David Haskel, Abacus IP
Trademarks are a fundamental asset of any successful business, in Cambodia as in any market. Without such intellectual property rights, a competitor could legally use your brand name and logos for themselves. In Cambodia, trademarks are protected under the Law on Marks, Trade Names and Acts of Unfair Competition.
The following questions and answers provide a basic overview of the main features of the law, and what businesses in Cambodian need to know about trademarks.
What can I register as a trademark in Cambodia?
Any visible sign than can distinguish the goods or services of an enterprise can be registered as a trademark in Cambodia. This rule has two components: the mark must be VISIBLE, and it must be capable of distinguishing.
First, a visible sign includes words (including invented ones), combinations of letters (at least three), phrases, slogans logos, symbols, pictures, drawings, packaging, labels, three-dimensional shapes, and combinations of two or more colors (single colors are not allowed).
While the general public tends to think of trademarks as logos and brand names, in fact they are much broader. Firms should therefore think strategically of what elements of its brand image could be protected through registration. What is not protected are non-visible marks, such as sounds and smells, which are protected in some countries but not under Cambodian law.
To read more about Cambodia’s competition law click here.
Second, the mark must be capable of distinguishing the goods or services of the applicant from those of other firms. This excludes words that are generic for a type of good: no one will be able to register and gain exclusive use of the word “apple” for the fruit. Of course, when used on other goods – such as computers – it can be registered.
Similarly, descriptive words such as “good”, “excellent”, or “tasty” (for foods or drinks) can generally not be registered. An exception can be made if it can be shown that consumers have come to identify the descriptive mark with the applicant’s goods or services. Further, this rule also prohibits the registration of marks consisting of just one or two letters, single colors, symbols such as + or $, as well as basic shapes like circles or triangles.
As an aside, regarding business names, if a business has registered with the Ministry of Commerce, they will have chosen a unique business name. While the MOC will check that subsequent applicants do not choose the same name, this is distinct from a trademark registration as the rights are much narrower.
It is highly recommended that any business that has incorporated with the MOC simultaneously file a trademark application for its business name (as well as any other marks they plan to use) with the DIPR.
How do I apply for a trademark in Cambodia?
Cambodian trademark registration is handled by the Department of Intellectual Property Rights (DIPR) within the Ministry of Commerce. Cambodia employs a “first-to-file” rule, as opposed to “first-to-use” as in some countries. That means that until one registers their mark, they enjoy only very limited rights based on their use.
As a preliminary step, it is usually wise to perform a trademark search to determine if the mark you are planning to use is actually available. Too often, a business makes the mistake of choosing a name or logo, hiring a design firm and even producing products, only to later find out that the mark has already been registered by a third party.
A person (or group of people), as well as a business (domestic or foreign) can file a trademark application with the DIPR. If a business has incorporated with the MOC, it is strongly recommended that the mark be registered in the name of the firm.
It is often the case that a new business has decided on their mark, but has yet to incorporate. In that case, the mark could be applied for in the name of the individual founder(s), but should thereafter be transferred to the business by recording an assignment with the DIPR.
Cambodian individuals and businesses can file a trademark application on their own, or appoint a registered Cambodian Trademark Agent to act on their behalf. Foreign applicants must appoint an agent. The application form – available on the DIPR’s website or through an agent – can be filed in hard-copy in person, or through the DIPR’s e-filing system.
As this requires setting up an account and linking to bank account to pay the official fees, the e-filing system is most suited to applicants who are regularly filing applications, as well as registered agents. For those just filing an application from time to time, printing out the relevant form and taking it to the filing desk as the DIPR is usually easier.
The application form begins with some basic information about the applicant, such as name, address and contact information. In the second part, the mark is indicated and for figurative elements described. The meaning and derivation of the mark is required, and for non-English words the language and transliteration as well.
The applicant must then indicate the classes and list the goods or services in accordance with the Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks. The class heading is not allowed, but there is no limit on the number of goods or services that may be indicated (nor any additional fee).
Thus, applicants may choose to very broadly claim all goods or services they foresee expanding their business into. Multiple classes can be filed in one application, or broken apart into multiple single-class applications. The filing fees are applied per class – whether for a single- or multi-class application.
The application form also has a section for claiming priority based on a trademark application in a foreign country. This allows the applicant to effectively back-date its application to the filing date of the foreign application, which can be important if there are blocking applications filed in between the two dates.
If priority is claimed, the Cambodian trademark application must be filed within six months of the foreign one, and a certified copy of the priority document must be submitted to the DIPR.
Finally, there is a section for indicating any limitations or conditions. This is particularly important for marks containing descriptive elements, which should be indicated with a disclaimer stating that the applicant does not claim and exclusive rights to these elements apart from the mark as a whole. If that is not indicated, the DIPR would likely issue a provisional refusal requesting the disclaimer.
Once the application is filed and the official fee paid to the DIPR, they will do a basic check that it meets the formality requirements and issue an acknowledgment of filing that indicates the filing date and application number. It then is published on the online databased of the DIPR, which serves to notify the general public of the rights the applicant is seeking to register.
The application is then sent to an examiner, who will decide if the mark is registerable on absolute and relative grounds (more on that below). If it is, a notice of acceptance is issued, followed by publication in the Official Gazette and issuance of a certificate of registration. If the examiner takes issue with the mark, a notification of provisional refusal would be issued.
What should I do if my Cambodian trademark application is refused?
Unfortunately, it is not always smooth sailing for trademark applicants. In about half the cases an application will be provisionally refused, while half proceed straight to registration. This shouldn’t be a reason to give up though, as with the right arguments and evidence, in many cases the refusal can be overcome and the mark successfully registered.
There are many possible reasons the DIPR refuses the registration, but by far the most common are that they 1) view the mark to be descriptive, or 2) it is too similar to a prior trademark application. Let’s consider each in turn.
First, the DIPR might find that the mark is descriptive of the goods or services specified in the application. To overcome the refusal, the applicant would typically argue why the mark is not descriptive, or that through its usage, the mark has acquired distinctiveness and thus should be registerable.
Additionally, in the provisional refusal they might request a disclaimer of one or more of the terms they find descriptive. If that is the case, the easiest is to simply agree to the disclaimer, which most often overcomes the refusal and leads to the registration of the mark. It is not, however, mandatory to accept each disclaimer – the applicant can still respond with arguments and evidence as to why the mark is not descriptive.
Second, the provisional refusal could state that the mark is too similar to prior applications, and will list these applications. It should be self-evident that two people cannot register the same exact mark; but the law also prevents registration of marks that are “confusingly similar”. There is a good degree of judgment in assessing how close the marks are regarding their appearance, sound and meaning, as well as the respective goods or services specified.
To overcome such a refusal, the applicant will typically try to argue why the marks are dissimilar enough such that consumers would not be confused as to the origin of the goods or services. In addition, they might seek to obtain a letter of consent from the owner(s) of the marks cited by the DIPR in the provisional refusal. While not always straightforward to obtain, such letters will usually result in the acceptance of the application.
In either case, the response to the provisional refusal needs to be filed within 60 days of the notification (extensions are possible upon request). The DIPR will then examine the arguments and evidence, and either accept the application for registration or issue a second provisional refusal. There can be several further rounds of refusals and responses, before a final refusal would be issued. This would need to be appealed to the Court of First Instance.
What do I need to be aware of once my trademark is registered?
Once the DIPR issues accepts your trademark application, publishes the registration and issues you your certificate, there are a few things to be aware of regarding trademark maintenance in Cambodia.
First, any interested third party may file an opposition to your registration (within 90 days of publication) or a cancellation at any time. While rare, these procedures protect against bad faith applications, and as a safeguard in case the DIPR’s examination missed an issue. If an opposition or cancellation is filed against your registration, the DIPR will inform you in writing and afford you the chance to reply and present your evidence. In such cases, it is recommended to engage a trademark agent specialized in defending against oppositions and cancellations.
Second, your mark is valid for ten years counting from the date of application, and can be renewed for subsequent ten-year terms indefinitely. In addition to filing a renewal request before the expiration, you will need to file an affidavit of use or non-use between five and six years from the date of registration. As these dates lie far in the future, and as the DIPR will not inform you of the deadlines, it is best to enter them into your calendar right away.
Third, you will need to keep the DIPR informed of your current address and any changes in the name of your business, or if the mark is assigned. This is to ensure that the DIPR (and the general public) knows who owns the rights, and the way to contact you. To do so, the appropriate form for recording a change of address, name or assignment needs to be submitted to the DIPR, together with payment of an official fee.
Another business is misusing my trademark in Cambodia, what should I do?
If another business is using your brand name, logo, business name, or other visual element used to market your business, the first thing to do is to file a trademark application for it (if you haven’t already). Without an application (and the eventual registration), you are in a much weaker position to address the potential infringement.
Unfortunately, there are cases where the other party has already filed an application (or even secured the registration). Not only would you be unable to pursue them for infringement, but they would be in a position to sue you for infringement of their rights. A difficult spot to be in, to say the least.
If you truly are the legitimate first owner of the brand, and they are acting in bad faith, there should be grounds to cancel their registration, register it yourself, and then seek damages and an injunction against them. However, that is a much lengthier and more expensive prospect than if you pro-actively registering your mark in the first place.
Assuming you have a registration, and the other party is using the mark (or a confusingly similar one) on the same or similar goods or services you have registered it for, then you could have a case against them for trademark infringement and possibly unfair competition as well.
Ideally in consultation with a Cambodian trademark specialist, the first step would be to investigate the infringement further: what goods are they selling? Which channels of distribution are they using? Who is the beneficial owner of the infringing company? Collecting and preserving the relevant evidence is crucial to building a case for court.
Most often the next step is to contact the other party to ask them to cease the infringement. If that is unsuccessful, the DIPR can be requested to mediate the dispute. While neither party is bound by the result, in many cases it is a helpful procedure to bring the other party to the table and explain the issues in a formal setting. If the parties cannot reach an agreement, the next recourse would be filing suit in court.
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About the Author
David Haskel is a partner of Abacus IP. A member of the State Bar of California, David maintains a broad practice across all areas of intellectual property in Cambodia.
About Abacus IP
Abacus IP is a full-service intellectual property agency in the Kingdom of Cambodia. Our international team serves local and international clients in all facets of IP. With over a decade of experience, we help innovators and businesses protect what matters most.