It has been just over a year since Cambodia joined the Madrid system for the international registration of trademarks, and as the first responses from the Cambodian Registrar are starting to roll out, it makes for a good opportunity to address how to respond to rejections.
Based on an ex-officio examination, the Cambodian Registrar will determine if there are grounds for refusing to register the mark - such as descriptiveness, generic words, or moral grounds. The Registrar’s decision is passed to WIPO, which takes about a few weeks to send the notification on the applicant. In the notice of preliminary rejection, the applicants is informed that they have sixty days from receipt to respond in writing.
The response must be filed by a Cambodian registered trademark agent, even for simple disclaimers requested by the Registrar. Within the sixty-day window, the applicant can submit any legal arguments, required amendments, modifications, disclaimers or limitation, or in the alternative, submit a request for a hearing to the Registrar. If a hearing is requested, it will be conducted in person at the Registrar’s office in Phnom Penh, and the applicant will be notified one month prior to the date.
Failure to respond within the time period will result in the abandonment of the international registration, requiring a completely new application if the applicants wants to proceed.
If the application is deemed acceptable, the mark will be registered and a statement of granting issued, followed by publication and a 90 day opposition period.
If, however, the Registrar still refuses to register the mark, the applicant may request the confirmation of the decision and the materials referred to in the decision, and then has three months to either submit the case to the Appeal Board of the Ministry of Commerce, or the competent civil court, either of which requires a licensed Cambodian trademark agent.
For more about the Cambodian trademark system, please refer to our Guide to Trademark Law in Cambodia.