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I. Legal basis
- The Law on Patents, Utility Models and Industrial Designs enacted in 2003.
- Prakas (Declaration) on the Procedure for Registration of Industrial Design of 2006
- A special agreement on protection of industrial designs signed by the Intellectual Property Office of Singapore and MIH
- The Hague System for the International Registration of Industrial Designs ( Cambodia acceded to The Hague System for the International Registration of Industrial Designs, effective February 25, 2017 )
II. Industrial Design related matters in Cambodia
At KENFOX, we assist clients in determining viability and availability of their proposed industrial designs for use and registration in Cambodia. KENFOX industrial design services include the followings:
- Search for shape, configuration, pattern or ornament applied to an article by any industrial process along with thorough legal opinion and advice.
- Search according to the Locarno Classification.
- Restoration of the lapsed designs
- Watch/inspection after industrial design patent
Registerable Industrial Designs
What is an industrial design under the laws of Cambodia?
An industrial design is defined under Article 89 of the Cambodian Law on Patents, Utility Models and Industrial Designs as “ any composition of lines or colors or any three-dimensional form, or any material, whether or not associated with lines or colors, […] 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 ”. Protection of industrial designs does not extend to parts of a design which serve solely to obtain a technical result and to the extent that it leaves no freedom as regards arbitrary features of appearance.
What requirements to be met for an industrial design to be registrable in Cambodia?
Per Article 92, industrial designs must be “new” to be registered, meaning they cannot have 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.
What are exceptions concerning novelty of an industrial design in Cambodia?
Disclosures to the public shall not be taken into consideration if a) it occurred within twelve months preceding the filing date or, where applicable, the priority date of the application or, b) by reason or in consequence of acts committed by the applicant or his predecessor in title or of an abuse committed by a third party. Industrial designs that are contrary to public order or morality cannot be registered in Cambodia.
Where to file industrial design applications in Cambodia?
Industrial design applications are filed with the Department of Industrial Property of the Ministry of Industry and Handicraft.
The application form and any documents forming a part of an application must be submitted in the Khmer.
What required documents in an industrial design application in Cambodia?
Per Article 95, the required information for filling in the application form for industrial design in Cambodia include:
- Name, address, nationality and contact details of the applicant and inventor;
- Title of the industrial design;
- International classification of the industrial design;
- Indication of the kinds of products for which the industrial design is to be used;
- Indication of novelty and protectable points of industrial design;
- Short description of industrial design;
- A statement justifying the applicant’s right to the registration of the industrial design if the applicant is not the creator.
How long does it typically take for an industrial design to get registered in Camdodia?
KENFOX advises that it may take approximately four to six months from application to obtaining the registration certificate, assuming all the requirement are fulfilled. It may take longer depending on the workload of the Registrar.
What requirements for two or more industrial designs to be filed in one application in Cambodia?
Two or more industrial designs may be the subject of the same application, provided they relate to the same class of the International Classification or to the same set or composition of articles.
The filing date and application number for industrial design application in Cambodia
The application form must be submitted with drawings, photographs or other adequate representation of the article. As soon as the required documentation is submitted and an official fee is paid to the Department of Industrial Property, the Registrar will provide an application number and filing date to the applicant.
How are industrial design applications examined in Cambodia?
- Formality examination: the Cambodian Registrar shall examine whether the application complies with the requirements of Articles 95 and 96 ( i.e. whether required documents are adequately provided and whether t he application fee has been paid ).
- Substantive examination: the Cambodian Registrar shall examine the industrial design complies with the requirements of Articles 89 to 90, Article 93 ( i.e. whether the industrial design meet protection requirements).
How about issuing design patent in Cambodia?
Where the Cambodian Registrar finds that the conditions referred to in Article 102 (formality and substantive examination) are fulfilled, he shall register the industrial design, publish a reference to the registration and shall proceed to issue to the applicant a certificate of registration of the industrial design; otherwise, he shall refuse the application.
In case the Registrar issues a refusal Decision against our industrial design, can we file an appeal thereagainst?
Per Article 124, any Decision of the Ministry of Industry and Handicraft (MIH) of Cambodia, in particular the grant of a patent or the grant of a utility model certificate or the registration of an industrial design, or the refusal of an application for such a grant or registration, may be the subject of an appeal by any interested party before the competent Court and such appeal shall be filed within three (3) months of the date of the Decision.
Who is the owner of the industrial design in Cambodia?
Unless otherwise agreed in the employment contract, works created by an employee will belong to the employer.
What is the validity term/protection term of Cambodian industrial design? And grace period?
Per Article 109, the registration of an industrial design in Cambodia shall be for a period of five (5) years from the filing date of the application for registration. The registration may be renewed for two further consecutive periods of five (5) years through the payment of the prescribed fee. A period of grace of six (6) months shall be allowed for the late payment of the renewal fee on payment of the prescribed surcharge.
INVALIDATION OF AN INDUSTRIAL DESIGN REGISTRATION IN CAMBODIA
Where can we file an invalidation request against an industrial design registration in Cambodia?
Unlike other countries where IPR holders should firstly file invalidation request at the IP Offices which first granted protection, under Article 110 of the Cambodian Law on Patents, Utility Models and Industrial Designs, any interested person may request the competent Court to invalidate the registration of an industrial design.
Which grounds can be based on for an invalidation action against an industrial design in Cambodia?
Per Article 111, the competent Cambodian Court shall invalidate the registration if the person requesting the invalidation proves that any of the requirements of registration of the industrial design in question is not fulfilled or if the registered owner of the industrial design is not the creator or his successor in title.
Any industrial design invalidated by the competent Court shall be regarded as null and void from the date of the registration of the industrial design.
The final decision of the competent Court shall be notified to the Registrar who shall record it and publish a reference thereto as soon as possible.
CHANGE IN OWNERSHIP/LICENSE CONTRACT IN CAMBODIA
KENFOX advises that under Article 114, any interested party to the registration or application of an industrial design in Cambodia can request the Registrar for change of ownership. The request for change in ownership must be in writing and be recorded and published by the Registrar. Such change will have no effect against third parties until such recording is completed.
Per Article 115,license contracts need to be recorded in the Registrar who shall keep its contents confidential but shall record it and publish a reference thereto. The license contract shall have no effect against third parties until such recording is effected.
INFRINGEMENT OVER INDUSTRIAL DESIGN RIGHTS IN CAMBODIA
What rights conferred by registration of an industrial design in Cambodia?
- Right to exploit the patent industrial design;
- Right to permit others to exploit ( namely, making, selling or importing articles incorporating the industrial design ) the patent industrial design (Article 105);
- Right to enforce against a third party’s alleged infringement ( Article 108).
What acts are included within the terms “exploitation” of an industrial design in Cambodia?
Per Article 106, “exploitation” of a registered industrial design means the making, selling or importation of articles incorporating the industrial design
What are limitations of industrial design right owners in Cambodia?
Per Article 107, the rights under the registration of industrial design shall not extended to acts in respect of articles which have been put on the market in the Kingdom of Cambodia or outside the Kingdom of Cambodia by the owner of the industrial design or with his consent.
Where can we file enforcement actions against an alleged infringer?
The petition for handling an alleged infringement over patented industrial design must be filed with a competent Cambodian Court. Per Article 126, upon the request of the owner, the competent court may grant an injunction to prevent infringement or an imminent infringement, award damages and grant any other remedy provided for in the general law. KENFOX advises that a licensee whose license contract has been recorded with the Registrar may also request the competent court to take immediate action when the owner has refused or failed to do so.
Penalties imposed on the infringer of patent/industrial design in Cambodia
Per Article 132, “ Whoever makes a false statement in any document filed to the Registrar, shall be guilty of an offense punishable by a fine from one million (1,000,000) Riels to five million (5,000,000) Riels (approx. US$ 250-1,250) or by imprisonment from one (1) month to six (6) months, or by both. The maximum penalty for a repeated offense committed within five (5) years from the date of previous conviction, shall be doubled in both of fine and imprisonment ”.
Per Article 133, “ Any person who knowingly performs an act which constitutes an infringement as defined in Article 125 of this Law hereof shall be guilty of an offence punishable by a fine from five million (5,000,000) Riels to twenty million (20,000,000) Riels (approx. US$ 1,250-5,000) or by imprisonment from one (1 ) year to five (5) years, or by both. The maximum penalty for a repeated offense committed within five (5) years from the date of previous conviction, shall be doubled in both of fine and imprisonment ”.
Per Article 134 “ Where a person is found guilty of an offense under this Law, the competent Court may order the seizure of which is deemed as state asset and destruction of the infringing goods and of any materials and implement the predominant use of which has been in the commission of the crime ”.
Per Article 135 “ The competent official, who committed guilty in implementation of own ’s duty provided by this Law, shall be punished in according with administrative offences, which are not considering yet to the others criminal offences ”.
Read more:
• Industrial Design protection in Cambodia
• Profit from Original Industrial Designs in Cambodia
• What are Industrial Designs under the law of Cambodia?
• What you need to know about Industrial Designs in Cambodia?
• How long does legal protection of an industrial design in Cambodia last?
• How do we register an industrial design in Cambodia?
• What are required for registering an industrial design in Cambodia?
• Who can register an industrial design in Cambodia?
• Which language can we use?