The concept of “well-known marks” plays a key role in determining the scope of trademark rights, especially when it comes to opposition and cancellation proceedings in Cambodia.
A scenario we've seen play over and over is of a well established international brand that has not registered their marks in Cambodia, finding out that another firm has filed for their marks, or ones confusingly similar. Unless it can show bad faith, the brand is left arguing its opposition or cancellation case based on the grounds that its mark is "well-known".
Though the term is used in many articles of the Law on Trademark, Tradenames and Unfair Competition, it is nowhere defined. Thankfully, the Department of Intellectual Property Rights applies the definition and rules found in WIPO and the Paris Union's "Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks" of 1999.
In determining whether a mark is well-known, the Joint Recommendation sets forth six, non-exclusive and non-mandatory factors:
1. the degree of knowledge or recognition of the mark in the relevant sector of the public;
2. the duration, extent and geographical area of any use of the mark;
3. the duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies;
4. the duration and geographical area of any registrations, and/or any applications for registration, of the mark, to the extent that they reflect use or recognition of the mark;
5. the record of successful enforcement of rights in the mark, in particular, the extent to which the mark was recognized as well known by competent authorities;
6. the value associated with the mark.
In practice, the Registrar gives strong preference to evidence showing the mark is well-known in Cambodia, followed by other South-East Asian countries, and the rest of the world.