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