What to do to overcome a provisional refusal in Cambodia due to a prior mark where the trademark applicant and the cited trademark owners are actually one entity?

As you know, Cambodia became the 95th member of the Madrid System, following the deposit with the Director General of WIPO on March 5, 2015, of its instrument of accession to the Madrid Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks. The Protocol enters into force, with respect to Cambodia, on June 5, 2015. With this accession, the applicant just 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, including Cambodia.

However in case your trademark faces a provisional refusal issued by the Department of Intellectual Property of Cambodia, and you you don’t know any of local representative in Cambodia? So, in that case, what do you have to do to protect your trademark?

Background:

XIAMEN YARUI OPTICAL CO., LTD. is a China-based legal entity, filed an application for international registration seeking protection for a word mark under IR No. 1374235 designating Cambodia. The DIP issued, after its substantive examination, a Notification of Provisional Refusal No. 2019/3651 against IR No. 1374235. The ground for rejecting International Registration Designating Cambodia (“IRDC”) exists under the different address of the Previously Registration under trademark application No. KH/53492/14.

In details:

Statutorily, the applicant is entitled to file a response to the Cambodia IP Office’s refusal within 60 days (extendable one time only for another 60-day period) upon receipt of the Notification of the refusal thereof from the International Bureau by submitting a petition to the Cambodia IP Office to request this office to revoke its refusal. Generally, the applicant of an IRDC may overcome a provisional refusal based on a prior mark by recording their address change for their prior Registration No. KH/53492/14.

Taking the proposed mark and the cited one into consideration, as instructed by XIAMEN YARUI OPTICAL CO., LTD, we filed a response to the Cambodia IP Office, which mentioned:

(1) The applicant of the applied-for mark is also the owner of the cited mark. The difference in the applicant’s address as compared to that of the owner is due to the fact that the address of the former has been changed.

(2) The address of the proprietor of the cited mark has been recorded to be consistent to that of the applicant.

Outcome:

Having reviewed our response, the Cambodian DIP found that our arguments are grounded, as such, annulled Provisional Refusal Notification No. 2019/3651 dated 15 February 2019 and approved protection for the mark “BOLON” under IR No. 1374235 in the name of XIAMEN YARUI OPTICAL CO., LTD in Cambodia.

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