Webinar: Trade Mark Protection for EU SMEs in Cambodia's Fashion and Textile Industry

 

Join Mr. Pheng Thea, Principal of Abacus IP and the IPR SME Helpdesk expert in Cambodia, to learn about practical IP steps to be taken related to  trademark protection in Cambodia. This presentation is complemented by case studies and a live Q&A session where all questions raised by the webinar attendees are given an expert response.

This Webinar will give European SMEs all the necessary information on trademark protection in the fashion and textile industry in Cambodia. The expert will provide a basic understanding of the Trademark landscape in Cambodia, including registration - and its requirements - as well as enforcement in case your IP rights get infringed. For EU SMEs interested in expanding into Cambodia's rapidly expanding textile and fashion industry, this Webinar is a perfect first step to explore opportunities for sustainable internationalisation.

May 31st, 2018
Agenda (Brussels time):
10:00-10:05 Welcome and introduction by the IPR SME Helpdesk
10:05-10:45 Presentation by the South-East Asia IPR SME Helpdesk expert Mr. Thea Pheng
10:45-11:00 Live Q&A session

REGISTER HERE

About the South-East Asia IPR SME Helpdesk

he South-East Asia IPR SME Helpdesk supports European Union (EU) small and medium sized enterprises (SMEs) to both protect and enforce their Intellectual Property (IP) rights in or relating to South-East Asian countries, through the provision of free information and services. These take the form of jargon-free, first-line, confidential advice on intellectual property and related issues, plus training, materials and online resources.
The South-East Asia IPR SME Helpdesk project is co-funded by the European Commission. The current project runs from January 2015 – December 2017, and comprises a total budget of EUR 2.4 million over the thirty-six month period.

The Helpdesk's free services for European SMEs include:
Helpdesk Enquiry Service – Confidential Advice
Individual SMEs and SME intermediaries can submit IP enquiries directly to the Helpdesk via phone, email or in person, getting access to a panel of experts to receive free and confidential first-line advice.

Training
The Helpdesk arranges training on IP protection in South-East Asian countries and enforcement in Europe and South-East Asia, tailored to the needs of SMEs, including:
General IP issues, including IP registration and establishing an IP protection strategy.
Practical business challenges such as choosing a South-East Asian business partner, attending a trade fair, licensing.
Helpdesk IP Clinics offering SMEs free 20-minute one-on-one consultations with an IP expert are available at most training events.
Train-the-trainer resources for SME service providers and intermediary bodies (Trade Associations, SME Networks etc.) to improve the awareness of intermediary representatives about the scope and tools offered by the Helpdesk for the benefit of intermediary members.

Materials
Industry and business-focused guides and training materials address IP issues in South-East Asia by:
IP topic, including patents, trademarks, copyrights, licensing, dealing with counterfeiting.
Business focus, including IP as a business asset, technology transfer, finding the right lawyer.
Nation and Industry, including textiles, medical devices, ceramics.


Validation of Chinese Patents in Cambodia

Under a recent Memorandum of Understanding between the Cambodian Ministry of Industry and Handicraft (MIH) and the State Intellectual Property Office of China (SIPO), Chinese invention patents may be validated by filing the necessary documents and payment of the prescribed fee, thereby extending the exclusive rights to Cambodia. To date, 20 patents belonging to three applicants have been accepted for validation.

The Chinese patent must have been granted and be in good order, with a filing date after January 22, 2003 (the date of signature of the Cambodian patent law). As the system is retrospective, all Chinese invention patents, so long as filed after the effective date, are eligible for validation. Design patents and utility models are excluded from the validation system. Further, the validation is unilateral – Cambodian patents may not be validated in China. As pharmaceutical patents are not protected under Cambodian patent law, Chinese pharmaceutical patents may not be validated.

Validation must be requested by a licensed agent in Cambodia before the Department of Industrial Property within the MIH. The validation request is composed of:
- Request form
- Certified copy of the Chinese patent description, claims, abstracts and drawings (if any)
- Certificate of patent registration issued by SIPO
- Original notarized power of attorney appointing the agent
- Translation into the Khmer language, which can be filed within six months of the request

The validated patent is valid in Cambodia for the remaining term of the Chinese patent, subject to the prescribed annual maintenance fees. Thus, if the Chinese patent has six years of its term remaining, the validated Cambodian patent will have a six-year term. The expected processing time is around 20 days. The MIH only examines the request for formalities; should there be any deficiency, the requestor will have the opportunity to rectify it within two months.

The governing regulation is the Prakas (declaration) on Validation of Chinese Patents.


Acceleration of Japanese Patent Applications in Cambodia

An applicant for a Japanese patent that has been filed in Cambodia may request for acceleration of their Cambodian patent application under the Cooperation for Facilitating Patent Grant (CPG). According to the Prakas (Declaration) on the Implementation of the CPG, the request for acceleration of patent decision based on the CPG must be submitted to the Department of Industrial Property of the Ministry of Industry and Handicraft.
A Japanese patent application must have been filed with the same earliest date, whether this be a priority date or a filing date, as the Cambodian patent application. The acceleration must be based on one of the following scenarios:
- A Cambodian patent application validly claiming priority under the Paris Convention based on the corresponding JPO patent application
- A Cambodian patent application that serves as the basis for validly claiming priority under the Paris Convention of the corresponding JPO application, including PCT applications that entered the national phase.
- A Cambodian patent application based on the same application for priority under the Paris Convention as the corresponding JPO application, including a PCT application that entered the national phase
- A PCT national phase application where both the corresponding JPO application and the Cambodian application are derived from a common PCT international application having no priority claim.
In each of the aforementioned scenarios, the corresponding JPO application must have been granted by the JPO. Further, all the claims in the Cambodian application have been amended as required, such that the claims are the same as one or more of the claims in the corresponding Japanese patent.
The JPO patent must not be for a pharmaceutical product, as these are not currently protected under Cambodian patent law. As a Least Developed Country, Cambodia has been granted a waiver from its obligations as a World Trade Organization member to protect pharmaceutical patents until 2033. As an aside, applications for pharmaceutical products may actually be filed at present, however they will not be examined until 2033 (or possibly later if another waiver is granted, or even sooner if Cambodia voluntarily amends its patent law).
The application form must be accompanied by:
- A copy of the patent gazette in the corresponding JPO patent application and its certification issued by the JPO under Article 186 of the Japan Patent Act
- Translation of claims and specifications described in the patent gazette in English and Khmer
- A claims correspondence table
The applicant must submit a translation in Khmer to the Department of Industrial Property within six months of the date on which the request was filed for the CPG.


First Chinese Patents Validated in Cambodia

In a ceremony in Phnom Penh yesterday, the patent certificates for a first batch of 20 Chinese patents were validated in Cambodia.

The validation system, a cooperation between the State Intellectual Property Office of China and the Cambodian Ministry of Industry and Handicraft, allows holders of Chinese invention patents to validate their rights in Cambodia, essentially granting them a Cambodian patent simply by filing the necessary documents with the Ministry of Industry and Handicraft.

As the system is retrospective, the entire register of Chinese patents, so long as filed after the effective date, is eligible for validation. According to WIPO, there have been well over 7 million patent applications in China between 2003 and 2016, vastly outnumbering the few hundred that have been filed in Cambodia in that period.

According to a press statement released by SIPO on March 3, 2018, the patent must have been granted and in good order, and the filing date of the application must be after January 22, 2003 (the date of signature of the Cambodian patent law). Validation requests can be filed for any Chinese invention patent (design patents and utility models are excluded from the system). The validated patent will be valid in Cambodia for the remaining term of the Chinese patent, which is 20 years from the original filing date.
Validation must be performed by a licensed agent in Cambodia, by filing the following documents with the Ministry of Industry and Handicraft:
- Application form
- Certified Chinese patent
- Certificate of patent registration
- Translation into Khmer of Chinese patent
- Regarding the translation, this is best performed by the Ministry itself as we have posted about before.

Further procedural details, are specified in the implementing regulation.


Other Forms of Intellectual Property in Cambodia

This final chapter includes a brief overview of two nascent forms of intellectual property in Cambodia, as well as a discussion of future prospects.

Integrated Circuit Layout Designs

Integrated circuits, more commonly referred to as semiconductor or microchips, are afforded a special form of IP in Cambodia under the Prakas (Declaration) on the Registration of Layout Design of Integrated Circuits of March 16, 2011. Layout designs can be registered with the Department of Industrial Property of the Ministry of Industry and Handicraft.

Under the Declaration, an integrated circuit is defined as “a product, in its final form or an intermediate form, in which the elements, at least one of which is an active element, and some or all of the interconnections are inte­grally formed in or on a piece of material, and which is intended to perform an electronic function.”[1] A layout design is defined as a “three dimensional disposition of the elements, at least one of which is an active element, and of some or all of the interconnections of an integrated circuit, or such a three dimensional disposition prepared for an integrated circuit intended for manufacture.”[2]

To be registerable, a layout design must not have been commercially exploited previously or subject to commercial exploitation for more than two years anywhere in the world.[3] The design must be original, meaning resulting from the creator’s own effort, and not commonplace at the time of creation.[4]

The application form must be accompanied with[5]:

- Title of the integrated circuit,

- Commercial exploitation information,

- Claim of priority, if applicable

- Annexes including any photos/drawings and the description of the layout-design of integrated circuits,

- Power of attorney, if applicant represented by an agent

- Information regarding any previous international registration and evidence setting out such registration

- Receipt of payment for the official fee.

If the application meets the requirements as provided in the Declaration, the Registrar will publish necessary information in the industrial property bulletin prior to the registration the integrated circuit layout designs.[6] Any interested person may file an opposition within 30 days of publication.[7]

After final registration, the layout design may be subject to invalidation, upon request of any interested person, on the grounds that:[8]

- The layout-design of the integrated circuit has been commercially exploited before in any part of the world and the exploitation exceeds two years, or is not original;

- The owner is not the protected person under the Declaration.

The owner of an IC registration may legally exclude others from:[9]

- Reproducing in its entirety or any part thereof, except the act of reproducing any part that does not comply with the requirement of originality, and

- Importing, selling or otherwise distributing for commercial purposes a protected layout-design or any material in which a protected layout-design is incorporated except by authorization from the owner.

The term of protection is ten years from either the date of filing, if the design had not been commercially exploited anywhere in the world, or otherwise the date of initial commercial exploitation.[10]

To date, the Registrar has yet to receive any applications for registration of a layout design. It is foreseen that a full law will be enacted in the future to replace the current Declaration.

Plant Breeder’s Right

The Law on Seed Management and Plant Breeder’s Right, adopted on April 8, 2008, creates an intellectual property right in new plant varieties, under certain circumstances. While the law has been in place for almost a decade, no implementing regulations have been enacted and the system remains largely untested, with no applications yet to be filed.

The variety may be protected if it is new, distinct, uniform, and stable.[11] The novelty criteria requires that, as of the filing date, the variety has not been sold or otherwise marketed in Cambodia for more than one year, or more than six years in the case of trees or vines, or more than four years for all other varieties outside of Cambodia.[12] Distinctness requires the variety to be clearly distinguishable from any other variety whose existence is a matter of common knowledge at the time of filing or from the priority date.[13] Uniformity requires that the variety be sufficiently uniform in its relevant characteristics, regardless of whether it is reproduced sexually or asexually.[14] Finally, a variety is deemed stable if its relevant characteristics remain unchanged at the end of the cycle of propagation and in each generation.[15]

The applicant must have bred, discovered and developed the plant variety, and be either a Cambodian national, a foreigner domiciled in Cambodia, habitually resident in a party to the International Union for the Protection of New Varieties of Plants (UPOV), or of a country that has concluded a reciprocal MOU with Cambodia.[16] A plant variety may be registered with the Ministry of Industry and Handicraft, which will refer the application to the Ministry of Agriculture, Forestry and Fishery for technical testing.[17] The law states that the application form be accompanied by other documents and information as required by a Decision of the Ministry of Industry and Handicraft, which has yet to be issued. If the technical tests of the Ministry of Agriculture, Forestry and Fishery are positive, and the denomination is acceptable, the Registrar must grant the certificate and publish a notice in the Official Bulletin.[18] The period of opposition is three months from the date of publication.[19]

An application may claim a priority date based on a foreign application filed within the last twelve months in any country that is a member of the International Union for the Protection of New Varieties of Plants.[20]

In addition to the four technical criteria (novelty, distinctness, uniformity and stability), the applicant must denominate, or specify a name, for the variety in accordance with the provisions of law.[21] These denominations must have been designated or registered in a member of UPOV.[22] Those exploiting a protected variety in Cambodia must use the registered denomination, even after expiration of the plant breeder’s right, except where a prior right prevents such use.[23] The denomination may also be the subject of a trade name, trademark or other similar indication.[24]

Anyone who produces or reproduces, conditions for the purpose of propagation, offers for sale, sells or markets, imports or exports, or stocks a protected variety shall be found to be infringing.[25] The scope of protection covers all varieties a) which are essentially derived from the protected variety, b) are not clearly distinguishable from it, and c) whose production requires the repeated use of the protected variety.[26] The property right is subject to several important limitations, namely for experimental, private, and non-commercial purposes, as well as for the purpose of breeding other varieties, with certain exceptions.[27] Further, anyone may request the Ministry of Industry and Handicraft and the Ministry of Agriculture, Forestry and Fishery to grant a compulsory license based on the public interest, subject to adequate remuneration of the right owner.[28]

The term of protection is in general 20 years from the date of granting, except for varieties with special characteristics, such as trees and vines, where the term is 25 years.[29] The right owner may be required to provide the Registrar with a sample of the propagating material, as well as other available information concerning the variety, in order to maintain their right.[30] An annual maintenance fee must be paid to keep the registration in force.[31]

An aggrieved right owner may file a complaint to the competent court seeking damages, provisional measures to prevent infringement, imposition of fines, seizure and destruction of infringing items, and/or compensation.[32] The law provides for criminal penalties only in the case of a defendant knowingly infringing, which is punishable by a fine of between five to twenty million Riels (USD 1,250 to 5,000), imprisonment of one to five years, or both.[33] These penalties are doubled in case of repeat infringement.[34]

Future Developments

While the intellectual property landscape in Cambodia has made significant strides in recent years, with the enactment of important laws and implementing regulations, as well as accession to treaties such as the Madrid Protocol, Patent Cooperation Treaty and Hague Convention, there remain important gaps to be filled. Drafts of a number of other IP laws have been formulated, including on encrypted satellite signals, undisclosed information and trade secrets, compulsory licensing for public health, as well as antitrust law. In several cases, the drafts have been pending at different stages of the legislative process and it is difficult to predict if and when they will be enacted.

[1] Prakas (Declaration) on the Registration of Layout Design of Integrated Circuits, Article 3(2)

[2] Prakas (Declaration) on the Registration of Layout Design of Integrated Circuits, Article 3(1)

[3] Prakas (Declaration) on the Registration of Layout Design of Integrated Circuits, Article 5

[4] Prakas (Declaration) on the Registration of Layout Design of Integrated Circuits, Article 7

[5] Prakas (Declaration) on the Registration of Layout Design of Integrated Circuits, Article 12

[6] Prakas (Declaration) on the Registration of Layout Design of Integrated Circuits, Article 15(1)

[7] Prakas (Declaration) on the Registration of Layout Design of Integrated Circuits, Article 15(2)

[8] Prakas (Declaration) on the Registration of Layout Design of Integrated Circuits, Article 16

[9] Prakas (Declaration) on the Registration of Layout Design of Integrated Circuits, Article 9

[10] Prakas (Declaration) on the Registration of Layout Design of Integrated Circuits, Article 11

[11] Law on Seed Management and Plant Breeder’s Right, Article 6

[12] Law on Seed Management and Plant Breeder’s Right, Article 7

[13] Law on Seed Management and Plant Breeder’s Right, Article 8

[14] Law on Seed Management and Plant Breeder’s Right, Article 9

[15] Law on Seed Management and Plant Breeder’s Right, Article 10

[16] Law on Seed Management and Plant Breeder’s Right, Article 13

[17] Law on Seed Management and Plant Breeder’s Right, Article 11

[18] Law on Seed Management and Plant Breeder’s Right, Article 30

[19] Law on Seed Management and Plant Breeder’s Right, Article 32

[20] Law on Seed Management and Plant Breeder’s Right, Article 24

[21] Law on Seed Management and Plant Breeder’s Right, Article 26(a)

[22] Law on Seed Management and Plant Breeder’s Right, Article 26

[23] Law on Seed Management and Plant Breeder’s Right, Article 27

[24] Id.

[25] Law on Seed Management and Plant Breeder’s Right, Article 15

[26] Id.

[27] Law on Seed Management and Plant Breeder’s Right, Article 16

[28] Law on Seed Management and Plant Breeder’s Right, Article 35

[29] Law on Seed Management and Plant Breeder’s Right, Article 19

[30] Law on Seed Management and Plant Breeder’s Right, Article 18

[31] Law on Seed Management and Plant Breeder’s Right, Article 37

[32] Law on Seed Management and Plant Breeder’s Right, Article 70

[33] Law on Seed Management and Plant Breeder’s Right, Article 72

[34] Id.


Guide to Geographical Indication Law in Cambodia

Introduction

A geographical indication (GI) is a name or sign used on certain products corresponding to a specific geographic origin. The GI serves as a certification that the product has certain qualities, is made according to certain methods or enjoys a certain reputation stemming from its geographic origin. Geographical indications are granted legal protection in many countries, with the twin goals of protecting consumers from misleading products as well as producers against unfair competition.

In Cambodia, two geographical indications have been registered to date – Kampot Pepper and Kampong Speu Palm Sugar, both in 2010. They subsequently received protection in Vietnam (December 2016), Thailand (March 2017) and the European Union (February 2016 for Kampot Pepper, the application for Kampong Speu Palm Sugar is still pending.) Further potential geographical indications include​ Kep flower of salt, Kratie pomelo, Phnom Srok silk, Battambang fragrant rice, Battambang oranges, Siem Reap prahok, and Kampot durian.

Geographical indications in Cambodia are based on three legal instruments. The first Declaration (Prakas) on the Procedures for Registration and Protection of Geographical Indications, dated May 18, 2009, served as the basis for the registration of Kampot Pepper and Kampong Speu Palm Sugar. This declaration was however superseded by the Law on Geographical Indications, dated January 20, 2014. While this first Declaration is no longer in force, the law specifically states that any GI registered prior to the law (i.e. Kampot Pepper and Kampong Speu Palm Sugar) shall remain valid.[1] Following enactment of the law, another Declaration on the Procedures for Registration and Protection of Geographical Indications came into force on December 29, 2016.

Scope of Application

Any goods, whether agricultural, foodstuffs, handicraft or other, can be the subject of a geographical indication, so long as they are produced or transformed in Cambodia.[2]

It is important to note that while a geographical indication will typically take its name from a geographic area, the production area of the GI goods is not necessarily coterminous with administrative borders found on a typical map. Thus, the production area of Kampot Pepper covers most, but not all, of Kampot province as well as all of neighboring Kep province.[3] Similarly, Kampong Speu palm sugar can be collected, produced and packaged in Kampong Speu province as well as parts of neighboring Kampong Chhnang, Kandal and Phnom Penh provinces.[4]

Application Procedure

The first step in applying for a GI is to form what is known as a Geographical Indication Association with the Ministry of Interior. Producers groups, operators, institutions and other interested parties wishing to obtain a GI must form such a non-profit association and deposit their statute with the Ministry of Commerce. The association itself, rather than its individual members, is the applicant and owner of the GI.[5] Aside from applying for and owning the GI, the primary role of the association is to ensure that its members comply with the book of specifications and other legal requirements. At present, two associations have been established – the Association for the Promotion of Kampong Speu Palm Sugar and the Kampot Pepper Promotion Association.

Once the association is established, an application for registration can be filed with the Ministry of Commerce. The application shall consist of the relevant government form either in Khmer or English, the book of specifications, a sample of the product and a receipt of the filing fee.[6] Following the filing of the application, the Ministry of Commerce verifies that it satisfies the necessary requirements and will notify the applicant within forty-five days.[7] If the application is deemed deficient, the applicant has six months to rectify the issues identified or otherwise respond to the Registrar, otherwise the application will be deemed abandoned.

Once the application is deemed to be complete, it will enter the substantive examination phase. This involves the Ministry of Commerce verifying the accuracy of the information in the application, and ensuring that the indication is not contrary to laws, morality, religion, good custom or public order, is not misleading or confusing, is not the name of a plant variety or animal breed, and not a generic term.[8] The Ministry of Commerce will also visit the site of production of the goods, and may invite the applicant or interested persons to provide further explanation or evidence. The Ministry is also free to invite experts to provide advice, and take that into consideration in deciding on the application.

Assuming the application passes substantive examination, the Ministry will register the GI and issue a certificate to the applicant. The GI will be published in the Official Gazette of the Ministry of Commerce no later than 30 days from the registration date[9], providing any interested party the opportunity to oppose the registration.[10] Oppositions must be filed within 90 days of publication on the grounds provided in the Articles 4 (definition of GI) and 10 of the Law on Geographical Indications[11], otherwise the registration shall be final.

Foreign Geographical Indications

Geographical Indications registered in any foreign country may be re-registered in Cambodia, thus giving the holder the same rights as a domestic GI.[12] The foreign GI must be registered in accordance with the laws of its country of origin and must not have fallen into disuse there.[13]

The application for registration of a foreign GI must be made by a legal trademark agent, administrative representative or foreign representative to the Ministry of Commerce.[14] The application and opposition procedures are the same as for domestic applicants, as described above.[15]

As of the date of publication, two foreign geographical indications have been applied for in Cambodia.

Book of Specifications and Control Compliance

The book of specifications is promulgated by the GI Association, setting forth the geographic production area, production conditions and quality control process.

Compliance with the book of specifications is to be carried out by a certification or control body on an annual basis. The body must be legally registered in Cambodia, approved by the Ministry of Commerce, and accredited according to the International Standard Organization or otherwise has a reliable control system, but otherwise can be freely chosen by the GI Association. [16] In the case of Kampot Pepper, the French group ECOCERT has served as certifying body. The body is to deliver an annual report to the Ministry of Commerce’s Department of Intellectual Property Rights.[17] The report in a foreign language must be translated into Khmer with a certified translation, and include the list of certified producers, operators, products, quantities, and any measures taken.[18]

The body is responsible for reporting any cases of non-compliance to the Ministry of Commerce, and the countermeasures and sanctions taken.[19] These can range from remarks and advice to the permanent revocation of the operator or producer’s right to use the GI.

The Ministry of Commerce has broad powers to monitor the certification body, including revoking their authority to certify compliance with the book of specifications and ordering the GI Association to seek a new body.[20]

Rights

A registered GI may only be used by members of the association, producers, and/or operators on products made in compliance with the book of specifications.[21] This right may not be transferred to a third party.[22] The owner of a GI, meaning the association, can complain to the competent court against any person who has engaged in unauthorized use of the GI. This is defined as any:[23]

Direct or indirect commercial misuse of a registered geographical indication in respect of identical or comparable goods to those of the registered geographical indication where the misuse benefited or would benefit from the reputation of the geographical indication;

Unauthorized use, imitation, evocation or translation of the geographical indication even if the true origin of the goods is accompanied by the expression such as “style”, “type”, “method”, “manner”, “imitation”, or translations of such expressions, or of similar expressions likely to mislead the public;

False or misleading indication as to origin, nature, or specific quality of the goods appearing on packaging, or in advertising materials or on other documents concerning the goods that are likely to mislead its origin;

Other practices likely to mislead the public as to the true origin of the goods.

A GI registration is valid indefinitely from the date of filing of the application, unless cancelled or invalidated.[24]

Geographical Indications and Trademarks

Geographical Indication registrations, and applications therefore, can prevent the registration of trademarks in certain circumstances. Thus, a trademark application will be rejected if there is an earlier-filed GI application that is identical or confusingly similar.[25] Further, once the GI is registered, it will prevent any trademarks for the same type of goods from being registered that are misleading, a broader standard than identical or confusingly similar.[26] However, trademarks registered in good faith prior to the GI are grandfathered-in, meaning they may continue to be used provided there are no other grounds for invalidation.[27]

Enforcement and Penalties

As an interim measure, upon court order, goods that are suspected to be infringing a GI may be detained, as can any materials and core equipment used in their production.[28] Any infringing goods that are imported, exported, sold or offered for sale can be confiscated by the competent authorities upon a court decision, irrespective of anyone being convicted of an offence.[29]

Criminal punishment of imprisonment from one to five years, plus a fine of two million to twenty million Riels (approximately USD 500 to USD 5,000), shall apply to the following offences:[30]

Misuse of a registered geographical indication for direct or indirect commercial purposes in respect of identical or comparable goods to those of the registered geographical indication where that misuse benefits or could benefit from the reputation of the geographical indication;

Unauthorized use, imitation, or evocation or translation of the geographical indication even if the true origin of the goods is accompanied by the expression such as “style”, “type”, “method”, “manner”, “imitation”, or translations of such expressions, or of similar expressions likely to mislead the public;

False or misleading indication as to the origin, nature, or specific quality of the goods appearing on packaging, or in advertising materials or on other documents concerning the goods that are likely to mislead as to its origin;

Other acts likely to mislead the public as to the true origin of the goods.

Additional criminal penalties apply to legal entities found to be responsible for infringement of the geographical indication.[31] The criminal punishment for legal entities for the above acts shall be a fine from twenty million to fifty million Riels (approximately USD 5,000 to USD 12,500) with additional punishments stipulated in the Criminal Code, such as dissolution and liquidation of legal entities, placement under judicial supervision, prohibition from carrying on activities, disqualification from public tenders, ownership sale and destruction of items confiscated, confiscation of rights of third parties, publication of decisions, and broadcasting of decision by audiovisual communication.[32]

[1] Law on Geographical Indications Law, Article 25

[2] Law on Geographical Indications Law, Article 3

[3] Book of Specifications of Kampot Pepper

[4] Book of Specifications of Kampong Speu Palm Sugar

[5] Law on Geographical Indications Law, Article 7

[6] Law on Geographical Indications Law, Article 8

[7] Law on Geographical Indications Law, Article 9

[8] Law on Geographical Indications Law, Article 11

[9] Prakas No. 422 (Declaration) on Geographical Indications, Article 15

[10] Law on Geographical Indications Law, Article 12

[11] Law on Geographical Indications Law, Article 16

[12] Law on Geographical Indications Law, Article 19

[13] Id.

[14] Law on Geographical Indications Law, Article 20

[15] Id.

[16] Law on Geographical Indications Law, Article 26

[17] Id.

[18] Id.

[19] Id.

[20] Law on Geographical Indications, Article 27

[21] Law on Geographical Indications Law, Article 22

[22] Id.

[23] Law on Geographical Indications Law, Article 23

[24] Law on Geographical Indications Law, Article 24

[25] Law on Geographical Indications Law, Article 31

[26] Id.

[27] Id.

[28] Law on Geographical Indications Law, Article 37

[29] Id.

[30] Law on Geographical Indications Law, Article 39

[31] Geographical Indications Law, Article 39

[32] Id.


Guide to Industrial Design Law in Cambodia

Introduction

An industrial design registration is a form of intellectual property that protects a new, special visual aspect of a product. In Cambodia, industrial designs are protected under the Law on Patents, Utility Models and Industrial Designs of 2003, along with a Prakas (Declaration) on the Procedure for Registration of Industrial Design of 2006. Industrial designs are registered with the Department of Industrial Property of the Ministry of Industry and Handicraft. In addition, through a special agreement with the Intellectual Property Office of Singapore, industrial designs covering Cambodia may be registered through the Singaporean authority, and vice versa.

Most recently, Cambodia acceded to The Hague System for the International Registration of Industrial Designs, effective February 25, 2017. The system provides a practical solution for registering up to a hundred designs in over 65 territories through one single international application. Together with Cambodia’s recent accession to the Patent Cooperation Treaty and the Madrid System for International Registration of Trademarks, this development radically simplifies the procedures and reduces the cost for foreign IP holders protecting their rights in Cambodia. By number of registrations, industrial designs are the second most important form of IP in Cambodia, after trademarks.

Registerable Industrial Designs

An industrial design is defined in the law as “any composition of lines or colors or any three-dimensional form, or any material, whether or not associated with lines or colors, […] provided that such composition, form or material gives a special appearance to a product of industry or handicraft and can serve as a pattern for a product of industry or handicraft, and appeals to and is judged by the eye.”[1] Thus, aspects that pertain to other senses, such as touch or sound, are not protectable. Protection does not extend to parts of a design which serve solely to obtain a technical result and to the extent that it leaves no freedom as regards arbitrary features of appearance.[2]

Industrial designs must be “new” to be registered, meaning they cannot have been disclosed to the public, anywhere in the world, by publication in tangible form or by use or in any other way, prior to the filing date or, where applicable, the priority date.[3] Disclosures to the public shall not be taken into consideration if a) it occurred within twelve months preceding the filing date or, where applicable, the priority date of the application or, b) by reason or in consequence of acts committed by the applicant or his predecessor in title or of an abuse committed by a third party.[4] Industrial designs that are contrary to public order or morality cannot be registered in Cambodia.[5]

Application Process

Industrial design applications are filed with the Department of Industrial Property of the Ministry of Industry and Handicraft. The application form and any documents forming a part of an application must be submitted in the Khmer.[6] The required information for filling in the application form are as follows:

- Name, address, nationality and contact details of the applicant and inventor;

- Title of the industrial design;

- International classification of the industrial design;

- Indication of the kinds of products for which the industrial design is to be used;

- Indication of novelty and protectable points of industrial design;

- Short description of industrial design;

The application form must be submitted with drawings, photographs or other adequate representation of the article. As soon as the required documentation is submitted and an official fee is paid to the Department of Industrial Property, the Registrar will provide an application number and filing date to the applicant.[7]

Unless otherwise agreed in the employment contract, works created by an employee will belong to the employer. In this situation, an original notarized statement justifying the applicant’s right to this registration would be required. Where an applicant’s ordinary residence or principal place of business is outside Cambodia, the applicant must be represented by an agent residing and practicing in the Kingdom of Cambodia[8]. The applicant must provide an original notarized power of attorney​​​ to the Registrar within two months from the filing date.[9]

As Cambodia is a member of the Paris Convention and World Trade Organization, applications may claim priority based on an earlier national, regional or international application.[10] The period of priority is six months from the date of filing of the first application.[11] In such case, the Department of Industrial Property will request a certified copy of the priority application. The period for furnishing the certified copy of the earlier application is three months from the date of the request by the Registrar.[12] A Cambodian translation of the certified copy of the earlier application must be submitted to the Registrar within six months from the date of the request.[13]

The current processing time is approximately four to six months from application to obtaining the registration certificate, assuming all the requirement are fulfilled.[14] This estimate is based on past experience, and may take longer depending on the workload of the Registrar. Decisions of the Ministry of Industry and Handicraft regarding the registration or refusal of an industrial design may be appealed to the competent court within three months of the decision.[15]

Re-registration of Singaporean Industrial Designs

The Intellectual Property Office of Singapore (IPOS) and Cambodia’s Ministry of Industry and Handicrafts concluded a Memorandum of Understanding permitting for the re-registration of Cambodian industrial designs through the Singaporean authority, and vice versa. The Memorandum of Understanding is valid for five years from 20 January 2015 and may be renewed upon the consent of both parties. The implementation of the MOU is currently waiting for enactment of enabling regulations, and thus applications are not yet accepted for re-registration.

Rights, Duration and Renewal

The core industrial design right is the right to prevent others from exploiting the registered industrial design.[16] “Exploitation” means the making, selling or importing of articles incorporating the industrial design.[17] The owner of the registered industrial design can initiate court proceedings against any person who infringes the industrial design by performing such acts without agreement or consent, or who makes infringement more likely to occur.[18] Cambodia follows the principle of national exhaustion, meaning that parallel imports, also known as grey market goods, are held to be infringing.[19]

The registration of an industrial design is valid for five years from the filing date of the application for registration. The registration can be renewed for two further consecutive periods of five years through payment of the official fee, for a total of fifteen years.[20] The renewal application form must be submitted, along with the original registration certificate, within six months preceding expiration of the registration.[21] The notarized original power of attorney is required if the owner of the industrial design is represented by an agent. There is a grace period of six months following the expiration date, subject to payment of a surcharge, after which the registration will be deemed abandoned.[22]

Invalidation

Any interested party may request the invalidation of a granted industrial design to the competent court.[23] The request will be granted if it can be shown that the industrial design’s subject matter is improper, if it does not meet the definition of an industrial design, if it is not new, if the owner is not the creator or successor in title, or if it is contrary to public order, morality, or prohibited by law.[24] An invalidated registration is deemed null and void from the date of registration.[25] The competent court has to notify the Department of Industrial Property for their record and publication.[26]

Change in Ownership and License Contract

Any interested party to the registration or application of an industrial design can request the Registrar for change of ownership. The request for change in ownership must be in writing and be recorded and published by the Registrar. Such change will have no effect against third parties until such recording is completed.[27] Similarly, license contracts need to be recorded in the registry, or else are ineffective against third parties.[28] The Registrar will keep their contents confidential. A request for change in ownership or recordal of license contract is subjected to payment of official fees.

Infringement, Remedies & Penalties

The owner of a registered industrial design enjoys the exclusive right to prevent others from making, selling or importing articles incorporating the industrial design. Infringement occurs when a registered industrial design has been exploited by any person without the agreement or consent of the owner.[29] Upon the request of the owner, the competent court may grant an injunction to prevent infringement or an imminent infringement, award damages and grant any other remedy provided for in the general law.[30] A licensee whose license contract has been recorded with the Registrar may also request the competent court to take immediate action when the owner has refused or failed to do so.[31]

Criminal penalties for infringement are a fine of five million Riels (approx. USD 1,250) to twenty million Riels (approx. USD 5,000), imprisonment from one year to five years, or both. Double fine and/or imprisonment will be imposed if the offense occurred within five years from the date of previous conviction.[32]

The applicant and their agent are under a duty to provide correct statements in the application and documents to the Registrar, or may be subject to a fine and/or imprisonment.

[1] Law on Patents, Utility Models and Industrial Designs, Article 89

[2] Law on Patents, Utility Models and Industrial Designs, Article 90

[3] Law on Patents, Utility Models and Industrial Designs, Articles 91 & 92

[4] Law on Patents, Utility Models and Industrial Designs, Article 92

[5] Law on Patents, Utility Models and Industrial Designs, Article 93

[6] Prakas (Declaration) on the Procedures for Registration of Industrial Design, Article 7

[7] Law on Patents, Utility Models and Industrial Designs, Article 101

[8] Law on Patents, Utility Models and Industrial Designs, Article 116

[9] Prakas (Declaration) on the Procedures for Registration of Industrial Design, Article 18

[10] Law on Patents, Utility Models and Industrial Designs, Articles 100 & 27

[11] Paris Convention, Article 4

[12] Prakas (Declaration) on the Procedures for Registration of Industrial Design, Article 11

[13] Id.

[14] Law on Patents, Utility Models and Industrial Designs, Article 103

[15] Law on Patents, Utility Models and Industrial Designs, Article 124

[16] Law on Patents, Utility Models and Industrial Designs, Article 105

[17] Law on Patents, Utility Models and Industrial Designs, Article 106

[18] Law on Patents, Utility Models and Industrial Designs, Article 108

[19] Law on Patents, Utility Models and Industrial Designs, Article 107

[20] Law on Patents, Utility Models and Industrial Designs, Article 109

[21] Prakas (Declaration) on the Procedures for Registration of Industrial Design, Article 16

[22] Id.

[23] Law on Patents, Utility Models and Industrial Designs, Article 110

[24] Law on Patents, Utility Models and Industrial Designs, Article 111

[25] Law on Patents, Utility Models and Industrial Designs, Article 112

[26] Law on Patents, Utility Models and Industrial Designs, Article 113

[27] Law on Patents, Utility Models and Industrial Designs, Article 114

[28] Law on Patents, Utility Models and Industrial Designs, Article 115

[29] Law on Patents, Utility Models and Industrial Designs, Article 125

[30] Law on Patents, Utility Models and Industrial Designs, Article 126

[31] Id.

[32] Law on Patents, Utility Models and Industrial Designs, Article 133


Guide to Patent Law in Cambodia

Introduction

The Law on Patents, Utility Models and Industrial Designs, enacted in 2003 as part of Cambodia’s accession to the World Trade Organization, provides inventors with a set of exclusive rights, in exchange for disclosure of their invention to the public. The Law is complemented by a Prakas (Declaration) on the Procedure for the Grant of Patents and Utility Model Certificates, dated June 29, 2006.

Patents are registered with the Department of Industrial Property of the Ministry of Industry and Handicraft (MIH). While several hundred applications have been filed in the years since the enactment of the law, none had been granted. In 2015, the MIH concluded a Memorandum of Understanding on the Co-Operation in Industrial Property with the Intellectual Property of Singapore Office (IPOS), resulting in the first patent being granted in 2015 through cooperation with the IPOS. Similarly, the MIH also signed a Joint Statement of Intent on Cooperation for Facilitating Patent Grant of Cambodia-related Patent Application with the Japan Patent Office (JPO) on May 04, 2016, which allows for a further option for filing through the JPO. In order to implement the Memorandum and the Joint Statement, the Ministry of Industry and Handicraft issued two new Prakas (Declarations) on July ​25, 2016​​ on the procedures for accelerating, registering and granting the patent in Cambodia.

Looking forward, similar agreements were signed with the European Patent Office and the State Intellectual Property Office of China in 2017. Both of these agreements will require implementing regulations to be promulgated in order to come into effect.

Finally, Cambodia became a member of the Patent Cooperation Treaty, per Instruction of Accession dated August 24, 2016 and deposited with WIPO on the September 8, 2016, which came into force on December 8, 2016.

Patentable Inventions

An invention is defined in the law as “an idea of an inventor which permits in practice the solution to a specific problem in the field of technology” and may be, or relate to, a product or a process.[1] Any invention can be the subject of a patent, except for:[2]

- Discoveries, scientific theories and mathematical models;

- Schemes, rules or methods for doing business, performing purely mental acts or playing games;

- Methods for treatment of the human or animal body by surgery or therapy, as well as diagnostic methods practiced on the human or animal body; this provision does not apply to products for use in any of these methods;

- Pharmaceutical products;

- Plants and animals other than micro-organisms, and essentially biological processes for the production of plants or animals;

- Plant varieties.[3]

Computer software is patentable if it is a:[4]

- Process invention, which in whole or in part, consists of steps that are performed by computer and are directed by a computer; or

- Product invention consisting of elements of a computer-implemented invention, including in particular:

o Machine-readable computer program codes stored on a tangible medium such as a floppy disk, computer hard drive or computer memory; and

o A general-purpose computer whose novelty over the prior art arises primarily due to its combination with a specific computer program.

Novelty

The first requirement for an invention to be patentable is that it be a new invention, meaning it is not anticipated by prior art.[5]

Prior art consists of everything disclosed to the public, anywhere in the world, by publication in tangible form or by oral disclosure, by use or in any other way, prior to the filing or, where appropriate, the priority date, of the application claiming the invention. Disclosure to the public of the invention shall not be taken into consideration:[6]

- If it occurred within twelve months preceding the filing date or, where applicable, the priority date of the application; and

- If it was by reason or in consequence of acts committed by the applicant or his predecessor in title or of an abuse committed by a third party with regard to the applicant or his predecessor in title.

Inventive Step

Second, an invention must involve an “inventive step.”[7] An invention involves an inventive step if, having considered the prior art, it would not have been obvious to a person having ordinary skill in the art.

Industrial Applicability

Third, an invention must be industrially applicable, meaning it can be made or used in any kind of industry.[8] However, if the commercial exploitation of the invention would be contrary to public order or morality, or would be harmful to human, animal, or plant life or health, or would seriously prejudice the environment, or is prohibited by law, then it cannot be patented.[9]

Utility Model Certificates

Utility model certificates are a special form of patent, with a lower standard of registerability and shorter duration term. Whereas a patent must be new, involve an inventive step and be industrially applicable, a utility model need only be new and industrially applicable.[10] Whereas a patent expires twenty years after filing, a utility model certificate expires after seven years, with no possibility of renewal.[11] Applicants may, prior to grant or refusal, apply for their patent application to be converted into a utility model application, and vice versa.[12] The conversion may only be done once.[13]

Right to Patent & Naming of Inventor

Only the inventor or inventors have a right to a patent.[14] When two or more persons have independently arrived at the same invention, the person whose application is filed first, or if priority is claimed, the earliest priority date, has the right to the patent.[15] Unless agreed otherwise, the right to patents of inventions made pursuant to an employment contract belong to the employer.[16] The inventor’s name will be stated on the patent, unless the inventor opts to remain anonymous.[17]

Application Process

Patent applications can be filed with the Department of Industrial Property of the Ministry of Industry and Handicraft.

Applications may claim priority based on an earlier national, regional or international patent application, according to the Paris Convention[18] and the Patent Cooperation Treaty. In such case, the Department of Industrial Property will request a certified copy of the priority application, as well as any search or examination reports or foreign office actions.

The patent application form must be made in Khmer and be accompanied by a description of the invention, one or more claims, one or more drawings when necessary to understand the invention, and an abstract, and be accompanied by payment of the official fee.[19] The descriptions must disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person having ordinary skill in the art.[20] If the application claims a prior filing date, a certified copy of the priority application is required[21] and must be submitted within three months from the request’s date by the Registrar.[22] Where a certified copy of the priority documents is in a language other than Khmer, it must be translated into Khmer and be submitted to the Registrar within six months from the request.[23] In addition, an English translation for non-English language documents is also required by the Registrar for the purpose of searching and examination, and must be submitted to the Registrar within six months from the filing date.[24]

The Department of Industrial Property will require the original notarized power of attorney, in case the Cambodian patent agent is appointed to undertake the filing.[25] Further, a notarized statement justifying the applicant’s right is required where the applicant is not an inventor of the claimed invention.[26] The original notarized power of attorney, the statement justifying the applicant’s right and a certified copy of the priority application must be submitted with the application or at a later date. The Registrar will issue a letter requesting these documents within two weeks of filing.

Filing through the Japanese and Singaporean Patent Offices

An applicant for a Japanese patent that has been filed in Cambodia may request for acceleration of their Cambodian patent application under the Cooperation for Facilitating Patent Grant (CPG). According the Prakas (Declaration) on the Implementation of the CPG, the request for acceleration of patent decision based on the CPG must be submitted to the Department of Industrial Property of the Ministry of Industry and Handicraft along with a certified copy of the patent gazette in the corresponding JPO patent application and its English translation, a translation of claims and specifications in English and Khmer, and a claims correspondence table. The applicant must submit a translation in Khmer to the Department of Industrial Property within six months of the date on which the request was filed for the CPG.[27]

IPOS and Cambodia’s Ministry of Industry and Handicrafts concluded a Memorandum of Understanding permitting for the filing of Cambodian patents through the Singaporean authority, and vice versa. The Memorandum of Understanding is valid for five years from January 20, 2015 and can be renewed upon the mutual consent of both parties.[28] After the Ministry of Industry and Handicraft issued a Prakas (Declaration) on implementation the Memorandum on July 25, 2016, applicants are allowed to file for Cambodian patents through the Intellectual Property Office of Singapore (IPOS).

In order to register, the applicant must have first been granted a patent in Singapore. The Singaporean patent must be in-force at the time of filing a request for registration in Cambodia. In addition, the patent must have a filing date on or after February 11, 2003.[29]

The request for registration of a Singaporean patent must be made to the Department of Industrial Property of the Ministry of Industry and Handicraft, and accompanied by a payment of the filing fee, a certified copy certificate of grant of the Singaporean patent, a certified copy of final specifications, a copy of abstract and a copy of original notarized POA if a local patent agent is appointed.[30] Although, a certified copy of the Certificate of Grant of Singapore patent is required to be submitted, the Registrar still examines this based on the Patent Law and its related declaration. Cambodian translations must be submitted to the Patent Office within six months from the date of filing a request for registration.[31] The registration fee and annual fee must be paid within three months from date of Registrar’s notification.[32]

Patent rights received under this declaration may not be enforced against any prior rights which already existed before the date of filing a request for registration of Singapore patent in Cambodia. A person who has been using or exploiting that patented invention in Cambodia may continue to use or exploit it, even though the Singapore patent was granted by the Cambodia Department of Industrial Property.[33]

Decisions of the Ministry of Industry and Handicraft regarding the granting of a patent may be appealed to the competent court within three months of the decision.

Patent Duration and Annual Fees

A patent is valid for 20 years from its filing date, subject to payment annual maintenance fees as set forth in law.[34]

Unity of Invention, Amendment & Division

A patent must relate to only one invention, or a group of inventions so linked so as to a form a general inventive concept.[35] Up until the application is ready to be granted, the application may be amended, so long as it does not go beyond the original disclosures.[36] Similarly, the application may be divided into two or more applications.[37]

Patent Rights

The core patent right is the right to prevent others from exploiting the patented invention.[38] “Exploitation” of a patented product means the making, importing, offering for sale, selling, stocking, using, or using of it. For patented processes, exploitation means using the process, or exploiting any product obtained directly by means of the product.[39]

The patent owner can institute court proceedings against any infringer, or anyone who performs acts which make infringement likely to occur.[40]

Certain limitations to patent rights exist, namely:[41]

- Acts with respect to articles put on the market by the patent owner or with their consent;

- Articles on vehicles temporarily or accidentally entering Cambodia;

- Experimental purposes;

- Users of the invention, or those making effective and serious preparations for use, prior to the priority date.

Upon request of the patent owner, or by a licensee in certain circumstances, a court may grant an injunction to prevent infringement or imminent infringement, award damages, or any other remedy provided for by law.[42] Further, anyone who knowingly infringes a patent shall be criminally punished by a fine of 5-20 million Riels (approx. USD 1,250-5,000), and/or imprisonment from one to five years.[43] Repeat infringers are subject to double fines and imprisonment.[44]

Government Exploitation & Non-Voluntary Licenses

Patent rights are not absolute, but subject to important limitations for government exploitation and non-voluntary licenses. The Government of Cambodia may decide, even without the agreement of the patent owner, that a government agency or a designated third-person may exploit the patent for the public interest in particular, national security, nutrition, health or development of vital economic sectors.[45] Further, if a court decides the patent owner’s or licensee’s use of the patent has been anti-competitive, they may permit government or third party-exploitation.[46] In either case, the patent owner has a right to a hearing and the payment of adequate remuneration.[47]

In addition to government and third-party exploitation, the law allows for the granting of non-voluntary licenses. Four years after the filing of the patent, or three years from its granting, whichever comes later, anyone may submit a request to the Minister for a non-voluntary license. This will be granted if it can be satisfactorily shown that the patented invention is not exploited, or is insufficiently exploited in Cambodia.[48] However, the patent owner may prevent the issuing of the non-voluntary license if they can show justifying circumstances.[49] As with government and third-party exploitation, the patent owner is entitled to compensation.[50]

Invalidation

Any interested party may request the invalidation of a granted patent.[51] The request will be granted if it can be shown that the patent’s subject matter is improper, it is not novel, does not involve an inventive step, is not industrially applicable, or if its exploitation is contrary to public order, morality, or prohibited by law.[52] Further grounds for invalidation include insufficient description, improper claims or insufficient drawings.[53]

[1] Law on Patents, Utility Model Certificates and Industrial Designs, Article 3

[2] Law on Patents, Utility Model Certificates and Industrial Designs, Article 4

[3] Plant varieties are protected under the Law on Seed Management and Plant Breeder’s Right (Royal Kram No NS/RKM/0508/015)

[4] Prakas on the Procedure for the Grant of Patents and Utility Model Certificates, Rule 44

[5] Law on Patents, Utility Model Certificates and Industrial Designs, Article 6

[6] Id.

[7] Law on Patents, Utility Model Certificates and Industrial Designs, Article 7

[8] Law on Patents, Utility Model Certificates and Industrial Designs, Article 8

[9] Law on Patents, Utility Model Certificates and Industrial Designs, Article 9

[10] Law on Patents, Utility Model Certificates and Industrial Designs, Article 69

[11] Law on Patents, Utility Model Certificates and Industrial Designs, Article 73

[12] Law on Patents, Utility Model Certificates and Industrial Designs, Article 75

[13] Law on Patents, Utility Model Certificates and Industrial Designs, Article 76

[14] Law on Patents, Utility Model Certificates and Industrial Designs, Articles 10 & 11

[15] Law on Patents, Utility Model Certificates and Industrial Designs, Article 12

[16] Law on Patents, Utility Model Certificates and Industrial Designs, Article 14

[17] Law on Patents, Utility Model Certificates and Industrial Designs, Article 15

[18] Law on Patents, Utility Model Certificates and Industrial Designs, Article 27

[19] Law on Patents, Utility Model Certificates and Industrial Designs, Article 16

[20] Law on Patents, Utility Model Certificates and Industrial Designs, Article 18

[21] Law on Patents, Utility Model Certificates and Industrial Designs, Article 28

[22] Prakas (Declaration) on the Procedure for the Grant of Patents and Utility Model Certificates, Article 20 (5)

[23] Prakas (Declaration) on the Procedure for the Grant of Patents and Utility Model Certificates, Article 20 (6)

[24] Prakas (Declaration) on the Procedure for the Grant of Patents and Utility Model Certificates, Article 11

[25] Prakas (Declaration) on the Procedure for the Grant of Patents and Utility Model Certificates, Article 33 (1)

[26] Prakas (Declaration) on the Procedure for the Grant of Patents and Utility Model Certificates, Article 6 (3)

[27] Prakas on the Acceleration of Patent Grant under the CPG, Article 5

[28] Memorandum of Understanding on the Co-Operation in Industrial Property, Article 10

[29] Prakas on the Registration of Singapore Patent in Cambodia, Article 5

[30] Prakas on the Registration of Singapore Patent in Cambodia, Article 4

[31] Id.

[32] Prakas on the Registration of Singapore Patent in Cambodia, Article 10(3)

[33] Prakas on the Registration of Singapore Patent in Cambodia, Article 11

[34] Joint​ Prakas (Declaration) on Public Service Fees, dated July 8, 2015

[35] Law on Patents, Utility Model Certificates and Industrial Designs, Article 23

[36] Law on Patents, Utility Model Certificates and Industrial Designs, Article 24

[37] Law on Patents, Utility Model Certificates and Industrial Designs, Article 25

[38] Law on Patents, Utility Model Certificates and Industrial Designs, Article 41

[39] Law on Patents, Utility Model Certificates and Industrial Designs, Article 42

[40] Law on Patents, Utility Model Certificates and Industrial Designs, Article 43

[41] Law on Patents, Utility Model Certificates and Industrial Designs, Article 44

[42] Law on Patents, Utility Model Certificates and Industrial Designs, Article 126

[43] Law on Patents, Utility Model Certificates and Industrial Designs, Article 133

[44] Id.

[45] Law on Patents, Utility Model Certificates and Industrial Designs, Article 47

[46] Id.

[47] Id.

[48] Law on Patents, Utility Model Certificates and Industrial Designs, Article 56

[49]Id.

[50] Law on Patents, Utility Model Certificates and Industrial Designs, Article 57

[51] Law on Patents, Utility Model Certificates and Industrial Designs, Article 65

[52] Law on Patents, Utility Model Certificates and Industrial Designs, Article 66

[53] Id.


Guide to Copyright Law in Cambodia

Introduction

The Law on Copyright and Related Rights affords authors of original works a set of exclusive economic and moral rights. As stated in Article 1 of the law, by providing authors with a just and legitimate exploitation of their cultural products, the law aims to contribute to the development of culture. The law was enacted in 2003 as part of Cambodia’s accession to the World Trade Organization. Cambodia is a member of the Trade-Related Aspects of Intellectual Property Rights (TRIPS) but is not a member of the Berne Convention for the Protection of Literary and Artistic Works. Most recently, on July 5, 2016, the Ministry of Culture and Fine Arts issued a Prakas (declaration) on the Collective Management Organization (CMO). CMOs are formed by copyright owners to manage their rights in common, by administering licenses, collecting royalties, and enforcing rights on their behalf.

Types of Copyrightable Works

A “work” is defined as a product in which thoughts or sentiments are expressed in a creative way, and can be literary, scientific, artistic or musical.[1] The law lists thirteen broad types of copyrightable works:[2]

- All kinds of reading books or other literary, artistic, scientific, and educational documents;

- Lectures, speeches, sermons, oral or written pleadings and other works with the same characteristics;

- Dramatic works or musical dramas;

- Choreographic works, either modern or adapted from traditional works or folklore;

- Circus performances and pantomimes;

- Musical compositions, with or without words;

- Audiovisual works;

- Works of painting, engraving, sculpture or other works of collages, or applied arts;

- Photographic works, or those realized with the aid of techniques similar to photography;

- Architectural works;

- Maps, plans, sketches or works pertaining to geography, topography, or other sciences;

- Computer program and the design encyclopedia documentation relevant to those programs;

- Products of collage work in handicraft, hand-made textile products or other clothing fashions.

Specifically excluded from protection are:[3]

- Constitution, Law, Royal Decree, Sub-Decree and other regulations, and their translations;

- Proclamations (Prakas), decision, certificate, other instructed circulars issued by state organizations, and their translations;

- Court decisions or other court warrants, and their translations;

- Idea, formality, method of operation, concept, principle, discovery or mere data, even if expressed, described, explained or embodied in any work.

Authorship

It is presumed that the author is the natural person or persons in whose name the work is created and disclosed.[4] Upon creation, the author is the first holder of the moral and economic rights.[5] If the author is an employee and created the work as part of their job, unless stated otherwise in their employment contract, the economic rights are considered automatically transferred to the employer.[6] The employee is still considered the original author, and retains the moral rights to the work.

When two or more persons jointly create a work, they are deemed co-authors of a work of collaboration.[7] Unanimous and written consent of all co-authors is required to exercise their rights.[8] So for example, if a collaboration is to be licensed, all co-authors must sign the license agreement. In case of disagreement, they can petition the court for resolution.[9] For audiovisual works (ex. films), it is presumed that the following are co-authors:[10]

- Director;

- Author of scenario;

- Author of adaptation;

- Author of the spoken text;

- Author of the musical compositions, with or without words, specially created for the sake of the work;

- Author of the graphic arts for animated works.

Gaining Copyright Protection

Every work is automatically protected, though authors and right-holders may, but are not required to, deposit their works at the Ministry of Culture and Fine Arts.[11] Whether or not it is publicly available or disclosed, a work is considered to be created simply when the author’s idea is realized, even if incomplete.[12] Works must be “original”, meaning they are the true intellectual creation of their author.[13]

Works of authors will be automatically protected where:[14]

- The authors are nationals of, or have their habitual residence in Cambodia, including legal entities established under Cambodian law and having headquarters located in the territory of Cambodia;

- Works first published in the Kingdom of Cambodia, including works first published abroad that were then published in Cambodia within 30 days of their first communication to the public;

- Audiovisual works, the producer of which has his headquarters or habitual residence in Cambodia;

- Works of architecture erected in Cambodia and other artistic works incorporated in a building or other structure located in Cambodia;

- Works for which Cambodia has obligation to grant protection under international treaties.

The protection required under international treaties merits particular attention, as many foreign copyright holders mistakenly believe their works are automatically protected in Cambodia. This is not the case, due to an important exception. While Cambodia is a member of the World Trade Organization and thus bound by the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), which requires, through the Berne Convention, to automatically extend copyright protection to foreign works, Cambodia is exempted from this obligation as a least developed country until July 1, 2021.[15] Until this exemption expires, foreign works will not be protected unless they satisfy the requirements specified above regarding a connection to Cambodia.

The voluntary deposit at the Ministry of Culture and Fine Arts requires the author’s real name, date of first publication, date of creation of the work, and a record of the author’s right.[16] The author’s information will be incorporated into the application form. A notarized or certified power of attorney will be required if the application is filed through a local representative. Upon submission of the application form, the POA if local representative is appointed, and payment of the registration fee of USD 15, the Registrar will issue a certificate of registration.[17] Under current practice, it usually takes around 14 days to obtain the certificate. The primary benefit of the registration is to serve as an evidence should a dispute arise.

Rights of Authors

Authors’ rights are divided into two categories - moral rights and economic rights - which are enforceable against all persons.[18] Moral rights are as follows:[19]

- Exclusive right to decide the manner and timing of disclosure of the work, as well as the principle to govern this disclosure;

- For the purpose of relation with the public, the right in respect of his name, title, and work;

- Right to oppose all forms of distortion, mutilation or modification of the work, which would be prejudicial to their honor or reputation.

These three moral rights are perpetual, inalienable, undistrainable and imprescriptible - meaning they last forever, cannot be sold or otherwise transferred, and cannot be seized or otherwise taken away. Moral rights are inherited by an author’s heirs upon their death.[20]

Economic rights are the exclusive rights to exploit the work, through authorization of reproduction, communication to the public, and creation of derivative works, specifically:[21]

- Translation into a foreign language;

- Adaptation and simplification or undertaking any modifications;

- Rental or public lending of the original or a copy of an audiovisual work, or a work embodied in a phonogram, computer program, database or musical work in the form of musical notation;

- Public distribution by sale, rental of the original or a copy of the work that has not already been subject to a sale or transfer of ownership authorized by the owner of copyright;

- Importation into Cambodia;

- Reproduction;

- Public performance;

- Public display;

- Broadcasting;

- Other means of communication to the public.

Limitations on the Rights of Authors

Importation and copying of copyrighted works, with certain exceptions, is permitted for personal use.[22] Further limitations allow for:[23]

- Free and private representations made exclusively to a close circle of people such as family and friends;

- Arrangement to preserve in a library the copy of a work for the purpose of conservation or research;

- Use of work for education, so long as not for financial gain;

- Translation of works from Khmer into ethnic minority languages, and vice versa;

- Analysis and short quotations justified by the critical, polemical, pedagogical, scientific or informative nature of the work, so long as properly attributed;

- Broadcasting of press commentary, so long as properly attributed;

- Dissemination of speeches addressed to the public either entirely or in part, through press release or TV broadcasting, so long as properly attributed;

- Adaptation of comic, style or caricature, so long as properly attributed;

- Reproduction of graphic or plastic work which is situated in a public place, when this reproduction doesn’t constitute the principle subject for subsequent reproduction, so long as properly attributed.

Works based on the true story of life of any person or family requires their authorization, or that of their heirs.[24]

Duration of Economic Rights

Economic rights begin at the date of creation, and end fifty years after the death of the author.[25] For collaborations, the economic rights expire fifty years after the death of the last surviving author.[26] When the work is published anonymously or under a different name, the period of protection is seventy-five years after publication.[27] Collective, audiovisual and posthumous works are protected for seventy-five years from the end of the calendar year in which they were made accessible to the public.[28] This is limited to 100 years if the work has not been made accessible to the public within fifty years of its creation.[29]

Transfer and Exploitation of Economic Rights

Any contract for the exploitation or transfer of economic rights must be made in writing, and otherwise is null and void.[30] Any of the economic rights can be transferred individually or collectively, the transfer of one right does not imply or require the transfer of others.[31] Economic rights can be transferred to the author’s heir or any third party by the author’s will.[32] When no heir or will exists, the Ministry of Culture and Fine Arts shall be responsible for governing and administering the economic rights.[33]

Performance Rights

A performance is defined as the acting on stage, namely dancing, musical performance, singing or delivering in other ways and means of artistic work, tradition, habit, literary, education or science.[34] Crucially, the rights reside in the performers, rather than others involved in the production, such as directors, authors, composers or choreographers.[35] The performer has the exclusive right to undertake and authorize the following:[36]

- Broadcasting and communicating the performance to the public, with certain exceptions;

- Recording the performance, and reproducing thereof;

- Distributing to the public by sale or transfer of ownership, of an original recording that has not been distributed with the performer’s authorization;

- Renting or lending to the public of a recording;

- Authorizing broadcasting through any broadcasting organization (radio and television), to the exclusion of other organizations;

- Authorizing broadcasting through any broadcasting organization, without the right of recording.

Independent of the aforementioned economic rights, and even after transferring them, the performers retain the right to require their written name to be displayed on the live performance or in the recording.[37] The performers further retain the moral right to prevent all deformation, mutilation or other modifications of the performance that prejudice their reputation.[38] However, performers cannot forbid reproduction and communication to the public of their performance if it is merely accessory to an event constituting the principal subject of a scene, work or audiovisual piece.[39]

The performer’s exclusive economic and moral rights are subject to the same limitations on author’s rights listed above, as well as limitations for:[40]

- Reporting of short fragments for news events;

- Reproduction merely for scientific research purpose;

- Reproduction for educational purpose, except if the work was produced specifically for educational purposes;

- Quotation of short citations, provided it is reasonable and justified;

- Recording of picture and sound for simultaneous broadcasting of a ceremony, meeting or other national event.

The same provisions regarding transfer and deposit of an author’s rights, described above, apply to performance rights.[41] Performance rights last fifty years following the calendar year in which the performance was fixed in phonogram, or if it was not, then from the end of the calendar year in which the performance took place.[42]

Phonogram Producer Rights

A “phonogram” is defined in the law as the fixation of the sounds of a performance or other sounds, or of a representation of sounds, other than in the form of a fixation incorporated in a cinematographic or other audiovisual work.[43] In other words, a phonogram is a sound recording, made in any format (CD, cassette, MP3, etc.) but not the sound of a film, television show or computer game (these would be audiovisual works). All reproductions, sales, exchanges, leases and communication to the public require the producer’s authorization.[44] The producer further enjoys the economic right to distribute, by sale or transfer of ownership, the original and copies of the phonogram, unless they have already been subjected to authorized distribution.[45] This embodies the concept of the first sale doctrine, meaning the exclusive rights in a particular recording expire on the first authorized sale. The producer also has the right to import copies for communication to the public.[46]

The limitations concerning performance rights, described above, also apply to phonogram producers.[47] Likewise, the same provisions regarding transfer and deposit of an author’s rights, described above, apply to phonogram producer rights.[48]

Phonogram producer rights last fifty years following the calendar year in which the work was published, or if it was not, then the year of fixation of the phonogram.[49]

Audiovisual Producer Rights

An audiovisual work is defined as one consisting of a series of inter-linked pictures giving the impression of movement, with or without sound.[50] The producer is the natural or legal person who has the initiative and responsibility in recording the work.[51] All reproduction of the recording for purpose of communicating to the public, sale, exchange and lease requires the producer’s authorization.[52] The transfer of audiovisual rights must be made together with the author’s rights and performer’s rights incorporated into the production.[53]

The limitations concerning performance rights, described above, also apply to audiovisual producers.[54]

Audiovisual works are protected for seventy-five years from the end of the calendar year in which they were made accessible to the public.[55] This is limited to 100 years if the work has not been made accessible to the public within fifty years of its creation.[56]

Broadcasting Organization Rights

Broadcasting organizations, consisting of radio, television and cable television, have the exclusive right to undertake or authorize the fixation of its broadcast, communication to the public, re-broadcasting, reproduction, distribution and first lease of the copy of their broadcast.[57] Reproduction of a broadcast for sale, lease, exchange, broadcasting or communicating to the public requires the organization’s authorization.[58]

The limitations concerning performance rights, described above, also apply to broadcasting organizations.[59] Likewise, the same provisions regarding transfer and deposit of an author’s rights, described above, apply to broadcasting organization rights.[60]

The duration of protection of the broadcasting program is fifty years following the end of the calendar year in which the program was broadcast.[61]

Collective Management Rights

Collective management organizations (CMO) can be established by authors, performers, phonogram and audiovisual producers to protect and manage their economic rights.[62] The legal framework is provided for under Chapter IV of the Law on Copyright and Related Rights as well as the Prakas (Declaration) on Collective Management Organization dated July 5, 2016. The CMO is formed to administer the licensing of rights, collection of royalties and enforcement measures of its member right holders.

Only authors and owners of related rights (performances, phonograms, audiovisual works, and broadcasts) who are of Cambodian nationality may form a CMO.[63] The application, to be made to the Department of ​Copyright and Related Rights of the Ministry of Culture and Fine Arts, must include the statute and internal rules governing the organization.[64] The registration is valid for a period of five years and the registration can be renewed for subsequent two-year terms indefinitely.[65]

Natural and legal person interested in exploiting works controlled by the CMO may seek an authorization and pay remuneration.[66] The authorization must be in a contract form and must determine the kind of works to be exploited, the number of works, the place to be used and time period.[67] Finally, the Prakas enables the Ministry of Culture and Fine Arts to settle disputes between CMOs and licensees, as well as between members of the CMO.[68]

Disputes and Penalties

Any copyright holder who suffers or risks suffering a violation of their rights, may petition the court to prohibit the violation of their rights, if it will be imminent, or to desist from violating their rights, if they are ongoing. [69]

In addition, the plaintiff is entitled to compensation for damages, to redress of moral injury, to the return of disputed equipment and materials, and return of any benefits deriving from the infringement.[70]

Furthermore, the law also imposes criminal penalties for certain copyright infringement activity. Infringement of production and reproduction rights is punishable by six to twelve months imprisonment and/or 5 - 25 million Riel (Approx. USD 1,250 - 6,250) fine (doubled for repeat offenses).[71]

[1] Law on Copyright and Related Rights, Article 2

[2] Law on Copyright and Related Rights, Article 7

[3] Law on Copyright and Related Rights, Article 10

[4] Law on Copyright and Related Rights, Article 11

[5] Law on Copyright and Related Rights, Article 16

[6] Id.

[7] Law on Copyright and Related Rights, Article 12

[8] Id.

[9] Id.

[10] Law on Copyright and Related Rights, Article 15

[11] Law on Copyright and Related Rights, Article 38

[12] Law on Copyright and Related Rights, Article 5

[13] Law on Copyright and Related Rights, Article 4

[14] Law on Copyright and Related Rights, Article 3

[15] See WTO Extension of the Transition Period, Article 66.1

[16] Law on Copyright and Related Rights, Article 39

[17] Law on Copyright and Related Rights, Article 40

[18] Law on Copyright and Related Rights, Article 18

[19] Law on Copyright and Related Rights, Article 20

[20] Law on Copyright and Related Rights, Article 19

[21] Law on Copyright and Related Rights, Article 21

[22] Law on Copyright and Related Rights, Articles 23 and 24

[23] Law on Copyright and Related Rights, Articles 25 and 29

[24] Law on Copyright and Related Rights, Article 26

[25] Law on Copyright and Related Rights, Article 30

[26] Id.

[27] Law on Copyright and Related Rights, Article 31

[28] Id.

[29] Id.

[30] Law on Copyright and Related Rights, Article 34

[31] Law on Copyright and Related Rights, Article 32

[32] Law on Copyright and Related Rights, Article 33

[33] Id.

[34] Law on Copyright and Related Rights, Article 2 (c)

[35] Law on Copyright and Related Rights, Article 2 (d)

[36] Law on Copyright and Related Rights, Article 41

[37] Law on Copyright and Related Rights, Article 42

[38] Id.

[39] Law on Copyright and Related Rights, Article 43

[40] Law on Copyright and Related Rights, Article 50

[41] Law on Copyright and Related Rights, Articles 54 and 55

[42] Law on Copyright and Related Rights, Article 53 (1)

[43] Law on Copyright and Related Rights, Article 2 (j)

[44] Law on Copyright and Related Rights, Article 45

[45] Id.

[46] Id.

[47] Law on Copyright and Related Rights, Article 50

[48] Law on Copyright and Related Rights, Articles 54 and 55

[49] Law on Copyright and Related Rights, Article 53 (2)

[50] Law on Copyright and Related Rights, Article 2 (g)

[51] Law on Copyright and Related Rights, Article 46

[52] Id.

[53] Id.

[54] Law on Copyright and Related Rights, Article 50

[55] Law on Copyright and Related Rights, Article 31

[56] Id.

[57] Law on Copyright and Related Rights, Article 47

[58] Law on Copyright and Related Rights, Article 48

[59] Law on Copyright and Related Rights, Article 50

[60] Law on Copyright and Related Rights, Articles 54 & 55

[61] Law on Copyright and Related Rights, Article 53 (3)

[62] Law on Copyright and Related Rights, Article 56

[63] Prakas on Collective Management Organization, Article 4

[64] Prakas on Collective Management Organization, Article 6 and 7

[65] Prakas on Collective Management Organization, Article 8

[66] Prakas on Collective Management Organization, Article 11

[67] Id.

[68] Prakas on Collective Management Organization, Article 12

[69] Law on Copyright and Related Rights, Article 57

[70] Id.

[71] Law on Copyright and Related Rights, Article 64


Guide to Trademark Law in Cambodia

Historical Background

While trademarks, as well as other forms of intellectual property, were protected by law during the French colonial period and following independence in 1953, the administrative and legal systems were largely destroyed in the 1970s. The current trademark laws and administrative system trace their roots to the early 1990s and the Paris Peace Agreement which ended the civil war.

In 1991, the External Relations and Trademark Office of the Foreign Trade Division of the Ministry of Commerce was established and began accepting and registering hundreds of international trademarks. Foreign mark applications were applied for and registered under the External Relations and Trademark Office the Foreign Trade Division of the Ministry of Commerce, while domestic mark applications were applied for and registered under the Ministry of Industry, Mines and Energy, despite a lack of law or regulation in force.

In 1997, the Intellectual Property Division replaced the previous structure, and was established under the supervision of the Director General of Technical Affairs of the Ministry of Commerce. Two years later, the Ministerial Committee Governing the Three Areas of IP was established to prepare laws relating to Cambodia’s accession to the World Trade Organization.

Shortly thereafter, the National Assembly promulgated the Law Concerning Marks, Trade Names and Acts of Unfair Competition (“Trademark Law”) on February 7, 2002. This Law was followed by the Sub-Decree on the Implementation of the Trademark Law in 2006.

In the last few years, several Prakas (Declarations) have been issued by the Ministry of Commerce in order to improve the registration and enforcement of trademarks. These include procedures on online filing of applications, applications for international applications under the Madrid system, certification marks, and exclusive distributorship.

Definition of Mark

Cambodian trademark law defines a “mark” as any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise.[1] Such signs specifically include words, names, letters, numerals, logos, devices, labels, signatures, slogans, colors (and colors combinations), shapes, three-dimensional signs, and holograms. Thus, the shape and look of a product, as well as its packaging, are registerable. Non-traditional non-visible marks, such as sound, smell, gestures and motion, are not capable of being registered. Color marks must consist of at least two colors, which excludes single-color marks.

A collective mark is a trademark owned by an organization, whose members use it to identify themselves with a level of quality or geographical origin or other characteristics set by the organization. The “collective mark” must be a visible sign capable of distinguishing origin or any other common characteristic, including the quality of goods or services of different enterprise which use the sign under the control of the registered owner of the collective mark.[2]

Tradenames

The Trademark Law defines the term “trade name”, also referred to as business name or company name, as a name and/or designation identifying and distinguishing an enterprise.[3] Trade names that, by their nature or use, are contrary to public order, morality, or are deceptive as to the enterprise identified, are prohibited.[4] Trade names are protected, even without registration, against unlawful acts of third parties.[5] Subsequent use of a trade name, or any similar name, that is likely to mislead the public is prohibited.

Trademark Application Process

All trademarks are applied for and registered with the Ministry of Commerce’s Department of Intellectual Property Rights (D/IPR). The department will accept a single mark application with multiple classes, but the official filing fee must be paid for each class. Foreign mark applicants must be represented by a Cambodian trademark agent residing and practicing in the Kingdom of Cambodia.[6] Domestic applicants, whether individuals or companies, may apply for registration themselves or retain a licensed agent to do so on their behalf. If an agent is retained, a power of attorney (POA) must be notarized by a notary public or certified by a lawyer. The notarized or certified POA can be submitted on filing or within two months of the application date.[7]

Although Cambodia is not a signatory to the Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks, nor the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks, it still follows these two classification systems. Class headings are not acceptable, except if the nature of the goods or services is clear. If the mark consists of, or contains figurative elements, these must be described using the Vienna Classification. Similarly, when the mark consists of or contains non-English words, the transliteration and the meaning are also required.

For a mark application claiming a priority date under the Paris Convention, it must be made within six months from the date of the earlier application. The application must contain the name of office of priority filing, priority filing date, and application number and name of the country. A certified copy of the priority document must be submitted within three months from the date of the request by the Registrar.[8]

The minimum requirements for filing are as follows:[9]

Full name of applicant;

Full address of applicant;

15 specimens of mark for each class;

International classification, and goods and/or services specification;

Official fee of USD 105.00 for each class.

With the above information, the Registrar will issue the Acknowledgement of Filing Instruction and the mark information will be published on an online database of the D/IPR and the World Intellectual Property Organization (WIPO). Further required information and documents must be submitted thereafter. The current process for registering trademarks in Cambodia usually takes around nine months to one year, although longer waiting times may be encountered depending on the nature of the mark, the applicant and the Registrar. If an applicant believes they will be seriously disadvantaged due to the delay between filing and registration, they may request expedited examination. The request must be in writing and accompanied by a declaration setting forth the reasons for the request.

The D/IPR will issue the notice of acceptance of mark registration when the mark application is deemed to comply with the requirements of the Trademark Law and the certificate of mark registration will be granted after the registration fee has been paid.

Trademark Registrations under the Madrid System

Cambodia became a member of the Madrid System for the International Registration of Mark on June 5, 2015. The system facilitates the filing of applications in multiple countries around the globe. Rather than having to file a trademark application in each country, a brand owner can file a single application with their national or regional IP office, and then select which other countries they want to register in. This greatly simplifies and reduces the cost of the process, as more than 110 countries are part of the system. Following Cambodia’s accession to the Madrid Protocol, the Cambodian government enacted a new Prakas (Declaration) on the Procedures for the International Registration of Marks under the Madrid Protocol on November 1, 2016. The declaration sets forth procedures and documents that are required where Cambodia is an office of origin, or where Cambodia is chosen as the designated office by a contracting party.

 

Trademark Database and Search

The complete database of trademark registrations and applications is maintained as part of the WIPO Global Brand Database, available directly through the WIPO website[10] or through the D/IPR website[11]. In addition, ASEAN TMview[12], the common online trademark information platform of ASEAN member states, replicates the database, however it is only updated weekly.

An official registerability or similarity search may be requested by any interested party by submitting the appropriate request form, indicating the mark and classes to be searched, and payment of the official fee with the D/IPR. The resulting registerability search report will indicate whether the mark can or cannot be registered, whereas the similarity search will only reveal prior marks that are similar and identical.

Prohibitions on Registration of Trademarks

A mark cannot be validly registered if it is:[13]

Incapable of distinguishing the goods or services of one enterprise from those of other enterprises;

Contrary to public order or morality or good custom;

Likely to mislead the public or trade circles, in particular as regards the geographical 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 in the Kingdom of Cambodia for identical or similar goods or services of another enterprise;

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 registration 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 owner of the well-known mark such that the interests of the owner of the well-known mark are likely to be damaged by such use; or

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 if it so nearly resembles such a mark as to be likely to deceive or cause confusion.

Should the application not comply with one of these points, the D/IPR will issue a notification of provisional refusal of mark registration. The applicant or appointed agent has to reply to D/IPR within 60 days. Another 45 days will be given, upon the request for extension of time. If the D/IPR does not receive a response within this period, the mark application will be lapsed and the application fee will not be refunded.

Maintaining a Trademark

In order to maintain or renew the registration, the request for endorsement of affidavit of use or non-use must be submitted to the D/IPR within one year following the fifth anniversary of the date of registration of the mark, or the date of registration of renewal when the registered mark has been renewed.[14] The Registrar will remove the registered mark from the registry if the owner or their legal representative fails to comply with this provision.[15]

In current practice however, the Registrar rarely removes a mark from the registry on their own initiative, but it may be a ground for cancellation if a third party submits a request.

The minimum requirements for filing a request for endorsement of affidavit of use/non-use are an original/duplicate mark registration certificate and an original signed affidavit of use/non-use form. Only the original mark certificate/duplicate mark certificate issued by the D/IPR is acceptable. The process for recordal of affidavit of use/non-use takes approximately four to five months to be completed.

The certificate of mark registration is valid for ten years from the date of filing mark application and may be renewed for consecutive periods of ten years indefinitely.[16] The renewal mark application may be submitted to the D/IPR within six months preceding the expiry of the registration.[17] In case the owner of the registered mark or their legal representative fails to submit the mark renewal application within six months preceding the expiry of the registration, it can still be submitted in a grace period of another six months. The registration of renewal will not be granted if the owner of the registered mark or their legal representative fails to submit the request for affidavit of use/non-use in the sixth year. In this case, the owner of the registered mark or their legal representative can submit a request for affidavit of use/non-use before or together with a renewal application.

Any changes in the mark application or certificate of mark registration must be made in writing to the D/IPR. The Registrar will amend the mark application or records in the certificate of mark registration as soon as the request and other supporting documents are in order, and will then issue a certificate of recordal of change. All changes will be published in an online database of the D/IPR and WIPO. Changes have no effect against third parties until they are properly recorded.

 

Recordal of License or Franchise Agreement

License and franchise agreements concerning a registered trademark may be registered and recorded with the D/IPR. Licenses for pending applications may not be recorded. License contracts must provide for effective control by the licensor of the quality of the goods or services of the licensee. If the license contract does not provide for quality control or the quality control is not effectively enforced, the license contract will be invalid.[18] License agreements for collective mark are prohibited.

License and franchise contracts are recorded and registered with the D/IPR. The contents of license contracts will be kept confidential, but the name of both parties and details of the marks will be published. Any unrecorded and unregistered license contract has no effect against third parties.[19] License contracts in English language must be translated into Khmer and certified by a Cambodian mark agent or professional translator authorized by the Ministry of Commerce.[20]

A recorded licensee may enforce the trademark registration, provided that they have first requested the trademark owner to take action, and they refused or failed to do so.[21]

Recordal of Exclusive Rights

The application for recordal of exclusive rights follows similar procedures to the recordal of a license or franchise contract. The beneficiary must be a legal person who concluded a contract or exclusive right agreement with the registered owner of a mark. The contract or exclusive right agreement must be notarized by a notary public or certified by a lawyer. The beneficiary must submit a request for recordal of their exclusive right along with other supporting documents to the D/IPR. If the documents are in order, the D/IPR will issue a recognition letter to the beneficiary within 60 days. Regardless of the term in the contract or exclusive right agreement, the recognition letter is valid for two years and takes effect three months after the date of recordal. The beneficiary must publish this recognition letter in a well-known newspaper on three consecutive days.

 

Trademark Opposition

As soon as an application is granted, the Registrar will publish the registration in the Official Gazette and update the status of the mark on the online database of the D/IPR and WIPO. Any interested person may file a notice of opposition, along with supporting evidence to the Registrar and payment of the official fee, within 90 days from the date of publication.[22] A notarized POA is required if an opponent is being represented by a Cambodian trademark agent.

Under the Trademark Law, the grounds for opposition are[23]:

The registration does not satisfy the definition of a mark as “any visible sign capable of distinguishing the goods or services of an enterprise.”[24]

Incapable of distinguishing the goods or services of one enterprise from those of other enterprises;[25]

Contrary to public order or morality or good custom;[26]

Likely to mislead the public or trade circles, in particular as regards the geographical origin of the goods or services concerned or their nature or characteristics;[27]

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;[28]

Identical with, or confusingly similar to, or constitutes a translation of a mark or trade name which is well known in the Kingdom of Cambodia for identical or similar goods or services of another enterprise;[29]

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 registration 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 owner of the well-known mark such that the interests of the owner of the well-known mark are likely to be damaged by such use; or[30]

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 if it so nearly resembles such a mark as to be likely to deceive or cause confusion.[31]

The application did not comply with the procedural requirements of the Registrar, including payment of the official fees.[32]

Under current practice, the Registrar allows the applicant to file a counter statement within 45 days from the receipt of the notice of opposition. If the applicant does not submit a counter statement or does not take any actions within 45 days, they are deemed to abandon the registration.[33] A hearing may be held upon the request from either party.[34]

The D/IPR may invalidate, remove or cancel a registered mark from the Registry if one or more requirements of Articles 2, 4, 10, 13, 14 and 15 of the Trademark Law are not fulfilled.

Invalidation of Trademarks

Invalidation allows any interested person to, at any time, submit a request in writing for invalidation of the registered mark to the D/IPR on the grounds that it is indistinguishable or it is contrary to public interest as prescribed in the Article 2(a) and Article 4(a-g) of Trademark Law.[35] These are the same grounds as for opposition, with the exception that opposition may be based upon procedural deficiencies under Article 5. The Registrar will issue a notice to their representative with the grounds of invalidation. Failure to submit a counter statement within 45 days from the date of receipt will result in the registered mark being invalidated and published in the Official Gazette. The Registrar’s decision is subject to appeal to the Appeal Board of the Ministry of Commerce or competent court within three months from the date of the decision.[36]

 

Removal

Removal allows for any interested person to submit a request in writing for removal of the registered mark on the ground that up to one month prior to filing the request or after its registration, the mark has not been used by the registered owner or a licensee during a continuous period of five years.[37] However, the registered mark may not be removed from the Registry if the registered owner or licensee proves that special circumstance prevented the use of the mark, and that there was no intention not to use or to abandon the same in respect of those goods or services.[38] In addition, the registered mark still can be removed if the registered owner or their representative fails to submit the request for endorsement of affidavit of use or non-use.[39]

 

Trademark Cancellation

The D/IPR has the right to cancel a registered mark on the following conditions:[40]

The applicant does not apply for renewal of the registered mark within the period prescribed;

The registered owner requests the removal;

The registered owner has not complied, within 90 days, with the conditions or restrictions prescribed under Article 8;

The registered owner ceases to have an address for service in the Kingdom of Cambodia;

It is convinced upon evidence that the registered owner is not the legitimate owner;

It is convinced that the registered mark is similar or identical to a well-known mark owned by a third party.

Although the Trademark Law allows the D/IPR to cancel a registered mark on the above conditions on its own initiative, an interested person can also use those conditions as grounds for a cancellation request. One or more conditions as provided above must be included in a request for cancellation or a notice of cancellation of the D/IPR.

Unfair Competition

The Trademark Law also contains provisions on acts of unfair competition. The law states a broad prohibition on unlawful acts of competition that are contrary to honest practices in industrial, commercial, or service-related matters.​[41] The following acts are deemed to constitute acts of unfair competitions:[42]

All acts of such a nature as to create confusion by any means whatever with the establishment, the goods, or the industrial, commercial or service activities of a competitor;

False allegations in the course of trade of such a nature as to discredit the establishment, the goods, or the industrial, commercial or service activities of a competitor;

Indications or allegations, the use of which in the nature of trade is liable to mislead the public as to the nature, the manufacturing process, the characteristics, the suitability for their purpose, or the quantity of goods.

Although, there are only three clauses defining acts of unfair competition in the Trademark Law, these provisions may be grounds for businesses to seek redress if they aware of any unfair acts or dishonest practices which their competitors are engaged in. This could include, for instance, misleading advertising, discrediting of a competitor, enticing or poaching a key employee away, passing-off and trade secret misappropriation.

 

Counterfeits & Border Measures

A trademark owner may request to have customs clearance suspended for goods suspected of being counterfeited.[43] The customs authorities may also suspend clearance on their own initiative when they have prima facie evidence that the goods are counterfeit.[44] A counterfeit good is defined as any (including the packing thereof) that bears a trademark identical to a registered trademark for those same goods without authorization.[45]

Both the courts and the General Department of Customs and Excise are competent to accept and decide on the application for customs suspension.[46] The application must include:[47]

An extract from the register of marks;

A statement of the grounds, in particular prima facie evidence that the goods are counterfeit;

A complete description of the goods bearing the trademark;

A sample of the trademarked goods, if requested or appropriate;

Name and address of applicant and representative;

An authorization from trademark owner to file the application, if applicable;

Payment of official fee;

The applicant may be required to provide a security or equivalent assurance sufficient to cover the value of the suspected goods.[48] In case the authorities determine the suspension was wrongful, the applicant may be required to pay compensation to the importer.[49]

According to the law, the court or customs authority will notify the applicant within ten working days of the request.[50] If the application is successful, the goods will be suspended at clearance for an initial period, as stated in the notification.[51] The importer will immediately be notified of the suspension, including the reasons therefore.[52] The applicant then has ten working days to file an infringement complaint to the competent court, otherwise the goods will be released.[53] Once a complaint has been filed, the defendant may request a hearing before the customs authority to have the suspension modified, revoked or confirmed.[54]

Following a court decision, the customs authorities have the power to order destruction of the counterfeit goods.[55] Re-exportation of the goods is expressly forbidden.[56]

Infringement and Remedies

The owner of a registered trademark enjoys the exclusive right to prevent others from marketing products and services with identical or confusingly similar marks. The exclusive rights are guaranteed in Article 11 of the Trademark Law.

Trademark infringement occurs when a sign which is identical with or confusingly similar to a registered trademark has been used by any person other than the registered owner without their agreement, in relation to the goods or services which are identical or similar to the registered goods or services. The Trademark Law defines three acts which are considered as act of infringements:

Infringement of Registered Mark: An unauthorized use of a registered mark or a sign which is identical with or confusingly similar to a registered mark, in relation to any goods or services for which it has been registered.[57]

Infringement of Registered Well-Known Mark: Use of a sign which is identical with or confusingly similar to a well-known mark have been used without the agreement of the owner of the well-known mark. Such use must be in relation to goods and services identical with or similar to the goods or services for which the well-known mark has been registered or in relation to goods and services which are not identical with or similar to those in respect of which the well-known mark has been registered and the use of the sign in relation to these goods or services would indicate a connection between those goods or services and the owner of the well-known mark and that the interests of the owner are likely to be damaged by such use.[58]

Infringement of Unregistered Well-Know Mark: Use of a sign which is identical with or confusingly similar to an unregistered well-known mark without the agreement of the owner provided that the sign is used in relation to goods or services identical with or similar to the goods or services for which the mark is well-known.[59]

Parallel imports, also known as grey market goods, are genuine products put on sale in one country and then exported to another without the trademark owner’s permission. Cambodia abides by the national exhaustion principle, whereby a trademark owner can prohibit parallel importation. This is reflected in Article 11(c) of the Trademark Law, which states that “the rights conferred by registration of a mark shall not extend to acts in respect of articles which have been put on the market in the Kingdom of Cambodia by the registered owner or with his or her consent” (emphasis added). As foreign sales have not taken place in Cambodia, the unauthorized sale of grey market goods would be an infringement of the trademark owner’s rights.

The owner of a mark can seek remedies from a court of competent jurisdiction or from the D/IPR. Upon the request from the owner, the court will issue an injunction to prevent infringement, imminent infringement, or other unlawful act, to award damages and/or to grant any other remedy provided in the general law.[60]

In practice, remedies for any acts of unfair competition obtained through court proceeding are costly, time-consuming, and complicated. Conversely, the D/IPR can act as mediator in settling any infringement disputes. Any party to a mark or unfair competition dispute can initiate a mediation process by request in writing to the D/IPR. A hearing will typically be arranged if either party requests it or at the D/IPR’s own discretion. If a settlement is reached, it is binding on both parties. If no settlement is reached, either party may bring action in a competent court.

Penalties

Use of a registered trademark, service mark, collective mark or trade name without consent from the registered owner will be considered as an act of infringement. Infringers of trademark, service mark, collective mark or trade name are subject to a fine from 1,000,000 to 10,000,000 Riels (approximately USD 250 to USD 2,500) and to imprisonment from one month to one year, or both.[61] The fine for counterfeiting is doubled, and the sentence increased to a maximum of five years.[62]

Acts of unfair competition are subject to a fine from 5,000,000 to 10,000,000 million Riels (approximately USD 1,250 to USD 2,500) and to imprisonment from one month to one year, or both.[63] Repeat offenders are subject to double in both fine and imprisonment. Managing directors, managers and representatives of juristic persons may be subject to criminal prosecution, unless they can prove that they had neither known nor consented to the commission of the offence.[64] Finally, a court has the authority to order the destruction of any goods found to be infringing, whether or not the defendant was convicted of an offense.[65]

[1] Trademark Law, Article 2

[2] Id.

[3] Id.

[4] Trademark Law, Article 20

[5] Trademark Law, Article 21(a)

[6] Trademark Law, Article 58

[7] Sub-Decree on Implementation of the Trademark Law, Article 7

[8] Sub-Decree on Implementation of the Trademark Law, Article 13

[9] Sub-Decree on Implementation of the Trademark Law, Article 16 and Announcement No. 0016

[10] http://www.wipo.int/branddb/kh/en/

[11] http://www.cambodiaip.gov.kh/SearchMark.aspx

[12] http://www.asean-tmview.org

[13] Trademark Law, Article 4

[14] Sub-Decree on the Implementation of the Trademark Law, Article 21

[15] Id.

[16] Trademark Law, Article 12

[17] Sub-Decree on the Implementation of the Trademark Law, Article 22

[18] Trademark Law, Article 19

[19] Trademark Law, Article 52

[20] Announcement No. 0738

[21] Trademark Law, Article 27

[22] Trademark Law, Article 10(c)

[23] Id.

[24] Trademark Law, Article 2(a)

[25] Trademark Law, Article 4(a)

[26] Trademark Law, Article 4(b)

[27] Trademark Law, Article 4(c)

[28] Trademark Law, Article 4(d)

[29] Trademark Law, Article 4(e)

[30] Trademark Law, Article 4(f)

[31] Trademark Law, Article 4(g)

[32] Trademark Law, Article 5

[33] Trademark Law, Article 10(d)

[34] Trademark Law, Article 10(e)

[35] Trademark Law, Article 13

[36] Sub-Decree on Implementation of the Trademark Law, Article 24(7)

[37] Trademark Law, Article 15

[38] Id.

[39] Sub-Decree on Trademark Law, Article 21(4)

[40] Trademark Law, Article 14

[41] Trademark Law, Article 22

[42] Trademark Law, Article 23

[43] Trademark Law, Article 35

[44] Trademark Law, Article 43

[45] Trademark Law, Article 61

[46] Trademark Law, Article 35

[47] Trademark Law, Article 36

[48] Trademark Law, Article 38

[49] Trademark Law, Article 41

[50] Trademark Law, Article 37

[51] Trademark Law, Article 39

[52] Id.

[53] Trademark Law, Article 40

[54] Id.

[55] Trademark Law, Article 46

[56] Id.

[57] Trademark Law, Article 24

[58] Trademark Law, Article 25

[59] Trademark Law, Article 26

[60] Trademark Law, Article 27

[61] Trademark Law, Article 64

[62] Trademark Law, Article 64

[63] Trademark Law, Article 65

[64] Trademark Law, Article 68

[65] Trademark Law, Article 69