Perhaps the most common reasons why a trademark application is rejected in Cambodia is because of failing to disclaim certain parts of the mark. By appropriately disclaiming such parts in the initial application, the applicant will avoid having to respond to the provisional refusal. This saves time and money.
A disclaimer is a limitation of the exclusive rights obtained by registering a trademark. Generally speaking, the owner of a trademark has no right to exclusive use of disclaimed elements, but rather just to exclusive right to the trademark only as a whole.
Unfortunately, the trademark law and regulations in Cambodia provide little guidance on what should, or must be disclaimed. Knowing which disclaimers should be offered in the initial application, which should be agreed to following a refusal, and possible arguments why not, is a matter of judgment based on experience.
Disclaimers are usually required for non-distinctive elements, meaning those that are descriptive of a characteristic of the goods or services, are common to the trade, are geographic names or surnames. One mark may be subject to one or multiple separate disclaimers.
A typical disclaimer follows the form:
“Registration of this trademark shall give no exclusive right to the words (disclaimed part)”.
A disclaimer can be considered as a way to avoid or overcome a provisional refusal. It will often be requested in the notification of provisional refusal, in which case the applicant has simply to agree to the disclaimer and the mark should be registered. If the refusal does not request a disclaimer but rather states that the mark is descriptive, the applicant may still respond offering to disclaim the descriptive elements. The acceptance of the application is then at the discretion of the Registrar, however.
With that framework in mind, several specific considerations should be noted based on the type of mark:
When filing a trademark application in Cambodia for a word, all descriptive and generic elements should be disclaimed. A few examples would be:
“Abacus IP” for intellectual property services, would disclaim “IP”
“Ford Motor Company” for cars, would disclaim “Motor" and "Company”
“Manulife” for life insurance, would disclaim “life”
Further, geographic names (Cambodia, New York, China…) will need to be disclaimed, as would surnames as would combinations of two letters. Finally, dates and years should be disclaimed.
Design or Device Trademarks
For design marks, meaning simply a graphic representation with no words, the most typical disclaimer would be for elements that accurately represent the applied for goods or services. So a logo design that integrated pictures of apples, and specifying apples in the goods, would need to disclaim exclusive ues to the apple picture. However, when the design of the descriptive element is highly stylized, no disclaimer should be required nor filed. The stylization thus creates a distinct commercial impression and should be protected.
Composite trademarks, meaning a combination of a design and words, follows the same principles as those described above. So, if a composite mark contains the word “apple” or a picture of an apple, and filed for the goods apple, a disclaimer should be necessary. However, special care should be taken, as a composite mark might be considered unitary (as discussed below), and thus no disclaimer is warranted.
Labels and Packaging Trademarks
Labels and packaging, while registerable, often contain many non-distinctive elements. Usually a label will contain the generic name of the product (so buyers know what they’re buying), product information, ingredients, weight, etc. These elements should all be disclaimed, or even deleted from the mark. Because there can be so many distinct elements that need disclaiming, it is acceptable to use a disclaimer of the form “the mark is protected in a whole form and the stylized (describe the distinctive element) only”.
An important, and rather advanced issue, is presented by “unitary” marks. A mark, or part of a mark, is considered unitary if it creates a commercial impression separate and apart from any unregisterable component. In other words, the elements are merged together such that they cannot be divided and regarded as separable elements. If the mark is unitary, an individual component does not need to be disclaimed. A mark should be considered unitary if the whole is more than the sum of its parts.
To conclude, disclaimers form an important part of trademark prosecution in Cambodia. By properly analyzing a proposed trademark, an experienced trademark agent should be able to recommend disclaiming elements that will likely result in the application being refused.
For more about trademarks in Cambodia, please refer to our Guide to Trademark Law in Cambodia.