How to effectively handle a trademark infringement in Cambodia?
Generally, when trademark infringements occur in Cambodia, the trademark owner may resort to administrative, civil, criminal procedures, or border control measures in order to protect their rights.
From our experience, most of trademark infringement cases in Cambodia are handled through the administrative proceedings with the involvement of Cambodian Department of Intellectual Property (“DIP”).
More details of administrative proceedings for settling an IPR infringement in Cambodia are provided below for your reference.
The administrative proceedings to settle an alleged trademark infringement has not been provided in any law of Cambodia up to date. The DIP is now in the course of drafting an IP Enforcement Regulation which will include this method. This method is carried out by the DIP at the request of IPR holders.
Generally, to initiate an administrative proceeding for trademark infringement, the following steps will be taken:
Step 1: A formal petition is prepared by us and then, submitted to the DIP, Ministry of Commerce. Evidence of alleged infringement and a copy of trademark registration certificate must be submitted alongside the petition. A previously-provided PoA can be re-used. Thus, your client does not need to provide us with any PoA.
Step 2: The DIP review the petition and other submitted documents. If sufficient, the DIP will send an Official Letter requiring the alleged infringer to attend a working session with the DIP’s officers to discuss the dispute and negotiate an end to the infringement.
The DIP’s officers act as mediators. Under the laws, the DIP is not entitled to order penalties, fines, or the seizure or destruction of counterfeit goods. Instead, the involved parties can reach any commitments during the working session witnessed/mediated by the DIP to reach an end to the infringement. The commitments typically include ceasing importing or selling the infringing products; destroying all inventory of the infringing products and providing evidence of the destruction, or delivering the inventory to the trademark owner for destruction; disclosing the supply chain; recalling products from the market; and amending the infringer’s mark if the dispute involves an issue of similarity.
Step 3: In case the alleged infringer does not appear before the DIP, the DIP normally resends the letter at least three times. If the infringer continues to ignore the request, the act of not attending the administrative proceeding can serve as supporting evidence of infringement in subsequent judicial proceedings. In practice, infringers rarely ignore the DIP’s invitation to attend negotiations—the government request is usually sufficient to compel them to come to the bargaining table. Typically, negotiations take two to three cycles to complete and culminate in a signed agreement. Administrative proceedings usually generate a positive outcome.
In case the alleged infringer does not eventually appear before the DIP, the DIP will just inform us the way how to solve the problem, taking into account that the DIP does not have the right to order penalties, fines, or the seizure or destruction of counterfeit goods if the request is ignored. In such circumstance, the trademark owner may submit a petition to the Police in Cambodia or file a civil lawsuit at a competent court. One important thing to note is that initiating civil procedure in a Cambodian civil court can be time-consuming, expensive while outcome of the court proceedings is not certain due to systematic problems in the Cambodian judiciary.
If KENFOX was entrusted by the trademark owner for the filing stage, the Client do not have to provide us with any document. We can use copies of Trademark Registration Certificate in our records and previously-provided PoA.