KENFOX IP & Law Office > Trademark related matters in Cambodia

Trademark Related Matters in Cambodia

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All other rights are reserved. This document and its contents are made available on an “as is” basis, and all implied warranties are disclaimed. The contents of this document do not constitute, and should not be relied on as, legal advice. You should approach a legal professional if you require legal advice.

 

I. Legal grounds

 

  1. The Law concerning Marks, Trade Names and Acts of Unfair Competition of the Kingdom of Cambodia approved by the National Assembly on 06 December 2001.
  2. Sub-Decree on the implementation of the Law on Marks, Trade names and Acts of Unfair Completion dated 12 July 2006.

 

II. Trademark related matters in Cambodia

 

1. Definition of Mark in Cambodia

A “mark” defined under Article 2(a) of the Cambodian Law concerning Marks, Trade Names and Acts of Unfair Competition as any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise. Such signs specifically include words, names, letters, numerals, logos, devices, labels, signatures, slogans, colors (and colors combinations), shapes, three-dimensional signs, and holograms. In such sense, the outer representation/packaging of products is statutorily registerable. Of note, color marks must consist of at least two colors, which excludes single-color marks.

 

Cambodia has not yet afforded protection to non-traditional marks (e.g. sound, smell, gestures and motion) as they are deemed not distinctive per se.

 

A “collective mark” as defined under Article 2(b) of the Cambodian Law concerning Marks, Trade Names and Acts of Unfair Competition as any visible sign designated as such in the application for registration and capable of distinguishing the origin or any other common characteristic, including the quality, of goods or services of different enterprises which use the sign under the control of the registered owner of the collective mark.

 

​2. Trademark Application Process in Cambodia

Those interested in securing trademark rights in Cambodia must file applications for trademark registrations with the Ministry of Commerce’s Department of Intellectual Property (DIP).

 

2.1. Prior filing trademark search: Before adopting a new trade mark or brand name in Cambodia, an availability search is strongly recommended to figure out potential obstacles which may bar the intended mark from maturing into registration in Cambodia. Official trademark search is available in Cambodia. Having said that, KF attorneys can file a search request to the DIP. Trademark Search Results may be issued within 30-45 days in normal manner. It is possible to expedite trademark search in Cambodia with additional fees for such express trademark search and the Trademark Search Results are obtainable within 10-12 working days.

 

2.2. Basic things to know about trademark filing in Cambodia: As multi-class application for trademark registration is not permitted in Cambodia, each trademark can cover only one class of goods/services. KF is in position to act on clientele to apply for trademark registration in Cambodia or take enforcement actions against infringement over trademark rights.

 

Despite not a signatory to the Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks, nor the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks, Cambodia adopts these two classification systems. Generally, class headings are not acceptable, except few classes (for example, Class 25_Clothing, footwear, headgear). If a trademark consists of, or contains figurative elements/devices, Vienna Classification must be provided in the trademark application. Similarly, when a trademark comprises or contains non-Latin words, the transliteration and the meaning are also required.

 

2.3. Claiming priority under the Paris Convention for trademarks filed in Cambodia: KF advises that under Article 4 A (1) of the Paris Convention: [Any person who has duly filed an application for a patent, or for the registration of a utility model, or of an industrial design, or of a trademark, in one of the countries of the Union, or his successor in title, shall enjoy, for the purpose of filing in the other countries, a right of priority during the periods hereinafter fixed]. As defined in Article 4 A of the Paris Convention, the right of priority may be enjoyed “during the periods hereinafter fixed” – which periods according to Article 4 C (1) are 12 months for Patents and 6 months for Utility Models, Industrial Designs and Trademarks. According to Article 4 C (2) these 12/6–month “periods shall start from the date of filing of the first application; the day of filing shall not be included in the period”. In effect, it means that if one applies for a specific trademark for the first time in Paris Convention signatories, and then, within the next six months, files an application for the same trademark in Cambodia and claims priority, then the second application filed with the DIP in Cambodia will be considered as having been filed on the same date as the first application.

 

To claim priority for trademark applications in Cambodia, at the filing stage, the applicant is required to provide us with some priority data, such office of priority filing, priority filing date, and application number and name of the country. A certified copy of the priority document must be submitted within three months from the date of the request by the Registrar.

 

3. Marking Applications and Filing Date in Cambodia:

The DIP shall mark, on each document of the application, the actual date of receipt and the serial application number consisting of the letters KH, slant, and at least five-digit number allotted in the sequential number together with the last two numbers of the year in which the application are received. Where any corrections or other later filed documents are received on different dates, the Registrar shall mark the actual dates of receiving these documents.

 

4. Examining trademark applications in Cambodia, issuing Office Actions against trademark applications in Cambodia

Like other countries where formality and substantive examination are conducted in sequential manner.

 

4.1. Formality examination: the DIP, during formality examination of trademark applications, may issue a Notice on formality deficiency (See Article 17 of Sub-Decree No. 46 dated 12 July 2006 providing for “objection to or Conditional Acceptance of Application and Hearing”). In such regard, the applicant is required  to  submit  a  response  in  writing  to the DIP or  to apply  for  a  hearing  within  forty  five  (45)  days  starting  from  the  date  of receiving  the notification.   If   the   applicant   does   not   comply   with   the Notice, the trademark application will be deemed to have been withdrawn.

 

4.2. Substantive examination: If the DIP accepts trademark application subject to amendments,   modifications, conditions, disclaimers (on any element(s) of the mark) or limitations or other conditions, the DIP will issue a Decision to the applicant. If the applicant objects to the amendments, modifications, disclaimers or limitations or other conditions, the applicant must apply for a hearing or  submit  his/her  observations  in  writing within 60 days from the date of receiving the DIP’s Decision/Notice. If  the  applicant  does  not  object  to such amendments, modifications, disclaimers or limitations or other conditions, he/she  shall  notify  the  DIP in  writing  and  amend  his/her  application accordingly.  If the applicant does not submit a response,   he/she   shall   be   deemed   to   have   abandoned   his/her application.

 

4.3. Refusal  of  Application  or  Conditional  Acceptance  of  the  Registrar  to  which Applicant Objects: If,  after  hearing  or  after  consideration  on  the  applicant’s  amendments  or observations  in  writing,  the  DIP still  refuses  the  application  or  accepts  it subject  to  certain  amendments,  modifications,  disclaimers  or  limitations  or  other conditions   to   which   the   applicant   objects   to   this   refusal   or   conditional acceptance,  the DIP  shall  send a Decision on refusal to the applicant.  The  applicant  may,  within  one  month  from  the  date  of  such communication,  request  the  DIP to  confirm  in  writing  the  grounds  of its Decision and the referred materials used by the DIP in making this Decision.

 

4.4. Applying for a hearing: The  request  for  a  hearing  shall  be  made  in  writing  to  the  DIP. Hearing is  referred  to  meeting(s)  made  by  Registrar  to  litigate the appeal of complainant before making his/her decision. Upon receiving this request, the Registrar shall notify the applicant, in  writing,  at least  one  month  before  the  date  on  which  the  applicant  will  be  invited to  be heard.

 

The DIP’s Director  shall  arrange  the  hearing,  if  any  interested  party  or  both  parties of  the  dispute  request  in  writing  to  have  the  hearing,  before  making any decision.  This  request  for  hearing  shall  be  made  before  or  after  one  month  of the  date  of  submitting  complaint  or  submitting  their  supporting documents  thereto.  In case there is no request for hearing having been made  within the  above  period,  based  on  the  discretionary  power  given  to  the  Registrar  by the  Law  or  by  this  Sub-Decree,  the  Registrar  may  make  his/her  own  decision without  hearing  or  invite  parties  of  dispute  for  the  hearing  if it  is  deemed necessary.

 

Upon  receiving  the  request  for  hearing,  the  Registrar  shall  notify  in  writing about the date of hearing, at least seven (07) working days before, to the party who has requested for hearing and other interested parties.

 

4.5. Appealing against the DIP’s refusal Decision: The applicant is entitled to file an appeal against the DIP’s refusal Decision to  the  Appeal  Board  of  the  Ministry  of  Commerce  or  to  the competent court within three (03) months computed from the Decision date (Article 18.2 of Sub-Decree No. 46).

 

4.6. Court hearing: Under Article 18.3 of Sub-Decree No. 46, interested party is entitled to appeal against the  Appeal  Board’s  decision  to  the  competent  court  within  three  (03)  months counting from the Decision date.

 

5. Acceptance of Application, Registration of Mark, Publication and the Issuance of Certificate (See Article 19 of Sub-Decree 46)

 

If the Department of Intellectual Property of Cambodia (DIP)  accepts the application unconditionally or  accepts it subject to any  conditions  or  limitations  to  which  the  applicant  does  not  object,  the DIP  shall  register  the  mark  and  issue  to  the  applicant a  Trademark Registration Certificate, and publish this registration.

 

The  Registrar  shall  allot  to  each  mark,  on  the  certificate  of  registration,  a number in the sequential order of registration.

 

The registration of a mark in Cambodia shall include:

 

(i). Representation of the mark;

(ii). Application number and registration number;

(iii). Name and address of the registered owner;

(iv). Name and address of the agent (if any);

(v). Filing date and date of registration;

(vi). If priority has been claimed and the claim has been accepted, the state  or  country  and  application  number  in  which  the  earlier  application  was filed;

(vii). List of goods or services in respect of which the registration of the mark had  been  made  with  an  indication  of  the  corresponding  class  of  those goods or services in accordance with the International Classification.

 

The  publication  of  the  registration  of  a  mark  under  paragraph  (1)  above  shall contain the following particulars:

 

(i). Filing date and priority date (if applicable);

(ii). Representation of the registered mark;

(iii). Application number and registration number;

(iv). Class and/or Goods or services in respect of registered mark with the indication of the corresponding class of the International Classification;

(v). Name and address of the registered mark owner;

(vi). Name and address of the representing agent (if any)

 

6. Trademark Opposition Proceedings in Cambodia (Article 20 of Sub-Decree No. 46)

Unlike other countries where trademark applications can be opposed during substantive examination, any interested party can only file a Notice of Opposition against a trademark after it is matured into registration and published in the Official Gazette within 90 days from the date of publication, making it extremely hard to monitor the trademark registration for opposition purpose.

 

Statutorily, within ninety (90) days starting from the date   of   notification   of   opposition,   the   applicant   shall   provide   counter-statement,  in  writing,  stating  the  grounds  upon  which  the  applicant  relies  for his/her application and accompanied by supporting evidence (Article 10 (e) of the Cambodian Law concerning Marks, Trade Names and Acts of Unfair Competition).

 

Any interested parties may predicate on the grounds that one or more of the requirements of Articles 2.(a), 4 and 5 of the Cambodian Law concerning Marks, Trade Names and Acts of Unfair Competition and the regulations pertaining thereto are not fulfilled.

 

The DIP shall send forthwith a copy of such a Notice of Opposition to the applicant, and, within the prescribed period and in the prescribed manner, the applicant shall submit a counter-statement against the opposition; if the applicant does not do so, he shall be deemed to have abandoned the registration.

 

If the applicant sends a counter-statement, the DIP shall furnish a copy thereof to the opponent and after hearing the parties, if either or both wish to be heard, and considering the merits of the case, shall decide whether the registered mark is legitimate (Article 10 (a, b, c, d, e of the Cambodia Law concerning Marks, Trade Names and Act of Unfair Competition)).

 

7. Trademark Invalidation Proceedings in Cambodia (See Article 13 of the Cambodia Law concerning Marks, Trade Names and Act of Unfair Competition).

In case of expiry of 90-day period for opposition, any interested person may still have opportunity to request the Ministry of Commerce of Cambodia to invalidate a trademark registration, based on Articles 2.(a) and 4 of the Cambodian Law concerning Marks, Trade Names and Act of Unfair Competition. Any invalidation of a registration of a mark shall be deemed to have been effective as of the date of registration, and shall be recorded and a reference thereto published as soon as possible.

 

The Registrar’s decision is subject to appeal to the Appeal Board of the Ministry of Commerce or competent court within three months from the date of the decision.

 

8. Trademark cancellation Proceedings in Cambodia (See Article 14 of the Cambodia Law concerning Marks, Trade Names and Act of Unfair Competition)

The Ministry of Commerce has the right to order the cancellation to the registered trademark in the following conditions:

 

  • The applicant does not apply for renewal of the registered mark within the period prescribed under Article 12.(b) and (d).
  • The owner of the registered mark requests the removal.
  • The owner of the registered mark has not complied, within 90 days, with the conditions or restrictions prescribed under Article 8.
  • The owner of the registered mark ceases to have an address for service in the Kingdom of Cambodia.
  • It is convinced upon evidence that the owner of the registered mark is not the legitimate owner.
  • It is convinced that the registered mark is similar or identical to a well-known mark owned by third party.

 

9. Non-use cancellation against a trademark registration in Cambodia (See Article 15 of the Cambodia Law concerning Marks, Trade Names and Act of Unfair Competition)

Any interested person may request the Ministry of Commerce to remove a mark from the Register, in respect of any of the goods or services in respect of which it is registered, on the ground that up to one month prior to filing the request the mark had, after its registration, not been used by the registered owner or a licensee during a continuous period of five years, provided that a mark shall not be removed if it is shown that special circumstances prevented the use of the mark and that there was no intention not to use or to abandon the same in respect of those goods or services. This current regulation on non-use cancellation of a trademark registration makes it almost unless the trademark owner does not wish to pursue his/her trademark registration any longer.

 

10. Registrations under the Madrid System

Cambodia became a member of the Madrid System for the International Registration of Mark on 05 June 5 2015. The system facilitates the filing of applications in multiple countries around the globe. Rather than having to file a trademark application in each country, a trademark owner can file a single application with their national or regional IP office, and then designates protection of their mark in Madrid member countries. This greatly simplifies and reduces the cost of the process, as more than 110 countries are part of the system. Following Cambodia’s accession to the Madrid Protocol, the Cambodian government enacted a new Prakas (Declaration) on the Procedures for the International Registration of Marks under the Madrid Protocol on 01 November 2016. The declaration sets forth procedures and documents that are required where Cambodia is an office of origin, or where Cambodia is chosen as the designated office by a contracting party.

 

11. Grounds of refusal of a trademark registration in Cambodia          

Under Article 4 of the Cambodian Law on Marks, Trade Names and Acts of Unfair Competition, a mark cannot be validly registered if it is:

 

  • Incapable of distinguishing the goods or services of one enterprise from those of other enterprises;
  • Contrary to public order or morality or good custom;
  • Likely to mislead the public or trade circles, in particular as regards the geographical origin of the goods or services concerned or their nature or characteristics;
  • Identical with, or is an imitation of, or contains as an element, 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;
  • 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;
  • 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 such that the interests of the owner of the well-known mark are likely to be damaged by such use; or
  • 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.

 

Should the application not comply with one of these points, the DIP will issue a refusal Notice of mark registration. The applicant must file a response to the DIP within 60 days. Another 45 days will be given, upon the request for extension of time. If the DIP does not receive a response within the time-limit, the mark application will be lapsed and the application fee will not be refunded.

 ​

12. Maintaining a trademark registration in Cambodia

 

12.1. Filing an Affidavit of Use or Non-Use of Mark in Cambodia: In order to maintain or renew the registration, the request for endorsement of affidavit of use or non-use must be submitted to the DIP within the 6th year of trademark registration. Per Article 21.4 of the Sub-Decree 46, the  registered  mark  will  be  removed  from  the  Register,  if  the  owner  of  the mark or his/her legal agent fails to file the Affidavit of Use or Non-Use of that mark. In current practice however, the DIP rarely removes a mark from the registry on their own initiative, but it may be a ground for cancellation if a third party submits a request.

 

Require documents for filing an Affidavit of Use/Non-use in Cambodia:

 

  • An original/duplicate Trademark Registration Certificate;
  • An original signed affidavit of use/non-use form.

 

It may take roughly four to five months for finalizing the recordal of affidavit endorsement.

 

12.2. Filing a trademark renewal request in Cambodia: A trademark renewal request may be submitted to the DIP within six months preceding the expiry of the registration. In case the owner of the registered mark or their legal representative fails to submit the mark renewal application within six months preceding the expiry of the registration, it can still be submitted in a grace period of another six months. The registration of renewal will not be granted if the owner of the registered mark or their legal representative fails to submit the request for affidavit of use/non-use in the sixth year. In this case, the owner of the registered mark or their legal representative can submit a request for affidavit of use/non-use before or together with a renewal application.

 

The renewal of the registration of a mark shall be recorded in the Register and shall be published in the Official Gazette.

 

The Registrar shall issue to the registered owner a certificate of renewal which shall contain the following information:

 

(i). Original registration number of the mark;

(ii). Representation of mark;

(iii). Date of renewal and Date of expiry;

(iv). Name and address of the registered owner; 

(v). Name and address of the representing agent (if any);

(vi).List  of  goods  or  services  in  respect  of  the  registered  mark  with  an indication of the corresponding  class of  goods and services in accordance with the International Classification

 

13. Recordal of License or Franchise Agreement in Cambodia

A request for trademark license and franchise agreements may be registered and recorded with the Department of Intellectual Property of Cambodia (DIP). License contracts must provide for effective control by the licensor of the quality of the goods or services of the licensee. If the license contract does not provide for quality control or the quality control is not effectively enforced, the license contract will be invalid (see Article 19 of the Trademark Law of Cambodia). License agreements for collective mark are prohibited.

 

License and franchise contracts are recorded and registered with the DIP. The contents of license contracts will be kept confidential, but the name of both parties and details of the marks will be published. Per Article 52 of the Cambodian Trademark Law, any unrecorded and unregistered license contract has no effect against third parties. In conformity with Announcement No. 0738, license contracts in English language must be translated into Khmer and certified by a Cambodian mark agent or professional translator authorized by the Ministry of Commerce.

 

A recorded licensee may enforce the trademark registration, provided that they have first requested the trademark owner to take action, and they refused or failed to do so. Per Article 27 of the Cambodia Trademark Law, on the request of the owner of the mark or of a licensee if he has requested the owner of the mark to institute court proceedings for specific relief and the owner of the mark has refused or failed to do so, the court may grant an injunction to prevent infringement, an imminent infringement, or an unlawful act referred to Articles 21, 22, 23, award damages and grant any other remedy provided for in the general law.

 

Practices indicates that registering your distribution agreement, license agreement, and franchise agreement in Cambodia is crucial. Registering an exclusive distribution agreement with a local distributor will strengthen the position of the trade mark holder when enforcing his or her IP rights, and Customs will act upon parallel imports when an exclusive agreement is in place and registered with the authorities. Without proper registration, authorities may not enforce your IP rights/

 

 ​14. Unfair Competition in Cambodia

Acts of Unfair Competition defined under Article 22 of the Cambodian Trademark Law as “any act of competition contrary to honest practices in industrial, commercial, service matters shall be considered as act of unfair competition”. Per Article 23, the following acts, in particular, shall be deemed to constitute acts of unfair competition:

 

  • all acts of such a nature as to create confusion by any means whatever with the establishment, the goods, or the industrial, commercial or service activities of a competitor;
  • false allegations in the course of trade of such a nature as to discredit the establishment, the goods, or the industrial, commercial or service activities of a competitor.
  • indications or allegations the use of which in the course of trade is liable to mislead the public as to the nature, the manufacturing process, the characteristics, the suitability for their purpose, or the quantity of the goods

 

We note that the above three statutory regulations may be predicated on by businesses to seek redress if any unfair acts or dishonest practices are taken by their competitors. This could include, generally, misleading advertising, discrediting of a competitor, enticing or poaching a key employee away, passing-off and trade secret misappropriation.

15. Enforcement of trademark rights in Cambodia

 

Border Measures

Customs recordal is not available in Cambodia now. However, upon detecting an allegedly trademark infringement goods consignment to be imported into Cambodia, the trademark owner may request to the Cambodian customs authorities to suspend customs clearance. (Article 35: The owner of any registered trademark may make application to the customs or the competent authorities or court to suspend clearance of goods suspected of being counterfeit by proving that he is the owner of the registered mark). Per Article 43 of the Cambodian Trademark Law, the customs may, on its own initiative, suspend the clearance of goods in respect of which it has acquired prima facie evidence that importation of counterfeit trademark goods is taking place or is imminent. “Counterfeit trademark goods“, under Article 61 of the Cambodian Trademark Law means any goods, including packaging, bearing without authorization a trademark which is identical to the trademark validly registered in respect of such goods, or which cannot be distinguished in its essential aspects from such a trademark, and which thereby infringes the rights of the owner of the trademark in question under the law of the country of importation.

 

Under Article 35 of the Cambodia Law on Marks, Trade Names and Acts of Unfair Competition, both the Cambodia courts and the General Department of Customs and Excise are statutorily entitled to accept and decline the request for customs suspension. [Article 35: The owner of any registered trademark may make application to the customs or the competent authorities or court to suspend clearance of goods suspected of being counterfeit by proving that he is the owner of the registered mark]

 

Per Article 36 of the Cambodia Law on Marks, Trade Names and Acts of Unfair Competition, a request for customs suspension of goods must include:

 

  • An extract from the register of marks in Cambodia;
  • A statement of the grounds for request for customs suspension of goods, and in particular the prima facie evidence showing that such trademark goods are counterfeit;
  • A complete description of the goods on or in connection with which the trademark is used, together, where appropriate (or requested), with a sample of the bona fide product;
  • The name and address of the requester and of his representative (alternatively: full details of the applicant, as prescribed);
  • An authorization from the owner of the registered trademark, where the request for customs suspension of goods is filed by an authorized representative, and
  • The prescribed fee in accordance with the determination of the Ministry of Economy and Finance.

 

A deposit for the request of customs suspension of goods: Under Article 38 of the Cambodia Law on Marks, Trade Names and Acts of Unfair Competition, “Customs or other competent authorities, specified by Sub-Decree, shall have authority to require the applicant to provide a security or equivalent assurance sufficient to protect the importer, consignee, exporter or owner of the goods and the competent authorities. Such security or equivalent assurance shall be determined in a manner which does not unreasonably deter recourse to this procedure”.

 

Per Article 37 of the Cambodia Law on Marks, Trade Names and Acts of Unfair Competition, upon payment of deposit from the requester, “within 10 working days of the receipt of an application under Article 35, the Cambodian customs or competent authorities shall notify the applicant whether the application has been granted or rejected or reserved for further consideration”.

 

Time-limit for customs suspension in Cambodia: Upon approval of the request of customs suspension under Article 35, the Cambodian customs shall suspend clearance of the goods referred to in the request. The suspension shall remain in force for the initial period, and any extension thereof which is not more than 10 working days. The customs shall immediately inform the importer and the requester of the suspension of the clearance of the goods, and shall state the reasons of such suspension. The Cambodian customs shall also notify the importer of the name and address of the requester (See Article 38 of the Cambodia Law on Marks, Trade Names and Acts of Unfair Competition)

 

Releasing the suspended goods consignment in Cambodia: If, within a period not exceeding 10 working days after the requester has been served notice of the suspension, the Cambodia customs authorities have not been informed that proceeding leading to a decision on the merits of the case have been initiated by a party other than the defendant, or that the duly empowered authority has taken provisional measures prolonging the suspension of the release of the goods, the goods shall be released, provided that all other conditions for importation or exportation have been complied with; in appropriate cases, this time-limit may be extended by another 10 working days.

 

If proceedings to a decision on the merits of the case have been initiated, a review, including a right to be heard, shall take place upon request of the defendant with a view to deciding, within a reasonable period, whether these measures shall be modified, revoked or confirmed.

 

Compensation for wrongful request of customs suspension of goods consignment in Cambodia: Per Article 41 of the Cambodia Law on Marks, Trade Names and Acts of Unfair Competition, “the relevant authorities shall have the authority to order an applicant to pay the owner, the importer, the exporter and the consignee of the goods appropriate compensation for injury caused to them through the wrongful detention of goods or through the detention of goods released pursuant to Article 39. In case of any party does not agree with this decision, that party has the right to file an appeal before the court”.

 

Allowing examination of goods: Per Article 41 of the Cambodia Law on Marks, Trade Names and Acts of Unfair Competition, “the Cambodian customs or other competent authorities may allow the right holder, importer or exporter to examine the goods, the clearance of which has been suspended in accordance with Article 39, and to remove samples for examination, testing and analysis, to determine whether the goods are counterfeit. Where a positive determination has been made that the goods are counterfeit, the customs authorities may inform the right holder of the name and addresses of the exporter, the importer and the consignee and of the quantity of goods in question. Without prejudice to the protection of confidential information, the customs or other competent authorities may, on request, provide the right holder with copies of documents lodged in respect of such goods or with any available information or documents relating to any previous importation or exportation of similar goods by the same importer or exporter

 

Ex officio action from the Cambodian customs: Per Article 42 of the Cambodia Law on Marks, Trade Names and Acts of Unfair Competition, “the Cambodian customs may, on its own initiative, suspend the clearance of goods in respect of which it has acquired prima facie evidence that importation of counterfeit trademark goods is taking place or is imminent”. With respect to acts performed under Article 42, both public authorities and officials shall be exempted from liability to appropriate remedial measures where those actions are taken or intended in good faith

 

In addition, “the Cambodian customs shall immediately inform the right holder of the place and date of the suspension of customs clearance and they may at any time seek from the right holder any information that may assist them to exercise these powers” under Article 43 of the Cambodia Law on Marks, Trade Names and Acts of Unfair Competition

 

Following a court decision, Per Article 46 of the Cambodia Law on Marks, Trade Names and Acts of Unfair Competition, “the Cambodian customs and competent authorities shall have the authority to order the destruction of infringing goods. The customs shall not allow the re-exportation of counterfeit trademark goods or subject them to different customs procedure”.

 

16. Infringement and Remedies in Cambodia

 

16.1. Rights of trademark owner in Cambodia: Under Article 11 of the Cambodia Law on Marks, Trade Names and Acts of Unfair Competition, the trademark owner is entitled (i) to use the registered trademark, (ii) to allow others to use the registered trademark and (iii) request the Cambodian enforcement authorities to enforce against acts of alleged trademark infringement.

 

16.2. What constitutes a trademark infringement in Cambodia: The Cambodia Law on Marks, Trade Names and Acts of Unfair Competition defines three acts which are considered as act of infringements:

 

  • Infringement of a registered mark: An unauthorized use of a registered mark or a sign which is identical with or confusingly similar to a registered mark, in relation to any goods or services for which it has been registered without permit from the trademark owner (See Article 24 of the Cambodia Law on Marks, Trade Names and Acts of Unfair Competition)
  • Infringement of a registered well-known mark: Use of a sign which is identical with or confusingly similar to a well-known mark has been used without the agreement of the well-known mark owner, provided that the sign is used: (i) in relation to goods and services identical with or similar to the goods and services for which the well-known mark has been registered, or (ii) in relation to goods and services which are not identical with or similar to those in respect of which the well-known mark has been registered and the use of the sign in relation to these goods or services would indicate a connection between those goods and services and the owner of the well-known mark and that the interests of the owner of the well-known mark are likely to be damaged by such use. (See Article 25 of the Cambodia Law on Marks, Trade Names and Acts of Unfair Competition)
  • Infringement of unregistered well-known mark: Use of a sign which is identical with or confusingly similar to an unregistered well-known mark without the agreement of the owner provided that the sign is used in relation to goods or services identical with or similar to the goods or services for which the mark is well-known (See Article 26 of the Cambodia Law on Marks, Trade Names and Acts of Unfair Competition)

 

16.3. What bodies can resolve an IPR infringement in Cambodia: The Cambodian Court & The DIP

The trademark owner may request a competent Cambodian court or the Department of Intellectual Property of Cambodia (DIP) to settle an alleged infringement case. Upon the request from the owner, the court will issue an injunction to prevent infringement, imminent infringement, or other unlawful act, to award damages and/or to grant any other remedy provided in the general law.

 

As a matter of practice, seeking remedies for any acts of unfair competition obtained through court proceeding in Cambodia are costly, time-consuming, and complicated and the results seems uncertain. As such, the DIP can act as a mediator in settling any infringement disputes. Any party to a mark or unfair competition dispute can initiate a mediation process by request in writing to the DIP. A hearing will typically be arranged if either party requests it or at the DIP’s discretion. If a settlement is reached, it is binding on both parties. If no settlement is reached, either party may bring action to a competent court in Cambodia for adjudication.

 

17. Penalties imposed on the infringer in Cambodia

For a false statement which has been made to the DIP (during the course of an application, opposition or other document filed concerning an application for registration, amendment of a registration, renewal of a registration or cancellation of the registration of a mark, trade name or a license pertaining to a mark), a fine of 5 million Riels (approx. US$ 1250) or an imprisonment from 1 to 6 months (or both monetary fine and imprisonment) will be imposed on the infringer (See Article 63 of the Cambodia Law on Marks, Trade Names and Acts of Unfair Competition).

 

For counterfeiting acts: Whoever counterfeits a trademark, service mark, collective mark or trade name  in the Kingdom of Cambodia by another enterprise shall be liable to a fine of from 1 to 20 million riels (approx. US$ 250-5,000) , or to imprisonment from 1 to 5 years, or both (See Article 64 of the Cambodia Law on Marks, Trade Names and Acts of Unfair Competition).

 

For acts of imitation: Whoever imitates a trademark, service mark, collective mark or trade name registered in the Kingdom of Cambodia by another person in order to mislead the public into believing that it is the trademark, service mark, collective mark or trade name of such other enterprise as under Article 23, shall be liable to a fine of from 5 to 10 million riels (approx. US$ 1250-2500) , or to imprisonment from 1 month to 1 year, or both (See Article 65 of the Cambodia Law on Marks, Trade Names and Acts of Unfair Competition).

 

For those willfully import, sell, offer for sale or have for the purpose of sale goods bearing a counterfeit mark, sanctions will be predicated on Article 64.

 

For those willfully import, sell, offer for sale or have for the purpose of sale goods bearing an imitated mark, sanctions will be based on Article 65.

 

For repeated offense: the maximum penalty for a repeated offense under Articles 64 and 65 of this Law, shall be doubled in both of fine and imprisonment as stipulated in those Articles respectively.

 

For a juristic person: In the event an offender liable under this Law is a juristic person, the managing director, manager or representative of such juristic person shall also be liable to the penalty prescribed for such offence unless he can prove that he had neither knowledge or nor consented to the commission of the offence by the juristic person

 

A Cambodian competent court is entitled to order destruction of any goods found to be infringing, whether or not the defendant has been convicted of an offense (See Article 69 of the Cambodia Law on Marks, Trade Names and Acts of Unfair Competition).

 

18. Trade names in Cambodia

 

18.1. Trade names, commonly perceived as business names or corporate names, as a name and/or designation identifying and distinguishing an enterprise. Trade names that, by their nature or use, are contrary to public order, morality, or are deceptive as to the enterprise identified, are prohibited.

 

18.2. Under Article 4 (e) of the Cambodia Law on Marks, Trade Names and Acts of Unfair Competition, an applied mark which is deemed identical with, or confusingly similar to, or constitutes a translation of, a trade name which is well known in the Kingdom of Cambodia for identical or similar goods or services of another enterprise will not be registrable. Further, Under Article 4 (f) of the Cambodia Law on Marks, Trade Names and Acts of Unfair Competition, an applied mark will not be accepted for registration if it is identical with, or deemed confusingly similar to, or constitutes a translation of a 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.

 

18.3. Under Article 21 of the Cambodia Law on Marks, Trade Names and Acts of Unfair Competition, trade names in Cambodia are protected, even without registration, against unlawful acts of third parties. Subsequent use of a trade name, or any similar name, that is likely to mislead the public is prohibited. [See Article 21: (i) Notwithstanding any laws or regulations providing for any obligation to register trade names, such names shall be protected, even prior to or without registration, against any unlawful act committed by third parties; (ii) Any subsequent use of the trade name by a third party, whether as a trade name or a mark or collective mark, or any such use of a similar trade name or mark, likely to mislead the public, shall be deemed unlawful].

 

By HE. Sophana Meach

Under-Secretary of State of the Ministry of Interior President of Counter Counterfeits Committee of Cambodia

 

I .Who are we?

 

  • CCC is an umbrella organization established in 2014 by Charter of the Royal Government of Cambodia and under supervision of the Ministry of Interior.
  • Our members are representatives from various ministries and governmental bodies.
  • Our mission is to combat counterfeit crime, IPR infringements, trade and manufacture of unlicensed goods and parallel import.
  • Our duties are to investigate, raid, seize, arrest and prosecute counterfeiters.

 

II. Our Counter-measures

 

Raiding illegal businesses during the last 12 months:

 

  • Seizure of nearly 600 tons of counterfeits and illegal goods
  • Disposal of approx. 180 tons of counterfeits
  • Arrest of more than 30 suspects
  • More than 10 factories and warehouses were closed
  • Confiscation of approx. 1.5 Million Dollars of assets

 

A. Some top brands protected by CCCC

 

  • LACOSTE AND MONTAGUIT:We assisted Lacoste and Montaguit in raiding fake Lacoste and Montaguit being present in the country.
  • PROCTER AND GAMBLE: CCCC has assisted the company in checking illegal sales of its counterfeit “Tide” in 9kg buckets.
  • HENKEL-SCHWARZKOPF: The company requests CCCC to take action over the fake products found at the unprofessional beauty salons.
  • COCA-COLA: Coca-Cola requests our service in seizing the parallel import of its products from the neighboring countries.
  • DKSH: – CCCC is helping the company raid the illegal import (parallel import) of their medicines. – CCCC is working with the company and Pharmacie de la Gare on the issuance of “Quality Award” to pharmacies and private clinics in Cambodia.
  • UNILEVER: CCCC haunted the fake products of Unilever being present in Cambodian market.
  • SHISEIDO Case: The Kandal district court has issued a judgment sentencing three Chinese counterfeiters importing fake Shiseido products of one year imprisonment.

 

B. Capacity-building for our Law Enforcement Officers

 

  • Advanced detection and
  • Intelligence
  • Investigation techniques
  • Laws and Regulations

 

C. External Cooperation

 

  • Support from UNOPS: Donation of 2 units of “TRU-SCAN” apparatus Scanning Capacity:
  • Medicines
  • Chemical Substances

 

M.O.U with EUROCHAM in Phnom

 

– Exchange data

– Raising awareness

– Capacity building

Publication of a Newsletter (Quarterly)

 

III. Our Challenges

 

  • Weakness of Laws and Punishment
  • Little knowledge about IP by the population and local traders
  • Lack of good laboratories and skillful experts
  • Lack of modern equipment and knowledge to identify counterfeits
  • Lack of cooperation from business owners and the public
  • Population always prefer cheap products.

 

IV. Future goals

 

  • To focus on our priorities in the sector of public health, beauty care, food and beverage;
  • To prepare ourselves for the expansion of our attention to cover other product categories s.a. electrical appliances, toys and automotive products which could cause potential dangers to the consumers;
  • We are determined to combat counterfeiting with greater efficiency, to investigate complaints more effectively and to extent our reach to an ever greater area of illegal production and trade;
  • To build stronger image among the business community as well as the consumers so that they can rely on or have confidence in our efforts in protecting their interest and public health and safety;
  • To carry out our work effectively and to stay ahead of the perpetrators and provide our executive and field officers with training in the areas of advanced detection, intelligence and investigation techniques.
  • To call for cooperation from various business communities and stakeholders;

 

Come to us if you are facing counterfeits and IP infringement!

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