Trademark Registration of "Cambodia" in Cambodia

The registration of trademarks containing the word "Cambodia", whether as a word or device mark, is often problematic - leading to unnecessary and avoidable rejections. To be clear, such registrations are possible. In fact there are more than 70 on the Registry, covering a broad range of goods and services.

Our own Abacus IP logo is registered as a trademark, which includes the word Cambodia. A number of examples include:

 

 

Under current law and practice, only Cambodian citizens, residents and companies may register marks with the country's name in it. Foreign individuals and companies applying for a mark containing the word will be met with a rejection under Article 4(d) of the Trademark Law, which states:

... A mark cannot be validly registered... if it is identical with, or is an imitation of or contains as an element ... the name of ... any State ... unless authorized by the competent authority of that State...

Thus, any foreign applicant should amend their mark to completely remove the country's name from the mark.

For Cambodian individuals and companies, it is possible to register it under certain conditions. When the "Cambodia" forms only part of the mark, used in conjunction with other word elements, as in the above examples, the mark should be registered with a disclaimer for the word "Cambodia".

In rarer cases, where "Cambodia" is combined in a mark with one generic term, the mark may be registerable, but only by obtaining the official permission of the Ministry of Commerce for such use, and in connection with one specific good or service. From our research, the only two such cases would be "Cambodia Beer" and "Cambodia Airports":

                 

 

Obtaining such permission from the Ministry of Commerce is not a routine matter, and only major, nationwide brands are likely to succeed - such as the operator of the country's airports and largest brewery.

To summarize:

  • foreign companies will not be able to register any mark with the word "Cambodia"
  • local companies and individuals can register such marks, with a disclaimer for "Cambodia", unless...
  • they are seeking protection for "Cambodia" plus a generic term, specific permission from the Ministry of Commerce will be necessary.

Continue reading more on Cambodian trademark registration.

 


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.


中国专利在柬埔寨的登记生效

依据最近中国国家知识产权局(SIPO)与柬埔寨工业及手工业部(MIH)达成的备忘录,中国的专利可以通过填写必要的文件和支付指定的费用在柬埔寨登记生效,从而将专利权延伸到柬埔寨。到目前为止,属于3个申请者的20项专利已被接受登记并生效。

被登记生效的专利必须已被授予且状况良好,申请日期在2003年1月22日(柬埔寨专利法签署日)之后。由于该系统具有追溯性,所有的只要是在有效日期之后申请的中国发明专利都有资格进行登记生效。登记生效系统不接受设计专利和实用新型专利。此外,此登记生效过程是单边的——柬埔寨的专利在中国不必进行登记生效。

由于药物专利不受柬埔寨专利法的保护,中国的药物专利不能够登记生效。
生效申请必须由柬埔寨的有资质中介向MIH内部的工业产权部门提出。生效申请包括:
• 申请表
• 中国专利的描述、专利要求书、摘要和图纸(如有)的认证副本
• 由中国国家知识产权局颁发的专利登记簿
• 经公证的委派中介的委托书原件
• 高棉语的翻译件,可以在提出申请后六个月内归档

进行了登记生效的专利在中国专利剩余的有效期间内在柬埔寨也同样有效,但需支付指定的年费。就是说,如果中国的专利剩余有效期为六年,通过登记生效的柬埔寨专利有效期也为六年。预计的处理时间为20天左右。MIH只检查申请手续;如果存在任何不足,申请者有机会在两个月内进行修正。相关的政府规章为“中国专利登记生效声明”。

 

 

中国专利在柬埔寨的登记生效

柬埔寨其他形式的知识产权导读

最后一章简要介绍了柬埔寨两种新兴的知识产权形式,以及对未来前景的讨论。

集成电路布图设计
根据2011年3月16日发布的《集成电路布图设计指引法令(宣告)》,集成电路,通常被称为半导体或微芯片,在柬埔寨属于特殊形式的知识产权。布图设计可在工业和手工业部下属的工业产权局注册。
在公告中,集成电路被定义为“一种处于成品形状或中介形式的产品,其中的元素至少有一个是有源元件,并且部分或者全部互连线路整体形成一块材料或在一块材料中,并且旨在执行电子功能。“ 布图设计的定义是“集成电路中至少有一个是有源元件的两个以上元件和部分或者全部互连线路的三维配置,或者为制造集成电路而准备的上述三维配置。”
若要注册,布图设计在世界上任何地方必须之前未经过商业利用,或者受制于商业利用未超过两年时间。 设计必须是原创的,即为创作者自己努力的结果,并且在创作时并不普遍。
申请表格必须连同以下内容提交 :
- 集成电路的名称,
- 商业利用信息,
- 优先权要求(如适用)
- 附件,包括集成电路布图设计的任何照片/图纸和说明,
- 授权委托书,如果申请人由代理人代理
- 关于任何先前国际注册的信息和表明这种注册的证据
- 官方费用付款收据。
如果申请符合宣告中规定的要求,注册处将在集成电路布图设计注册之前,在工业产权公告中发布必要的信息。 任何利害关系人可以在公布之日起30天内提出异议。
在最终注册后,根据任何利害关系人的要求,布图设计可能会基于以下理由无效:
- 集成电路的布局设计在世界上任何地区都有商业利用,利用时间超过两年,或者不是原创的;
- 所有者不是《宣言》下的受保护人。
集成电路注册所有者可以合法地禁止他人:
- 复制全部或部分内容,但复制任何不符合独创性要求的部分的行为除外,以及
- 出于商业目的进口,销售或以其他方式分发受保护的布局设计或任何包含受保护的布局设计的材料,除非得到所有者的授权。
保护期限自提交之日起10年内(如果设计未在世界任何地方进行商业利用)或其他初始商业利用日期。
迄今为止,注册处尚未收到任何布图设计注册申请。预计未来将颁布完整的法律来取代目前的《宣言》。

植物育种者权利
2008年4月8日通过的《种子管理和植物育种者权利法》在某些情况下为新的植物品种创造了知识产权。虽然该法已实施近十年,但尚未制定实施细则,该系统基本上未经测试,尚未有任何申请提交。
如果品种是新颖的,独特的,一致的和稳定的,则可以受到保护。 新颖性标准要求,截至提交日期,该品种在柬埔寨尚未售出或以其他方式在市场上推广一年以上,或者在树木或葡萄藤的情况下超过六年,或者所有在柬埔寨以外其他品种超过四年。 独特性要求,与其他在申报时或优先权日期已存在并众所周知的植物品种相比,该新品种必须可以与之明显区分开来。 均匀性要求新品种在其相关特性上足够统一,无论它是以性方式还是无性方式繁殖。 最后,如果一个品种的相关特性在繁殖周期结束时和每一代中保持不变,则认为该品种是稳定的。
申请人必须成功培育,发现和开发了该植物品种,并且是柬埔寨国民,或者是以柬埔寨为家乡,惯常居住在国际植物新品种保护联盟 (UPOV)成员国,或与柬埔寨签订互惠谅解备忘录的国家。 植物品种可以在工业和手工业部注册,工业和手工业部会将此申请委托给农业、林业和渔业部 进行技术测试。 该法律规定,申请表应附有工业和手工业部决定意见所要求的其他文件和资料,但尚未印发。若农业、林业和渔业部的技术测试结果良好,并且品种命名是可以接受的,则注册处必须授予证书并在官方公告中发布通知。 异议提交日期为公布之日起三个月。
申请人可以根据过去12个月内在国际植物新品种保护联盟成员国内提交的外国申请,提出优先权日期要求。
除了四项技术标准(新颖性,独特性,一致性和稳定性)之外,申请人必须根据法律规定为品种命名或指定一个名称。 这些命名必须已经在国际植物新品种保护联盟(UPOV)成员国中指定或注册。 即使在植物育种者权利期满后,那些在柬埔寨利用受保护品种的人也必须使用植物的已注册命名,除非有一个在先权可以阻止此类使用。 命名也可以是商号,商标或其他类似标志的标志。
任何人出于繁殖目的生产或复制或调整,要约销售,销售或营销,进口或出口或库存受保护的品种均应被认定为侵权。 保护范围涵盖以下所有类别 a)基本上衍生自受保护品种,b)与其没有明显区别,c)其生产需要重复使用受保护品种。 该产权受到若干重要限制,即出于实验,私人和非商业目的,以及为了培育其他品种为目的,还有某些例外情况。 此外,任何人都可以要求工业和手工业部 和农业,林业和渔业部授予基于公共利益的强制许可,前提是权利所有者得到了适当报酬。
保护期限一般为自授予之日起20年,但具有特殊特征的品种除外(例如树木和葡萄树),年限为25年。 可能会要求所有权人向注册处提供一份繁殖材料样品,以及其他关于该品种的可用信息,以维护其权利。 必须支付年度维护费才能保持注册有效。
权利受到损害的权利人可以向主管法院提起申诉,要求索偿损失,采取临时措施防止侵权,罚款,扣押和销毁侵权物品和/或赔偿金。 法律规定只有在被告人故意侵权的情况下才会受到刑事处罚,可判处五百万至二千万里尔(1250至5000美元)罚金,一至五年监禁或两者并罚。 屡犯者的处罚力度将翻倍。

未来发展
虽然近年来柬埔寨的知识产权情况取得了重大进展,并且颁布了各项重要法律和实施条例,并且加入了诸如《马德里议定书》,《专利合作条约》和《海牙公约》等条约,但仍然存在重要的不足有待弥补。其他一些知识产权法草案已经制定,其中包括加密的卫星信号,未披露的信息和商业机密,公共卫生强制许可以及反垄断法。在一些情况下,这些草案在立法过程的不同阶段中一直处于待决状态,很难预测它们是否颁布以及何时颁布。