Oct 10, 2023 (Newsletter Issue 8/23)
Trademark Rules Tightened with Multiple-Class and Affidavit Stipulations
Cambodia recently tightened its trademark procedures by restricting the filing of separate single-class applications for a mark covering multiple classes, and tightening the deadline for filing affidavits of use or non-use. The latter requirement is especially consequential for existing registered trademark owners, as disregarding it could result in removal of the registered mark from Cambodia’s trademark registry.
Multiple-Class Applications
Cambodia’s Ministry of Commerce announced on August 1, 2023, that the Department of Intellectual Property Rights will now only accept a single application for a trademark covering more than one international class.
This means that multiple-class applications are mandatory for applications covering more than one class. Previously, trademark applicants were allowed to file separate single-class applications for the same mark covering multiple classes. The new rule, which took effect immediately, aims to reduce unnecessary paperwork and facilitate the trademark registration process.
Period for Filing Affidavits of Use or Non-Use
On August 11, 2023, the Ministry of Commerce issued a notification stating that trademark registrants who miss the deadline for filing an affidavit of use or non-use will no longer be allowed to file an affidavit after the deadline or at the time of filing the trademark renewal, as had previously been allowed.
This is in line with the Sub-Decree Concerning the Filing of an Affidavit of Use or Non-Use, which requires registered trademark owners to file an affidavit of use or non-use of the trademark within one year following the fifth anniversary of the mark’s registration or renewal.
Importantly, the notification announces that registered trademarks will be removed from the registry if the trademark owner fails to file an affidavit of the mark’s use or non-use within the required time period.
This announcement applies to both domestic registrations and international registrations made under the Madrid Protocol.
Although the notification does not explicitly state an effective date, trademark owners would be prudent to assume they should file any necessary affidavits of use or non-use that are past the legally required time period as soon as possible or face potential removal of their trademark registration from the registry.
Source: www.tilleke.com
Jun 25, 2020 (Newsletter Issue 10/20)
E-Filing Services Expanded
The Department of Intellectual Property Rights (DIP) of Cambodia has implemented new functions in its e-filing system to allow online submission of most post-registration matters.
In addition to the e-filing of trademark applications, the system can now handle renewals, affidavits of use, responses to refusals, and changes of agent. Other matters, including oppositions, invalidations, changes of address and search requests still need to be submitted in paper form with the DIP. The e-filing system requires an account at the DIP and a local bank account. It is only open to domestic applicants and registered trademark agents.
Source: www.abacus-ip.com
Apr 30, 2020 (Newsletter Issue 6/20)New Requirements for Filing an Affidavit of UseIn order to simplify the process of filing an affidavit of use/non-use, the Department of Intellectual Property of Cambodia (DIP) has made some changes to the documents to be filed with the following details:
(i) Request for endorsement of an affidavit of use/non-use signed by the local agent.
(ii) Power of Attorney (“PoA”), in case new IP agent is appointed. However, if the trademark owners resort to their previouse IP agent to file an Affidavit of Use/Non-use, the earlier provided PoA is acceptable.
(iii) Copy/ies of Trademark Registration Certificate(s). Previously, the original Trademark Registration Certificate(s) is/are required to be submitted to the DIP.
(iv) Evidence of use/non-use
- If the mark is still in use, the box indicating "the mark is in use" must be checked. Furthermore, proof of use of the trademark in Cambodia must be provided, e.g. in the form of photos of the product, shops selling the product, invoices containing the name of the product
- If the mark is not used, the box must be filled in with the words "not used".
Source: KENFOX IP & Law Office, Vietnam Mar 19, 2020 (Newsletter Issue 4/20)Filing and Recording Exclusive Distributorships RequiredOn December 24, 2019, the Ministry of Commerce issued a notification on the filing and recording of letters of exclusive importation and distribution of trademarked goods. This notification supplements the 2016 Prakas on the Procedure to Record and File Letters of Exclusive Importation of Trademarked Goods, which required importers with the exclusive right to import goods bearing specific trademarks to record that exclusivity in order to enforce their rights against third parties.
Importers must file and record a letter setting out those rights and laying out the specific models that they are authorized to import and distribute, particularly relevant in cases of multiple product models such as electronic devices.
This requirement should allow trademark owners and distributors to enforce their rights more effectively, especially against parallel imports.
For more information, please click hereSource: www.tilleke.com Apr 26, 2018 (Newsletter Issue 8/18)
Accession of Geneva Act of the Lisbon Agreement
WIPO informed that Cambodia is the first state party to join the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications ("Geneva Act"). The Government of Cambodia deposited its instrument of accession to the Geneva Act on March 9, 2018.
The Geneva Act is designed to help ensure that producers of quality products linked to origin are able protect the distinctive designations of their products in multiple jurisdictions, either as appellations of origin or geographical indications, through a single application with WIPO and the payment of one set of fees.
The Geneva Act will enter into force three months after five eligible parties have deposited their instruments of ratification or accession.
Source: www.wipo.int
Jun 14, 2017 (Newsletter Issue 11/17)Online Filing System of Trademarks LaunchedA new online trademark registration system was launched, allowing for faster and more convenient filing. The E-Filing platform can be used only for new trademark application, while post-application actions must be filed in person at the Department of Intellectual Property. This system is optional, as it will operate alongside traditional paper-filing in person.
According to the Prakas (Regulation) issued by the Ministry of Commerce on May 4, 2017, an applicant with permanent residence or principal place of business inside Cambodia can use this system. The applicant has to request in writing to the Department of Intellectual Property for a user name and password. For foreign applicants, the system can only be used through a registered Cambodian trademark agent.
Source: Abacus IP, Cambodia
Nov 09, 2016 (Newsletter Issue 20/16)
New Regulation on Certification Marks
On August 30, 2016, a new declaration on the Procedures for Registration and Protection of Certification Marks was enacted by the Ministry of Commerce. The declaration sets forth procedures and documents required for national and international registration, term of protection, invalidation, and cancelation.
In order to register, the applicant must have legal personality and competency for certifying the goods and/or services. The application form can be submitted to the Department of Intellectual Property of the Ministry of Commerce in the Cambodian or English language, using the prescribed form, along with a statutory declaration/affidavit, a certificate of competency, and regulations governing use of the certification mark.
The applicant can also claim the priority right of an earlier application filed by the applicant based on the Paris Convention. Further, a foreign applicant must be represented by a local trademark agent, accompanied by a registration certification or an application in the foreign applicant's home country, and an original notarized power of attorney. The official fees will be determined in a joint declaration between the Ministry of Commerce and the Ministry of Economy and Finance. Currently, the official fees for ordinary trademark registration shall apply.
The applicant has six months to respond to the Registrar if the application requirements are not fulfilled. As soon as it registered, the information of the certification mark and the regulations governing use will be published. Any interested person may submit a statement of opposition to the Registrar within 90 days from the post-registration publication date.
The registration is valid for ten years from the date of filing the application and may be renewed for consecutive periods of ten years. The owner must report the list of products and producers to the Department of Intellectual Property annually. The report and the relevant documents in other languages must be translated into the Cambodian language and certified by a Cambodian trademark agent or professional translator registered in Cambodia.
Failure to provide the annual report and the required documents to the Department of Intellectual Property within 90 days from the date of notification may result in cancelation of the registration.
Source: INTA Bulletin Vol. 71 No. 19 of Nov. 1, 2016
Contributor: Pheng Thea, Abacus IP, Phnom Penh, Cambodia and verifier: Ly Pharavy, Trademark Agent, Phnom Penh, Cambodia
Mar 02, 2016 (Newsletter Issue 4/16)Declaration of Use for International Registrations RequiredHolders of international registrations containing a designation of Cambodia must file declarations of actual use of the mark with evidence to that effect. Such declarations must be filed directly with the Office of Cambodia, as prescribed by the applicable laws and regulations and upon payment of a fee:
- Within a one-year period, following five years counted from the date on which protection was granted in Cambodia, as indicated in the statement sent by the Office of Cambodia to the International Bureau of WIPO under either Rule 18ter(1) or (2) of the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement; and
- Within a one-year period, following five years counted from the date of each renewal of the international registration.
Alternately, a declaration of non-use of the mark, stating the valid grounds, under the laws of Cambodia, can be filed with the Office of Cambodia. This declaration must be submitted by the holder’s authorized representative with a local address or by a legal representative in Cambodia. A local address is required for purposes of notification.
Failure to file declarations of either actual use or non-use of the mark will prompt the Office of Cambodia to declare, ex officio, that the mark is no longer protected.
For further information, please see here
Source: www.wipo.int May 13, 2015 (Newsletter Issue 7/15)
Recording of Licenses in International Register no Effect
The Government of Cambodia has notified the Director General of the World Intellectual Property Organization (WIPO) that the recording of licenses in the International Register shall have no effect in Cambodia.
Consequently, a license relating to an international registration of a mark which has been granted with respect to Cambodia shall, in order to have effect in that Contracting Party, be recorded in the national Register of the Office of Cambodia. The formalities required for such recording must be completed directly with the Office of Cambodia and according to the conditions laid down by the legislation of that Contracting Party.
The notification made by the Government of Cambodia under Rule 20bis(6)(b) of the Common Regulations shall enter into force on the date of entry into force of the Madrid Protocol with respect to Cambodia, namely, June 5, 2015.
Source: www.wipo.int
Mar 31, 2015 (Newsletter Issue 5/15)
Accession to the Madrid Protocol
On March 5, 2015, the Government of Cambodia deposited with the Director General of the World Intellectual Property Organization (WIPO) its instrument of accession to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (“the Madrid Protocol”).
The Madrid Protocol will enter into force, with respect to Cambodia, on June 5, 2015.
The said instrument of accession was accompanied by the declaration referred to in Article 5 (2)(b) and (c) of the Madrid Protocol, whereby the time limit of one year to notify a provisional refusal of protection is replaced by 18 months, and a provisional refusal resulting from an opposition may be notified after the expiry of the 18-month time limit.
Source: www.wipo.int
Legal basis is the Law on Marks, Trade Names and Acts of Unfair Competition in force since February 2002. This was followed in 2006 by a Sub-Decree on its implementation.
Cambodia became a member of Madrid Protocol as from June 5, 2015.
Cambodia is not a member of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks. However, Cambodia applies the current edition of the Nice Classification of goods and services consisting of 45 classes for trademark registration.
Trademark protection is obtained by registration. It can also be acquired by sufficient public recognition.
Nice classification, 11th edition.
Registrable as a trademark are all distinctive and graphically representable signs, such as words, names, acronyms, letters, numbers, devices, three-dimensional forms, colour combinations and any combination of the mentioned signs.
The following types are registrable as trademarks: trademarks, service marks, collective marks, certification marks and trade names.
Sound and smell marks can not be registered in Cambodia.
The application is filed at the Department of Intellectual Property Rights (DIP) of the Ministry of Commerce.
Multi-class applications are accepted in Cambodia. However, fees for a multi-class application would not be reduced for the class(es) of goods/services from the second one.
Foreign applicants need a local agent to file their foreign applications in Cambodia.
Foreign applicants do not need a domestic registration.
An original notarized power of attorney appointing a local agent shall be submitted on filing to the Department of Intellectual Property Rights or it can be submitted within 60 days of the application date.
The application process includes a formality examination and substantive examination.
Signs not deemed distinctive in the examination may be registered if distinctiveness has been acquired by use or if the registration was accepted in various other countries. Yet, the chance to achieve the registration of an "indistinctive mark" is low.
The Registrar will publish only the registered marks in the Official Gazette periodically.
It takes around 9 months to 1 year to complete the registration process.
National:The opposition period is 90 days from the publication date of the registration in the Official Gazette.
Details regarding the
Opposition Period against designation of IR Mark are available in our publication on this topic
here
Protection backdates to the day of application upon registration. A trademark registration is valid for 10 years from date of application. The registration is indefinitely renewable for periods of 10 years.
Practical details on grace periods for trademark renewals are available in our publication
herePractical details on trademark use requirements are available in our publication
hereThe official application fee is KHR 160,000 for one mark in one class.
The registration and publication fee is KHR 260,000 for one mark in one class.
The registration and publication fee shall be paid within 60 days from the date of the Notice of Acceptance of Mark Registration issued by the Department of Intellectual Property Rights.
The total fee for registration of one mark in one class is KHR 420,000.
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General Trademark Regulations
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Jan 25, 2024
KENFOX IP & Law Office, Hanoi, Vietnam
