Bad faith trademark applications are not uncommon in Cambodia, though less widespread than a decade ago. While not mentioned nor defined under Cambodian law, applications made in bad are implicitly treated and the concept can be a useful tool to seek the cancellation or opposition of such a mark.
Bad faith can be defined as “conduct which departs from accepted principles of ethical behavior or honest commercial and business practices.”(a). In the context of a trademark application, one filed where the applicant knows that the mark belongs to another person with a better claim to it, without that person’s permission, can be considered bad faith. The applicant may know about the mark because it is well-known, or because they have a particular connection or business relationship with the legitimate owner. A common situation in Cambodia is where a local distributor registers a mark without the foreign producer’s knowledge or consent.
In Cambodia, the Department of Intellectual Property Rights has the right to order the cancellation of a registration if it is convinced upon evidence that the owner of the registered mark is not the legitimate owner (Article 14(e) of the Trademark Law). While this provision is the most relevant for addressing bad faith applications, it does not mention the term and in fact covers a broader range of scenarios. Specifically, a petitioner does not need to show either knowledge of the mark nor malicious intent on the part of the applicant – simply that they are not the “legitimate owner”. Nevertheless, evidence of knowledge and intent can be very helpful in providing the context to convince the Registrar to cancel the mark.
While not a Cambodian law or regulation, the Registrar generally follows the ASEAN Common Guidelines for the Substantive Examination of Trademarks (though it is not binding on their decisions). These Guidelines discuss in length bad faith applications. Three non-exclusive factors must be taken into account, according to the Guidelines
Identity or high similarity of the marks
Knowledge of the earlier mark by the applicant or registrant
Dishonest intention in applying for registration
Cancellation of a registered mark, as well as opposition of newly-registered ones, can be requested by any interested party upon written request and payment of the official fee. The petitioner must indicate the legal grounds for the cancellation or opposition, and should submit evidence in support of their arguments.
For bad faith applications, the petitioner should prove that they are the legitimate owner by submitting trademark registration certificates from abroad, as well as any evidence about their relationship to the applicant or background information. Following the petition, the Registrar will inform the applicant and provide them the opportunity to respond in writing. The Registrar may then request further information or documentation, invite the parties to a hearing, or make a decision based on the record.
To prevent one’s trademark from being registered in bad faith in Cambodia, foreign rights holders should file for registration as soon as possible, as Cambodia applies a first-to-file rule without any necessity of use at the time of application. The cost of applying and maintaining a registration is much lower than the often lengthy cancellation proceedings. Second, foreign applicants should monitor the Trademark Gazette for publication of bad-faith registrations. Should problematic registrations be discovered, an opposition should be filed within the 90 day opposition period, during which the Registrar is more likely to strike the mark from the Registry compared to a cancellation request.
While statistics on cancellations are not available, anecdotally bad-faith applications have decreased over the last decade. Whereas bad-faith trademark squatting, particularly of globally-famous brands, was not uncommon during the early days of the Cambodian trademark system, the Trademark Office has become more vigilant and attuned to the problem.
(a) (Opinion of Advocate General Sharpston of 11 June 2009, C-529/07, Lindt Goldhase, EU:C:2009:361, § 60, and similarly, 01 April 2009, R 529/2008-4, FS (fig.), § 14). See EUIPO Guidelines, Part D, Section 2, item 3.3.2.)
For more on trademarks in Cambodia, refer to our Guide to Trademark Law in Cambodia.