Oppositions and cancellations of trademarks in Cambodia are a big issue, as it's not uncommon for illegitimate applicants to sneak through the Registrar's processes. We've seen quite a few cases over the years, from local distributors registering their suppliers' marks in contravention of their agreement, to outright fraud by trademark squatters looking to extort international brands. But there are things one can do.
With a proper trademark watch service, a brand owner should become aware of dubious applications in time to file an opposition, which must be done within 90 days of publication in the Official Gazette. If this deadline has lapsed, it is still possible to petition the Registrar, which can be done on largely the same grounds as opposition, though the official fee is higher.
The Trademark Law provides for four separate procedures to challenge applications and registrations: opposition, invalidation, cancellation and removal. There's significant overlap between them, and we've seen them often incorrectly used interchangeably. Below is a roundup to shed some clarity on the differences in terms of timeframe, cost and grounds. Opposition Article of Trademark Law: 10(c) Timeframe: 90 days from publication in Official Gazette Official Fee: US$20 Grounds:
if is not a visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise (Art. 2a)
if it is incapable of distinguishing the goods or services of one enterprise from those of other enterprises (Art. 4a)
if it is contrary to public order or morality or good custom (Art. 4b)
if it is likely to mislead the public or trade circles, in particular as regards the geographical origin of the goods or services concerned or their nature or characteristics (Art. 4c)
if it is identical with, or is an imitation of or contains as an element, an armorial bearing, flag and other emblem, a name or abbreviation or initials of the name of , or official sign or hallmark adopted by, any State, intergovernmental organization or organization created by an international convention, unless authorized by the competent authority of that State or organization (Art. 4d)
if it is identical with, or confusingly similar to, or constitutes a translation of, a mark or trade name which is well known in the Kingdom of Cambodia for identical or similar goods or services of another enterprise (Art. 4e)
if it is identical with, or confusingly similar to, or constitutes a translation of a mark or trade name which is well-known and registered in the Kingdom of Cambodia for goods or services which are not identical or similar to those in respect of which registration is applied for , provided that use of the mark in relation to those goods or services would indicate a connection between those goods or services and the owner of the well-known mark that the interests of the owner of the well-known mark are likely to be damaged by such use (Art. 4f)
if it is identical with a mark belonging to a different proprietor and already on the Register, or with an earlier filing or priority date, in respect of the same goods or services or closely related goods or services, or if it so nearly resembles such a mark as to be likely to deceive or cause confusion (Art. 4g)
Invalidation Article of Trademark Law: 13 Timeframe: anytime Official Fee: US$105 Grounds:
if is not a visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise (Art. 2a)
if it is incapable of distinguishing the goods or services of one enterprise from those of other enterprises (Art. 4a)
if it is contrary to public order or morality or good custom (Art. 4b)
if it is likely to mislead the public or trade circles, in particular as regards the geographical origin of the goods or services concerned or their nature or characteristics (Art. 4c)
if it is identical with, or is an imitation of or contains as an element, an armorial bearing, flag and other emblem, a name or abbreviation or initials of the name of , or official sign or hallmark adopted by, any State, intergovernmental organization or organization created by an international convention, unless authorized by the competent authority of that State or organization (Art. 4d)
if it is identical with, or confusingly similar to, or constitutes a translation of, a mark or trade name which is well known in the Kingdom of Cambodia for identical or similar goods or services of another enterprise (Art. 4e)
if it is identical with, or confusingly similar to, or constitutes a translation of a mark or trade name which is well-known and registered in the Kingdom of Cambodia for goods or services which are not identical or similar to those in respect of which registration is applied for , provided that use of the mark in relation to those goods or services would indicate a connection between those goods or services and the owner of the well-known mark that the interests of the owner of the well-known mark are likely to be damaged by such use (Art. 4f)
if it is identical with a mark belonging to a different proprietor and already on the Register, or with an earlier filing or priority date, in respect of the same goods or services or closely related goods or services, or if it so nearly resembles such a mark as to be likely to deceive or cause confusion (Art. 4g)
Cancellation Article of Trademark Law: 14 Timeframe: anytime Official Fee: US$105 Grounds:
The applicant does not apply for renewal of the registered mark within the period prescribed. (Art. 14a)
The owner of the registered mark requests the removal. (Art. 14b)
The owner of the registered mark has not complied, within 90 days, with the conditions or restrictions prescribed under Article 8. (Art. 14c)
The owner of the registered mark ceases to have an address for service in the Kingdom of Cambodia. (e)-It is convinced upon evidence that the owner of the registered mark is not the legitimate owner. (Art. 14d)
It is convinced that the registered mark is similar or identical to a well known mark owned by third party. (Art. 14f)
Removal Article of Trademark Law: 15 Timeframe: at least five years after registration Official Fee: US$105 Grounds:
Up to one month prior to filing the request the mark had, after its registration, not been used by the registered owner or a licensee during a continuous period of five years, provided that a mark shall not be removed if it is shown that special circumstances prevented the use of the mark and that there was no intention not to use or to abandon the same in respect of those goods or services. (Art. 15)
For more about the Cambodian trademark system, please refer to our Guide to Trademark Law in Cambodia.