Latest News: 11-09-2016 (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
03-02-2016 (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
05-13-2015 (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.
03-31-2015 (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.
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, 10th 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 trademark types are registrable: trademarks, service marks, collective marks and certification marks.
Sound and smell marks can not be registered in Cambodia.
The application is filed at the Department of Intellectual Property Rights of the Ministry of Commerce.
Multi-class applications are not accepted. The application has to be filed per class.
Foreign applicants need a local agent to file their foreign application 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 two months of the application date.
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks.
Signs not deemed distinctive in the examination can be registered if distinctiveness has been acquired by use. Yet, the percentage to get this registration 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.
The opposition period is 90 days from the publication date of the registration in the Official Gazette.
Opposition against designation of IR Mark
90 days from the date of publication in the WIPO Gazette
Protection backdates to the day of application upon registration. A trademark registration is valid for 10 years from date of application. The registration is renewable for periods of 10 years.
The grace period for renewals is 6 months starting from the expiry date.
Further practical details are available in our publication on this topic here
If the trademark has not been used within 5 years from registration date and an Affidavit of Use/Non-Use is not duly filed with the TMO within the 6th year from the registration date, it may be subject to cancellation. If an Affidavit of Use/Non Use is filed within the prescribed time, the registered mark may avoid a cancellation action from third party regardless of non-use of the registered mark in the marketplace.
Further practical details are available in our publication on this topic here
The official application fee is KHR 30,000 for one mark in one class.
The publication fee is KHR 120,000 for one mark in one class.
The registration fee is KHR 260,000 for one mark in one class.
Both 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 410,000.
(Source for exchange-rates: bankenverband.de
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Practical details on licensing procedures, requirements and effectiveness are available in our publication on this topic here
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