Maintaining a trademark in Cambodia is relatively simple, but important to attend to in order to preserve one's rights. Once an application is granted, the owner should note in their calendar the relevant dates for affidavits and renewals, and be aware of further events that will require a filing with the Cambodian trademark office.
Affidavit of Use or Non-Use
In the fifth year of registration, an affidavit must be filed with the Cambodian trademark office. This indicates whether the mark is in use or not. If not, the mark can continue being registered under special circumstances. Failure to submit the affidavit can result in the cancellation of the mark on the grounds of non-use. It is also necessary for renewing the registration. Upon submission of the affidavit and payment of the applicable fee, the trademark office will endorse the trademark certificate with a statement that the affidavit has been filed.
The term of trademark registration in Cambodia is ten years from the application date, extendable for subsequent ten-year terms indefinitely. Assuming the affidavit has been filed, the trademark owner needs simply to submit the applicable form and pay the renewal fee in a timely manner. The trademark office does not send reminders to owners, they are responsible for tracking the deadlines themselves. A six-month grace period, subject to a late fee penalty, applies.
Changes of Name and Mergers
If the name of the company (or individual) listed as the owner of the mark changes, or the company merges, this needs to be recorded with the trademark office. A simple declaration of change of name or merger, together with payment of the official fee, needs to be submitted. When a trademark owner fails to do so, and then applies for new, similar marks under their new name, their old marks are often cited against them in a provisional refusal. They then need to perform the change of name and respond to the refusal, incurring additional time and expense.
Changes of Address
As with changes of name, any change in the registered address of the trademark owner needs to be recorded in Cambodia. Again, failure to do so can lead to unnecessary refusals when new marks are filed. Having an up-to-date address on file also makes it easier for other parties to contact the trademark owner, such as in cases of infringement, consent letters, or licensing matters.
Should the trademark registration be transferred to another party through an assignment, this needs to be recorded with the Cambodian trademark office. A basic deed of assignment, covering either the entire mark or a portion thereof, must be notarized and submitted.
Changes in Goods or Services
Should the trademark owner wish to expand, or contract, the scope of protection, an amendment of the goods or services can be filed. All goods or services must be within the original class.
Changes in Trademark
A trademark owner can request to change the registered mark, within reason. This is typically the case for device marks, where a new, slightly redesigned mark has been adopted. The allowable difference between the old and new marks is at the discretion of the trademark office. If the difference is too great, it would be considered a separate mark and require a new trademark application.
For more about the Cambodian trademark system, please refer to our Guide to Trademark Law in Cambodia.