, and if filed by an agent, an original notarized power of attorney.

 

Once complete documentation has been submitted, and unless the DIP rejects the mark, the process of registration typically takes around six months. If the DIP decides that all the legal requirements are fulfilled, they will issue a certificate of registration to the applicant and publish the mark in the Official Gazette of the Ministry of Commerce.

 

Once the mark is registered and the certificate issued, the DIP will publish a reference in the Official Gazette of the Ministry of Commerce. The published information contains the filing and priority date (if any), the mark itself, application and registration numbers, class, names and addresses of the owner and agent (if any). The Official Gazette is available in hard-copy format only.
Within ninety days of publication, an interested person may give notice of opposition to the DIP.
 

A registration may be opposed on the grounds that it does not meet the definitional requirement for a mark, it is barred under one of the six statutory bars described above, and/or the procedures were improperly followed. The notice of opposition is then forwarded to the applicant, who can choose to submit a counter-statement within ninety days. If no counter-statement is submitted, the registration is deemed abandoned. But if a counter-statement is submitted, following a hearing, the DIP will decide whether the registration should be cancelled. A decision by the DIP can be appealed to court within three months of the decision.