Can I Register My Logo? Trademark Clearance Search in Cambodia

Entrepreneurs in Cambodia deciding on a logo for a new venture, or even established businesses launching a new product line, need to consider whether it will infringe any registered trademarks. They also should determine whether they themselves could register it as a trademark. This is known as a clearance search.

A Cambodian business will first and foremost be concerned about the Cambodian market - meaning whether the logo is on the Cambodian trademark register. We've written before on search options, but wanted to point our readers to a few Do-It-Yourself options and tips for conducting a very rough and cheap clearance search themselves.

This could be a first step, as potential logos are being brainstormed and debated. Before being settled on and adopted for a new business or product, we would highly recommend performing an official trademark search, through the Ministry of Commerce's Department of Intellectual Property Rights. This will provide an official registerability report, clearing the way for a successful trademark application, or indicating what obstacles would need to be overcome.

Here's how.

The Cambodian Trademark Database is available online through the World Intellectual Property Office's website: http://www.wipo.int/branddb/kh/en/

Unfortunately, it is not possible to search for logos/devices through that URL. However, strangely enough, the same WIPO database IS searchable for logos through the "Global Brand Database" at http://www.wipo.int/branddb/en/. As the Cambodian database is essentially just a subset of the Global Brand Database, it would seem they should be able to provide the same interface. Alas, they do not.

To search for Cambodian marks, under "Search by"->"Origin" enter "KH" (country code for Cambodia).

You then have three possibilities for searching for a logo:

First, under "image class", one can search by keywords associated with a logo - such as TREE, BOAT, CIRCLE, etc.

Second, also under "image class", one can enter the specific "Vienna Codes" used to categorize visual trademarks. For a list of the codes and further information refer to: http://www.wipo.int/classifications/vienna/en/

Third, under "Filter by", and then the "Image" tab, one has the option to search by uploading an image directly (why this is labelled as a filter and not a search is puzzling). This will purportedly reveal any registrations similar to that of the image searched. However, our testing of the system for Cambodian marks failed to reveal obvious matches in a number of cases. We would therefore recommend relying on the first two methods. Further information about the image search can be found in WIPO's help desk (http://www.wipo.int/branddb/en/branddb-help.jsp)

With the above search methods, one can obtain a general idea of whether a logo is clearly NOT registerable. However, in most cases there will be a degree of discretion regarding the similarity between the marks and the goods. For a reliable clearance search before deciding on a logo, it is best to conduct an official search with the Department of Intellectual Property Rights.

For more on trademark practice in Cambodia, please refer to our Guide to Trademark Law in Cambodia.


PCT National Phase Entry in Cambodia: The Essentials

 

In 2016, Cambodia became the 151st member of the Patent Cooperation Treaty, allowing entry into national phase in Cambodia for international patent applications. The Designated (or Elected) Office in Cambodia under the PCT is the Department of Industrial Property of Cambodia of the Ministry of Industry and Handicraft (DIPC). The time limit for entry into the national phase is 30 months from the priority date. The PCT entered into force in Cambodia on December 8, 2016, thus only international applications filed on or after this date may enter the National Phase in Cambodia.

In order to enter the PCT national phase in Cambodia, the following documentation must be submitted - in original - to the DIPC:

-        Certified copy of the International Application

-        An original notarized Power of Attorney

-        An original notarized statement justifying the applicant’s right to the patent

-        Name and address of the inventor, if they have not been furnished in the “request” part of the international application

-        Evidence of entitlement to claim priority, if the applicant is not the applicant who filed the earlier application

-        Document evidencing a change of name of the applicant, if the change occurred after the international filing date

The international application may be submitted in English but will need to be translated into the Cambodian language (Khmer).

Pharmaceutical inventions are excluded from patent protection in Cambodia, as the country was granted a temporary exception to TRIPS obligations as a least-developed country.

The competent international searching authorities are the European Patent Office, Japan Patent Office, Intellectual Property Office of Singapore and National Intellectual Property Administration of China. Assuming the international search has been carried out by that authority, each may also serve as the competent international preliminary examining authority.

Of particular note is that the Kingdom has opted out of Article 59 of the Treaty, which gives the International Court of Justice jurisdiction to adjudicate disputes between contracting states.

For more information on the patent system in general, refer to our Guide to Patent Law in Cambodia.


Cambodian Patents: Six Paths to Registration

Since enactment of the Cambodian patent law in 2003, Cambodia has entered into cooperation agreements with four foreign patent offices, as well as joining the Patent Cooperation Treaty in 2016. Aside from filing of a direct application with the Cambodian Patent Office, applicants can take advantage of the following paths to obtaining a patent registration:

  1. PCT National Phase Application
  2. Chinese Patent Validation
  3. Japanese Patent Acceleration
  4. Direct Filing to Cambodian Patent Office
  5. European Patent Validation
  6. Singaporean Patent Re-Registration

For more on the Cambodian patent system, readers can refer to our Guide to Patent Law in Cambodia.

Cambodian Patent Registration


Trademark Cancellation for Non-Use in Cambodia

Trademark cancellation for non-use in Cambodia is one of the most common grounds for having a mark removed from the Register. As Cambodia is a first-to-file system, trademark applicants do not need to be using the mark at the time of application, nor is there a requirement to prove any intent to use. To police trademark squatting, Article 15 of the Trademark Law states that:

“Any interested person may request the Ministry of Commerce to remove a mark from the Register, in respect of any of the goods or services in respect of which it is registered, on the ground that up to one month prior to filing the request, the mark had, after its registration, not been used by the registered owner or a licensee during a continuous period of five years, provided that a mark shall not be removed if it is shown that special circumstances 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.”

Further, the law requires that an affidavit of use or non-use be filed in the fifth year of registration. In practice, if an interested party has requested removal of a mark on the ground of non-use, the Registrar will first look to whether the affidavit has been filed. If it has, the requestor will have a difficult burden to overcome, but could conceivably submit specific evidence showing that the mark has not been used and that there was no intention to use it. If, however, the affidavit has not been filed, the Registrar will inform the holder of the cancellation request and allow them a chance to submit evidence and rectify the situation. Should the trademark owner not respond, or not respond satisfactorily, the mark should be removed from the Register. The removal will be published in the Official Gazette, and the former owner and interested party will be informed.

There is at present no jurisprudence nor official guidance on who an “interested party” may be, nor what “special circumstances” would justify non-use. As a practical matter, the filing of the affidavit – whether indicating actual use, or justified non-use - is most often sufficient to defend against a non-use cancellation request. To prevent trademark cancellation for non-use, it is strongly recommended that the affidavit be timely filed in the fifth year of registration.

 

For more on the subject:

Trademark Oppositions & Cancellations in Cambodia

Guide to Trademark Law in Cambodia


The Ten Types of Trademarks in Cambodia

Trademarks in Cambodia can be categorized into ten broad classes, covering both the traditional marks (words, logos) as well as non-traditional marks like the product shape, architectural designs, and holograms.

The key criteria is that it must be visible - Article 2(a) of the Trademark Law states that a "mark means any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise". This excludes such non-traditional marks as sounds, smells, tastes and touches.

 

1. Word

Likely the most common type of trademark in Cambodia, a word mark is simply the combination of letters, registered in standard font without any styling:

CADBURY, ADIDAS, APPLE COMPUTER

 

2. Device / Logo

Drawings or pictures:

 

3. Word & Device

Any combination of drawings or pictures in combination with words:

 

4. Product Shape

The shape of the product itself, also referred to as a type of trade dress or a 3-d mark:

 

5. Product Packaging

Also a type of 3-d mark or trade dress, the packaging that the product comes in, rather than the product itself:

 

6. Label

Rather than the entire packaging, the printing appearing on the packaging can be registered separately:

 

7. Architectural Design

The design of a building or landmark, or elements thereof (see our prior post for more)

 

8. Colors

While single color marks are not registerable, when a color is in combination with a particular product feature, it could be registerable. Christian Louboutin was able to register their red shoe sole:

 

9. Hologram ?

A type of 3-D image, holograms have been registered in other jurisdictions. While our research failed to reveal any registrations in Cambodia, they would likely satisfy the "visual" requirement, and be registerable in our view.

 

10. Motion ?

Distinctive motions are registerable as trademarks in a number of jurisdictions. An uncommon type of trademark, the most famous examples are the rising doors of a Lamborghini and the changing colors of the Microsoft logo on the startup screen. To our knowledge, no motion marks have yet to be filed in Cambodia, but we would likely qualify as "visible" and therefore be accepted.

 

 

 


Trademarks in Architecture: The State of Cambodian Law

Two pending trademark applications for architectural designs raise the question of the scope of trademark protection for building designs in Cambodia.

Many jurisdictions around the world recognize trademark rights in both specific elements of a building - such as an iconic statute, door, or spire - as well as potentially in the overall design of the building itself. The key legal question that the trademark office and courts contend with is whether the public, when viewing the building or design elements, associates it with the company applying for the trademark. A balance needs to be struck between protecting consumers from confusion, and not granting exclusive use of common architectural designs and elements.

In Cambodia, based on our trademark searches, the only architectural designs currently registered are for gas stations, held by Total, BP, and Sokimex (a local company). Their registrations cover the gas station awning, and in the case of Total and BP, also the signage on the pumps and main sign showing the gas prices, as show below:

The key to these designs being accepted for registration is their color schemes. As almost every modern gas station shares the same basic layout of pumps and an awning, it is only the design in combination with the colors that allows the consumer to associate the station with a particular source, and makes them protectable.

In terms of the Cambodian Trademark Law, an architectural design application will not be registered "if it is incapable of distinguishing the goods or services of one enterprise from those of other enterprises" (Article 4(a)).

Just recently, Shell joined the competition and filed a series of trademarks (application numbers KH/80564/18, KH/80565/18, and KH/80566/18) for their own gas station designs, as shown below:

Similar to those of BP, Total and Sokimex, the Shell application shows the architectural layout of the station in combination with at least two colors, and we would expect it likewise to be accepted for registration.

Leaving gas-stations aside, two recent applications (KH/77122/17 and KH/77120/17) by Wynn Resorts will test the scope of trademark protection in architectural designs. Last year they filed for the design of their casino resort, submitting the following specimen:

Whereas the gas stations combined generic architectural elements with two or more colors, the Wynn applications are monochrome. The two applications are still pending, a decision should be expected this year. Check back for an update!


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.