#Digest

IPR GROUP observation of IP practice. Digest # 08, 2016

Ms. Ann PHAM
Chief Consultant,
Coordinator

www.paton.asia; www.paton.vn

Trademark Registration in Cambodia

The Paris Convention entered into force to the Kingdom of Cambodia on September 22, 1998. On that date, the Kingdom of Cambodia will also become a member of the International Union for the Protection of Industrial Property.

The Madrid Protocol entered into force in Cambodia on June 5, 2015. It has just been over a year since Cambodia joined the Madrid system for the international registration of trademark. Following Cambodia’s recent accession to the Madrid Protocol, on November 1, 2016, a new Prakas (Declaration) on the Procedures for the International Registration of Marks under the Madrid Protocol was enacted by the Ministry of Commerce (MOC).

The declaration sets forth procedures and documents required for where Cambodia is an office of origin or Cambodia is an office of designated contracting party. Hence, there are TWO routes granting trademark protection in Cambodia as presently.

This article discusses Cambodia’s current trademark registration procedures to help foreign applicants effectively manage their trademark portfolios.

I. Principles

For registration of trademark under the Cambodia Intellectual Property Law system, the application shall be complied with the First-to-file rule, the Priority right rule and Legitimate owner protection rule.

II. Term of Protection

The protection lasts for ten (10) years from the filing date and is renewable for an additional ten (10) years each time. An application to renew a mark’s registration can be made within six (06) months before the registration expires and a grace period of six months is allowed.

It should be noted that the affidavit of use or non-use must be submitted to the DIP within one year following the fifth anniversary of the date of registration, whether the mark was registered through international registration or national filing – otherwise the registration will not be protected in Cambodia.

Licenses recorded with the International Bureau will not be enforceable against third party in Cambodia. They must be recorded directly with the DIP.

III. Registration

Required Documents & Information

A notarized Power of Attorney: a copy on filing date with the original submitted within 01 month late;
Samples of trademark;
List of goods/services bearing mark.
A certified copy of priority document (if any): a copy on filing date with the original submitted within 01 month late.

Procedure & Stages

The trademark application shall be passed through four stages:

Formality Examination:

For national applications, takes place 01 month from the filing date. An Acknowledgement of Filing Instruction will be issued when the documents are complete.
For international applications designated for Cambodia, an examination will not be carried out.

Substantive Examination:

Takes place 06 months from the date of publication.
Be conducted on absolute and relative grounds.
Similarity to the national applications, as the designated contracting party, the DIP will send a notification of refusal or acceptance or any invalidation to the International Bureau. The applicant must respond to the provisional refusal in accordance with the domestic law and regulations.
Replacement and transformation are allowed in Cambodia. The owner of the national registration can request the DIP to replace it with an international registration under the Madrid Protocol and common regulation. Similarly, the owner of an international registration also can request the DIP to transform the international registration into a national registration.

Registration:

Takes a minimum period of 02 months. The registration is effective from date of application.
A Notice of Acceptance of Mark Registration will be issued if a mark is registrable.
A registration fee must be paid within 60 days from the issuing date, then a Certificate of Registration will be issued after completing the payment.

Publication:

Trademark registrations are published in the country’s Trademark Journal by the DIP, now can be obtained from the DIP’s website.
A Notice of Opposition accompanied by supporting evidence can be filed within 90 days from the date of publication.

Duration

In practice, the time involved for completing of trademark registration is about 9 – 15 months from the filing date in Cambodia.

Ms. Ann PHAM
Chief Consultant, Coordinator

Ann is the PATON’s Chief Consultant and Coordinator and she has rich knowledge and experience in the field of Intellectual Property and other Legal Services.

Used to work in the law firms which practicing Vietnamese economic and civil laws, now her working field also include the domestic and foreign-related intellectual property laws, such as trademark, patent, industrial design and domain application, registration, management. Furthermore, consulting and managing the international or overseas intellectual property registration in Vietnam and Southeast Asia, includes: Cambodia, Laos, Myanmar, Vietnam, Brunei, Timor Leste, Indonesia, Philippines, Thailand, Malaysia & Singapore. Besides, she is also the author of the perspective paper “How might the Trans-Pacific Partnership impact on the pharmaceutical sector in Vietnam?” issued in Pharmaceutical Patent Analyst Vol 5, No. 4 in 2016 by the Future Science.

Till nowadays, Ann is not only recognized for her ability in intellectual property application and registration, she also has been dedicated to accumulatively advised and assisted clients in technology along with her team, who are the experts in PATON.

Trademark Registration in Cambodia