Certification Marks in Cambodia: FAQ

Cambodia introduced a dedicated legal framework for certification marks in the Ministerial Regulation (Prakas) on the Procedure for the Registration and Protection of Certification Marks (the “Prakas”), issued by the Ministry of Commerce on 30 August 2016. The Prakas works alongside — and, except where it states otherwise, borrows the general rules of — the Law Concerning Marks, Trade Names and Acts of Unfair Competition (2002) (the “Trademark Law”).

1. What is a certification mark, and how is it different from an ordinary trademark?

A certification mark is defined as any word, name, symbol, or device (or combination of these) that indicates that the goods and/or services it is used on are certified by the registered owner with respect to origin, materials, mode of manufacture, performance, quality, accuracy, or other characteristics (Prakas, Art. 4).

The key distinction from an ordinary trademark is functional: a trademark signals the commercial source of goods or services, while a certification mark signals that an independent party has verified that the goods or services meet defined standards. Except where the Prakas provides otherwise, the general provisions of the Trademark Law apply to certification marks mutatis mutandis (Prakas, Art. 5).

2. Who is eligible to own a certification mark in Cambodia?

An applicant must be a legal person and must be competent to certify the goods and/or services covered by the mark — for example, an industry association, standards body, or other organization with genuine expertise or authority over the relevant standard (Prakas, Art. 7(1)). Evidence of the applicant’s legal personality must accompany the application (Prakas, Art. 8(b)).

The law also builds in cross-restrictions to keep certification marks and ordinary trademarks separate:

•      The owner of a trademark or service mark may not register a certification mark that is identical or similar to it for identical or similar goods/services (Prakas, Art. 7(4)); and

•      Conversely, a certification mark owner may not register a trademark or service mark that is identical or similar to its certification mark for identical or similar goods/services (Prakas, Art. 7(3)).

3. Can the owner of a certification mark use the mark on its own products or services?

No. This is one of the defining restrictions of the regime. The applicant or registered owner is expressly prohibited from using the certification mark itself, and from engaging in the production, marketing, or other commercialization of goods or services identical or similar to those covered by the mark (Prakas, Art. 7(2)).

The rationale is straightforward: a certification mark is meant to represent an independent, disinterested guarantee that a standard has been met. If the certifying body were also a market participant in the certified goods or services, that independence — and the public’s trust in the certification — would be compromised. This restriction is reinforced on the back end as well: an owner who begins using the mark on its own goods or services is grounds for cancellation of the registration (Prakas, Art. 18(2)(c)).

4. If a business meets the certification standards, must the owner let it use the mark?

In principle, yes. The registered owner holds the exclusive right to authorize use of the certification mark by third parties who meet the standards set out in the mark’s Regulation of Use, and that authorization “may not be denied” to any third party that is in a position to comply with all of the Regulation’s requirements (Prakas, Art. 12(1)). In other words, certification marks operate on a non-discriminatory, standards-based access model rather than as a selectively licensed brand.

5. What documents are required to file a certification mark application?

An application is filed with the Department of Intellectual Property (DIP) of the Ministry of Commerce, in Khmer or English, and must follow the general filing requirements applicable to ordinary marks — a request, reproduction of the mark, and a list of goods/services classified under the Nice Classification (Prakas, Art. 8, referencing Trademark Law Arts. 5–7 and 9). In addition, a certification mark application must include (Prakas, Art. 8(a)–(f)):

•      A statement that the applicant will not engage in production, marketing, or provision of goods or services identical or similar to those covered by the certification mark;

•      Evidence that the applicant is a legal person;

•      A Regulation of Use governing the certification mark, which must set out at least:

(i)         the standards to be certified (origin, materials, mode of manufacture, performance, quality, accuracy, or other characteristics);

(ii)       how the owner will verify those standards;

(iii)     the mechanisms the owner will use to supervise correct use of the mark and ongoing compliance;

(iv)     how the mark will be used on products and services;

(v)       any fees payable for use of the mark; and

(vi)     procedures for settling disputes;

•      Any other documents prescribed by law or the application form;

•      For a foreign applicant: proof that the mark is registered, or that an application is pending, in its country of origin; and

•      A Power of Attorney, if the application is filed through a local agent (required for applicants without a permanent residence or principal place of business in Cambodia, per Trademark Law Art. 58).

6. How does the Department of Intellectual Property examine a certification mark application?

The Registrar examines three things (Prakas, Art. 10(1)): (i) whether the mark qualifies for protection as a certification mark under Articles 4 and 7; (ii) whether the application satisfies the formal filing requirements of Article 8; and (iii) whether the mark is otherwise unregistrable under Article 4 of the Trademark Law or Article 10 of the Law on Geographical Indications.

A notable feature is the treatment of geographical terms. Where a geographical term is used, alone or as part of the mark, specifically to certify that the goods or services originate from that region, the Registrar should not refuse the mark merely for being geographically descriptive. If the geographical term is not being used to certify origin, however, an ordinary descriptiveness refusal under Article 4 of the Trademark Law may still apply (Prakas, Art. 10(2)).

If the application has deficiencies, the applicant has six months from the notification to revise it; failing that, the application is rejected (Prakas, Art. 10(3)). During substantive examination, the DIP may also request additional explanations or evidence from the applicant or interested third parties, and may consult outside experts before deciding (Prakas, Art. 10(4)). Once all requirements are satisfied, the DIP registers the mark, issues a certificate of registration, and publishes both the mark and its Regulation of Use in the Official Gazette (Prakas, Art. 11(1)–(2)).

7. Is there an opposition period after registration?

Yes. Within 90 days of the publication date, any interested party may file an opposition against the registration, on the ground that one or more requirements of the Prakas or the Trademark Law have not been fulfilled (Prakas, Art. 14, referencing Trademark Law Art. 10).

8. Can a foreign entity register a certification mark in Cambodia?

Yes. A foreign certification mark can be registered in Cambodia provided it meets the requirements of the Prakas and is already registered in its country of origin (Prakas, Art. 13(1)). If the mark is not protected, has ceased to be protected, or has fallen into disuse in its country of origin, it will not be registered — or will be cancelled if already registered — in Cambodia (Prakas, Art. 13(2)). Foreign applicants must file through a locally qualified trademark agent (Prakas, Art. 13(3), referencing Trademark Law Arts. 58–59).

9. What is the term of protection, and what ongoing obligations apply after registration?

Term and renewal follow the general Trademark Law rules, applied mutatis mutandis: registration lasts 10 years from the filing date and is renewable for further consecutive 10-year periods, with a 6-month grace period available for late renewal (Prakas, Art. 15(1), referencing Trademark Law Art. 12).

Registration is not, however, a “file and forget” matter. The owner must maintain verification mechanisms to ensure ongoing compliance with the certification standards and must submit annual reports, in Khmer, to the DIP — listing certified products, their producers, and the measures taken to certify them (Prakas, Art. 16(1)). If the owner fails to file the annual report, or a compliance failure is found, the DIP will notify the owner and allow 90 days to remedy the default, extendable by a further 90 days on a reasoned request; continued non-compliance can result in cancellation of the mark (Prakas, Art. 16(2)).

There is also a “cooling-off” rule: once a certification mark ceases to be protected, it cannot be applied for as an ordinary trademark, nor used by anyone, for 10 years from the date protection ended — unless the DIP approves the continuation of the certification scheme by another legal person that meets the standard eligibility requirements of Article 8 (Prakas, Art. 15(2)).

10. On what grounds can a certification mark be invalidated or cancelled?

Invalidation applies where it is found that a requirement for certification mark protection under the Prakas was never fulfilled, or the registered owner was never legitimately entitled to apply under Articles 4 and 7 in the first place (Prakas, Art. 18(1)).

Cancellation applies where, after registration (Prakas, Art. 18(2)(a)–(g)):

•      the owner is no longer competent to certify the relevant goods or services;

•      the owner fails to meet the renewal/maintenance time limits of Article 15;

•      the owner begins using the certification mark on its own goods or services (a breach of the self-use restriction);

•      the mark is used in a manner that misleads the public;

•      the owner fails to secure compliance with its own Regulation of Use;

•      an amendment to the Regulation of Use renders it contrary to public order or accepted principles of morality; or

•      a foreign certification mark has ceased to be protected, or fallen into disuse, in its country of origin.

The effects of invalidation and cancellation are governed by Article 30 of the Law on Geographical Indications (Prakas, Art. 18(3)). A party affected by a DIP decision may appeal to the Appeal Board or the competent courts within three months of the decision, and a further appeal from the Appeal Board’s decision may be brought to the courts within three months of that decision (Prakas, Art. 19, referencing Trademark Law Art. 62).