Trademark Containing the Name of an International Organization: How Did KENFOX Successfully Appeal a Rejected Trademark in Cambodia?
In practice, trademarks containing geographical names or abbreviations of intergovernmental organizations are often refused registration by national IP offices on the grounds that they violate prohibitions against the use of symbols, emblems, or names of states or international organizations.
However, KENFOX IP & Law Office recently succeeded in assisting the owner of an international trademark registration under the Madrid System in overturning a provisional refusal issued by the Department of Intellectual Property (DIP) of Cambodia. The refusal pertained to the mark “CONEASEAN” registered under International Registration No. 1523889, which seeks protection for goods in Classes 16 and 30.
Legal Barrier: Use of “ASEAN” and Restrictions on Symbols of Intergovernmental Organizations (IGOs)
From the outset, the Department of Intellectual Property (DIP) of Cambodia refused the trademark application on the grounds that the mark contained the term “ASEAN”, which is the abbreviation for the Association of Southeast Asian Nations, an intergovernmental organization (IGO). Citing Article 4(d) of the Sub-Decree on the Implementation of the Cambodian Trademark Law, the DIP held that the use of the emblem or name of an intergovernmental organization in a trademark is prohibited. As a result, the mark was deemed ineligible for protection.
Response Strategy: Asserting Distinctiveness, Invoking the Doctrine of Composite Marks, and Citing International Precedents
In response to the refusal issued by the DIP, KENFOX submitted a series of well-founded and persuasive legal arguments, emphasizing that the trademark “CONEASEAN” fully satisfies the criteria for protection. Specifically, the arguments centered on the following key points:
- The mark is a coined term, inherently distinctive and independent, and does not directly evoke any specific organization or entity;
- In both visual and phonetic terms, “CONEASEAN” is pronounced as /CO-NEA-SEAN/, clearly distinguishable from “ASEAN”;
- The mark does not imply any endorsement, sponsorship, or affiliation with any intergovernmental organization;
- It is presented in standard characters, without any graphic elements or stylization that could mislead consumers.
To further support its position, KENFOX provided comparative evidence showing that similar trademarks had been successfully registered in numerous other jurisdictions without encountering similar objections. This highlighted the inconsistency of the Cambodian refusal when compared to prevailing international trademark examination standards, particularly the doctrine of composite marks. Under this doctrine, the distinctiveness and registrability of a trademark must be assessed based on the mark as a whole, rather than by isolating and analyzing individual components.
Outcome: Protection Granted for the Trademark “CONEASEAN”
Following a thorough review of the legal arguments and supporting evidence submitted by KENFOX, the DIP of Cambodia decided to withdraw its initial refusal. Instead, the DIP issued a decision approving the registration, officially recognizing the validity and registrability of the trademark “CONEASEAN” in Cambodia.
This outcome not only affirms the distinctiveness of a creatively coined mark but also emphasize the effectiveness of a well-structured legal strategy. It sets a significant precedent in shaping a more complicated approach to the examination of trademarks containing references to international organizations.
Final thoughts
The favorable outcome in the “CONEASEAN” case serves as clear evidence that an initial refusal does not necessarily close all avenues to trademark protection. Even when a mark contains elements resembling the name or abbreviation of an intergovernmental organization (IGO), registration remains entirely feasible, provided that the mark demonstrates clear distinctiveness, poses no risk of public confusion, and is supported by strong legal reasoning and persuasive international precedents.
The success achieved by KENFOX on behalf of its client in this matter is not merely a legal victory; it is a powerful reminder that persistence, legal acumen, and strategic advocacy can turn seemingly insurmountable legal obstacles into opportunities to establish precedent and pave the way for innovative trademarks to thrive in an increasingly demanding international legal landscape.
QUAN, Nguyen Vu | Partner, IP Attorney
PHAN, Do Thi | Special Counsel
HONG, Hoang Thi Tuyet | Senior Trademark Attorney
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