10 Frequently Asked Questions about Trademark in CambodiaDecember 15, 2023
In February 2002, the National Assembly adopted the Law on Marks, Trade Names and Acts of Unfair Competition (“Trademark Law”), with a Sub-Decree on its implementation adopted in 2006.
The Trademark Law is quite comprehensive in its scope, as it defines the registration, invalidation, and removal processes, collective marks, the licensing of marks and trade names, infringement and remedies, border measures, and assignments or changes in ownership.
Below are 10 FAQs on the Trademark Law. The list does not include some questions on areas not clear in the law, such as the practical aspects of filing procedures.
1. What kinds of marks are registrable?
The Trademark Law defines a mark as any “visible sign” capable of distinguishing the goods or services of an entity. This includes any distinctive devices, brands, labels, signatures, words, names, numerals, letters, holograms, three-dimensional signs, and packaging.
The implications of the element “visible sign” indicates that it is unlikely that the registrar would accept registration of unconventional marks like sounds, smells, and tastes, which are registrable in other jurisdictions like the United States and Europe.
The Trademark Law also provides a list of unregistrable marks, such as those that lack distinctiveness; are contrary to the public order, morality, or acceptable customs; mislead the public; or infringe on the priority rights of other persons.
2. Does the Trademark Law adopt a “first-to-file” or “first-to-use” system? Can I claim priority rights?
Cambodia adopts a “first-to-file” system, which grants the exclusive right and protection to the registrant who applies first. Applications for mark registration are filed with the Department of Intellectual Property Rights (“DIPR”) of the Ministry of Commerce. The application can be made in either Khmer or English; however, the officials may require translations, at their discretion.
The date of submission will be the date on which a complete submission is filed and the prescribed fees are paid. A few exceptions do apply, such as priority rights based on a prior application under the Paris Convention.
To claim priority right in Cambodia, at the filing stage, the applicant is required to provide the DIPR with some priority data, such as the office of the priority filing, the priority filing date, and the application number and country of filing.
3. How long can a registered trademark be protected?
Once registered, the term of protection will be 10 years from the date of application of registration, and is renewable every 10 years.
4. What rights does a trademark owner have?
Pursuant to Article 11 of the Trademark Law, a registered trademark owner will enjoy the following rights:
- The right to prevent others from using identical or confusingly similar marks for their own goods and services.
- The exclusive rights over the trademark. The owner will have the right to license, franchise, or assign its trademark.
- The right to take legal action against unauthorized persons who use the registered trademark.
5. If I identify a pending trademark application infringing on my rights, what can I do?
Before a trademark application is finally approved and registered with the DIPR, there will be an opportunity for public opposition over the trademark application.
6. If I identify a registered trademark infringing on my rights, what can I do?
Even after a trademark is registered, it is not immune from an attack on its validity. The Trademark Law provides grounds for invalidation or cancelation of a registered trademark.
7. How can I stop someone with no legitimate grounds from infringing on my trademark rights?
While a right owner may initiate civil or criminal proceedings against infringers who use the right owner’s trademark without legitimate grounds or authorization, the Trademark Law also provides an interim remedy, such as customs detention and interim injunction, to stop infringement activities before the legal proceeding are concluded.
To deal with the infringement of a registered trademark, the following actions are available:
- Send a cease and desist letter to the infringer or initiate private negotiations with the infringer;
- File a complaint with enforcement authorities, including the Economic Police Bureau, the Counter Counterfeit Committee of Cambodia, or the prosecutor’s office of the competent court; or
- File a complaint with the General Department of Customs and Excise of Cambodia to stop the infringement through the border of Cambodia in accordance with the Law on Customs.
8. Is there any special protection for well-known trademarks?
The Trademark Law provides the following protection to well-known trademarks to prevent others from registering or using such trademark:
- For an unregistered well-known trademark, there is protection against the use of an identical or similar mark on identical or similar goods/services.
- For a registered well-known trademark, protection will be extended to goods/services that are not identical or similar, as it may in fact be contrary to the interests of such trademark if a false connection with the goods/services of the registered well-known trademark is suggested.
9. Can geographic identification, collective trademarks, and trade names be protected in Cambodia?
The Trademark Law provides for the registration and protection of collective trademarks, while geographic identification is protected under the Law on Geographical Indications. In addition, a registered or unregistered trade name is also protected.
10. Is there any way that I can lawfully use someone else’s trademark?
The Trademark Law does not provide any way to use someone else’s trademark unless there is prior consent from the trademark owner. This consent must be in writing (i.e. in the form of a license agreement) and registered and recorded with the DIPR. Any unrecorded and unregistered license agreement has no effect against third parties.