How can you protect your IP rights?
Protect your trademarks and industrial designs in Cambodia and abroad
There are two routes of protection of marks in Cambodia—the national route and the international route or protection via the Madrid Protocol. The national route is excellent if you want to protect your mark only in Cambodia, but if you are thinking of protecting your mark abroad, you may consider the Madrid option.
The Department of Intellectual Property (DIP) of the Ministry of Commerce is the national agency in charge of registering trademarks.
The contact details of the office are as follows:
Department of Intellectual Property
Lot 19-61, MOC Road (113B Road), Phum Teuk Thla
Sangkat Teuk Thla, Khan Sen Sok
Phnom Penh, Kingdom of Cambodia
Telephones: +855 23 866115; +855 12 826166; +855 11 873191
Telefax: +855 23 428 263
Cambodia’s Trademark Law of 2002 provides for the registration of any visible sign that distinguishes the goods and or services of an individual or enterprise.
The types of marks that may be registered in Cambodia are the following: words, numbers, figures/logos/devices, combination of words and figures/logos/devices, colors, and three dimensional marks. Collective marks are also registered in Cambodia.
- The application must be filed using the prescribed application form provided by DIP.
- The application may be filed in Khmer or English, but other documents in other languages need to be accompanied by a translation in Khmer or English.
- The Office accepts paper applications only.
- Cambodia applies the first-to-file principle to trade marks.
- The DIP accepts multi-class applications. The Office accepts the Nice classification, the ASEAN List of Goods, and certain terms in the Common EU-Madrid List. The terms accepted by DIP may be accessed at www.asean-tmclass.org.
- The name of the applicant;
- The address for correspondence of the applicant or attorney/representative;
- Reproduction of the mark (8cm x 8cm);
- List of goods or services;
- Filing fee.
- Power of attorney, if the applicant is represented, and which must be submitted within two months from the filing date;
- Where the mark contains a word/s that are not in Khmer or English, the word/s must be translated or transliterated.
- Where a claim of priority of an earlier application or registration is made in the application, the applicant may be required to furnish the Office with a certified copy of the earlier application;
Once the minimum and other formality requirements are met, the application shall be examined to determine whether they meet the registrability criteria under the Trademark Law and regulations.
A mark cannot be registered if:
- it is not distinctive, that is, it is not capable of distinguishing the goods or services of one enterprise from those of other enterprises;
- it is contrary to public order or morality or good custom;
- it is likely to mislead the public or trade circles, particularly as to the geographical origin of the goods or services concerned or their nature or characteristics
- it is identical with, or is an imitation or contains as an element, of an armorial bearing, flag and other emblem, a name or abbreviation or initials of the name of, or official sign or hallmark adopted by, any State, intergovernmental organization or organization created by an international convention, unless authorized by the competent authority of that State or organization;
- if it is identical with, or confusingly similar to, or constitutes a translation of, a mark or trade name which is well known in the Kingdom of Cambodia for identical or similar goods or services of another enterprise;
- if it is identical with, or confusingly similar to, or constitutes a translation of a mark or trade name which is well-known and registered in the Kingdom of Cambodia for goods or services which are not identical or similar to those in respect of which registration is applied for, provided that use of the mark in relation to those goods or services would indicate a connection between those goods or services and the owner of the well-known mark that the interests of the owner of the well-known mark are likely to be damaged by such use; or
- it is identical with a mark belonging to a different proprietor and already on the Register, or with an earlier filing or priority date, in respect of the same goods or services or closely related goods or services, or if it so nearly resembles such a mark as to be likely to deceive or cause confusion.
Where the Registrar finds that the conditions for registration are fulfilled, the mark shall be registered, the certificate of registration issued to the applicant, and the reference to the registration published in the Official Gazette of the Ministry of Commerce.
Within 90 days after the date of publication in the Official Gazette, any interested person may file with the Registrar an opposition to the registration of the mark. If the opposition is successful, the mark will be cancelled by the Registrar.
If you are thinking of seeking protection outside Cambodia, you may wish to consider the Madrid Protocol option or the “International Route”. This option is crucial if you intend to export your products abroad. In this context, you should familiarize yourself with the key elements of the Protocol Relating to the Madrid Agreement for the International Registration of Marks or the Madrid Protocol, which is undoubtedly very beneficial for SMEs in countries like Cambodia, if they wish to protect their marks in other countries.
The Madrid Protocol enables trademark owners to obtain protection in as many countries as are members of the international agreement by simply filing one application, in one language (including English), with one set of fees and in one currency (Swiss francs). Similar advantages exist when the registration has to be renewed or is assigned to a third party or when other changes, such as in name and/or address, have to be recorded.
In short, the Madrid system is a simple, economical, effective centralized procedure that provides for:
- A one-stop shop for trademark holders to obtain and maintain trademark protection in export markets;
- A single set of simple formalities;
- Lower registration fees (including a reduction of 90% of the basic fees for international applications from LDCs, including Cambodia);
- No need to translate the application into several languages;
- Great ease of post-registration administration of your rights.
The savings achieved, in terms of filing fees, formalities and agent fees abroad, will clearly facilitate the protection of your trademark abroad and therefore the marketing of your products in foreign countries. The good news is that Cambodia became a member of the Madrid system in 2015. This means that if you possess either a commercial or industrial establishment in Cambodia, or you are domiciled or a national of Cambodia, then you are entitled to use the Madrid system.
A single international application produces the same legal effects in the various designated countries as if the mark had been filed nationally. In other words, the effects of an international registration are equivalent to those of a national registration. As a consequence, an international registration can be seen as a bundle of national registrations, whose management is centralized within the hands of the International Bureau of WIPO and is greatly simplified.
However, it is important to remember that the Madrid system is merely procedural. The domestic legislations of the designated Contracting Parties set the substantive conditions for the actual granting of the protection. In general, it is recommended to seek professional advice before filing an application.
This is the way you should proceed to use the Madrid system:
- First of all, if you are using DIP as your so-called “Office of Origin”, you need to have a basic mark—an application or a registration in Cambodia. This is what you will use as basis for your international application.
- You need to use the official WIPO Form (MM2) to file an international application with DIP. The filing language in DIP is English. You cannot use Khmer when filing a Madrid international application. Note that you cannot file your application directly with WIPO.
- Your basic mark should match your national application or registration. You may decide to reduce its scope (for example, by eliminating some of the goods/services covered by the national mark), but you cannot expand it.
The international application must contain the following:
- a reproduction of the mark (identical to the mark filed or protected nationally);
- a list of the goods and/or services for which protection is sought, classified in accordance with the International Classification of Goods and Services (Nice Classification); and
- the indication of the Contracting Parties in which protection of the mark is sought (the so-called “designations”); these are the countries where you wish to register your mark and where you intend to do business.
- An international application is subject to the payment of fees. The standard fee system comprises a basic fee (which is intended to cover the costs of the International Bureau in administering the system of international registration), a supplementary fee (if the list of goods and services involves more than three classes of the International Classification under the Nice Agreement) and a complementary fee (for each Contracting Party for which protection is requested) or an individual fee (instead of the complementary fee), the amount of which is determined by that Contracting Party. The DIP also collects a handling fee for the processing of your international application.
- Before forwarding the application to WIPO, DIP, your Office of Origin must certify that the mark that is the subject of the international application is the same as that in the national application or registration, that the applicant or owner of the mark in both the basic mark and the international application is identical, and that the goods and/or services listed in the application are covered by those of the basic registration or basic application.
- On receipt of the international application, WIPO checks that it complies with the requirements of the Madrid Protocol and of the Common Regulations, including in particular, the requirements relating to the classification of the list of goods and/or services, and that the required fees have been paid. The Office of Origin and the applicant are informed of any irregularities and these must be remedied within the time limit of three months, otherwise the application will be considered abandoned.
- Where the international application complies with the applicable requirements, the mark is recorded in the International Register and published in the Gazette. The International Bureau then notifies each Contracting Party in which protection has been requested.
- Each designated Contracting Party has the right to refuse protection in its own territory if the mark does not comply with the substantive requirements of its law.
- A refusal must be notified to WIPO by the Office of the designated Contracting Party concerned within the time limit specified (in principle, 12 months from the date of the notification of the international registration, or 18 months, or even a longer period if the refusal is based on an opposition).
- If no refusal is notified to WIPO within the relevant period, the mark in question will enjoy the same protection in the Contracting Parties concerned as if it had been registered by the respective Offices of these Contracting Parties. The designated contracting party will then issue a Statement of Grant of Protection.
- On the contrary, if a refusal is notified, the procedure subsequent to that refusal, such as a review or appeal, is carried out directly between the holder and the national IP Office of the designated contracting party in accordance with domestic legislation and without any involvement on the part of WIPO.
- An international registration is in effect for 10 years. It may be renewed for further periods of 10 years on payment of the prescribed fees. The applicant will still need to comply with the maintenance requirements (use requirements) of each of the designated contracting parties, if there are any.
Department of Intellectual PropertyMinistry of Industry and Handicraft
45 Preah Norodom Blvd.
Khan Daun Penh, Phnom Penh
Kingdom of Cambodia
Telephones: +855 23 866115; +855 12 826166; +855 11 873191
Fax: +855 23 428 263
- The application must be filed using the prescribed application form.
- The filing languages are Khmer and English.
- The office accepts paper applications only.
The application for registration of an industrial design must contain the following:
- A duly filled in application form, containing a formal request, the name, address, nationality and residence of the applicant.
- If the applicant is not the creator, the request must be accompanied by a statement as to the applicant’s right to the registration of the industrial design.
- Drawings, photographs or other adequate graphic representations of the industrial design.
- An indication of the kinds of products for which the industrial design will be used.
- If the design is two-dimensional, the application should be accompanied by a sample which embodies the industrial design.
If the applicant is foreigner, the application has to be filed by a local representative, with a Power of Attorney certified by a notary public. The products embodying industrial designs are classified in accordance with another international classification--the Locarno Classification. The application may contain two or more industrial designs provided they relate to the same class of the Locarno classification or to the same set of composition of articles.
The application for registration of industrial design shall contain at least 6 views of the drawings or photographs, or other graphic representation of the article embodying the industrial design, as well as an indication of the products for which the design is to be used.
The application may contain a declaration claiming the priority of an earlier application filed by the applicant or his predecessor in title in any Paris Convention or World Trade Organization member within six (6) months from such earlier filing. Where the application contains a claim of priority, the Registrar may request that the applicant to provide a copy of the earlier application certified as correct by the Office with which it was filed.
If the Registrar finds that the application did not, at the time of receipt, fulfill the requirements enumerated above, the applicant will be invited to correct the application and the filing date will be accorded upon completion of the requirements. If no correction is made, the application shall be treated as if it had not been filed.
An industrial design is registrable if it is new. An industrial design shall be considered as new if it has not been disclosed to the public, anywhere in the world, by publication in tangible form or by use or in any other way, prior to the filing date or, where applicable, the priority date of the application for registration. The statement of novelty shall refer to the shape, configuration or ornamental of the industrial design that have been created.
Disclosure to the public of the industrial design shall not be considered prejudicial if (i) if it occurred within twelve (12) months preceding the filing date or, where applicable, the priority date of the application; (ii) if it was by reason of or a consequence of acts committed by the applicant or his predecessor in title or of an abuse committed by a third party with regard to the applicant or his predecessor in title.
An industrial design is registrable if:
- It is any composition of lines or colours or any three-dimensional form, or any material, whether or not associated with lines or colours, provided that such composition, form or material gives a special appearance to a product of industry or handicraft and can serve as a pattern for a product of industry or handicraft, and appeals to and is judged by the eye.
- It does not serve solely to obtain a technical result and to the extent that it leaves no freedom as regards arbitrary features of appearance.
Industrial designs that are contrary to public order or morality shall not be registrable.
Where the Registrar finds that these requirements are fulfilled, the industrial design shall be registered, a reference to the registration published, and the certificate of registration issued.
If, at the time of filing the application, the applicant requested the deferment of publication of the industrial design, for a period not exceeding twelve (12) months from the date of filing or, if priority is claimed, from the date of priority, of the application, the publication shall be deferred as requested. However, a reference to the deferment of publication shall be published, including a reference to the period of deferment requested.
Invalidation proceedings may be instituted by any interested party before the competent court to invalidate the registration of an industrial design.