[1] protection mechanisms
The first-to-file rule is applied for determining the priority right of the application for registration of trademark under the Cambodia IP Law system. However, the “first-to-file” rules is not a strict principle, it can be denied by the “legitimate owner” rules. Consequently, a prior application for registration of trademark with its earlier priority date can be refused for protection in consequence of either cancellation or opposition proceedings or counter-claim by any concerned party including the Registry. The context of these rules are wordings “where two or more mark applications relating to identical or similar mark which are to be used on identical or similar goods or services are filed on different dates, the registrar may refuse to register any of them until the rights of those applicants have, upon application in the prescribed manner, been determined by him, or have been settled by agreement in a manner approved by him” [Article 9, The Law Concerning Marks]. In other aspects, therefore, it can bring wordings that the proof of first use may be a weight to the “first-to-file” from time to time in some special cases.
Cambodia has joined in Paris Covention and WTO Agreement, and therefore, an application for registration of trademark filed by nationals of any contracting members can claim priority rights to file their applications within six [6] months from the earlier filing date of Paris Convention or the WTO application from which priority is claimed.
To claim priority rights for trademark application in Cambodia, it is required a identical applicant, trademark and goods/services trilogy [triple identity] between application in Cambodia and priority application. However, the “identical” requirement in goods/services means that the goods/services for which application in Cambodia claims priority are not wider than those registered in the priority application.
A multi-class application is not allowed in Cambodia. It means that each application is applied for one mark in one class only provided that description of goods/services must be classified in accordance with Nice 10th Classification. However, there is no limitation to the number of goods items in one class at the basic fee.
[cancellation]
although some statutory provisions as well as guidelines thereof are absent from the current IP law system of Cambodia in respect of the procedure for cancellation or opposition on bad faith ground, as an universal truth in law system of any countries, the “proper owner rules” is always respected in the practice. Accordingly, the legitimate trademark owner can seek the protection for their trademark rights by this rule. The legal grounds on which the request for cancellation is based can be understood as
(i) the owner of the registered mark is not the legitimate owner [Article 14.(e) of Cambodia IP Act];
(ii) the mark is filed in the name of agent or representative of the legitimate owner without such owner’s authorization [Article 6septies of Paris Convention];
(iii) the owner has been obviously aware of the subject mark of legitimate owner before the filing date of such mark which has been filed without legitimate client’s consent.
[opposition]
no provision on opposition against the trademark application in pending can be appeared in the IP Act [The Law Concerning Marks], but an application for opposition against the pending trademark applications are still allowed in the purpose of protection for the trademark rights of the legitimate owner. This is quite aware from the practice in Cambodia and allowing that the legitimate trademark owner when applying for application for registration of trademark can file an application for opposition against the improper pending application regardless of a fact that the pending applications are not published from which the legitimate owner can be easily aware of them.
[notes]
In the legitimate owner rules, it is very noted to the legitimate owner that it is very seldom for the Registry to open cancellation or opposition proceedings alone. To file an application for cancellation or opposition, the legitimate owner must have to file together with it an application for registration of trademark for which it is filed or registered improperly. It means further that the cancellation or opposition proceedings shall be reviewed on the application for registration of such mark.
Where a trademark for filing is examined to be obviously confusingly similar to the prior marks, the Registrar will in its sole discretion issues the notice of rejection to the trademark for filing. However, in case the similarity is in relative level, the Registrar will often invite the owner of prior similar mark to give their opinions whether the trademark for filing is confusingly similar to his prior mark. If it is similar in his own view, the owner of prior mark can expressed his opposition against the trademark for filing and the registrar will convey his opposition opinion to the applicant of trademark for filing. The Registrar will give out their conclusion on registrability after hearing all opinions of both parties. Otherwise, if the owner of prior similar mark is silent or has not given out the opinion on opposition in the prescribed time, the Registrar will normally accept the registration of such mark. It is noted that these consultation rules is not stipulated in any legal writing of Cambodia IP Law system, but it is very practical proceedings in Cambodia.
[2] consent system
The letter of consent system is a distinctive issue of Cambodia trademark practice rules. Although, it is not stipulated or mentioned in writing in the IP law system of Cambodia, the letter of consent is accepted as a tool to exclude the likelihood confusion for registration of trademark even they are closely identical so that consumers believe they are offered from the same source. It is recorded from the practice that the letter of consent is not allowed in case both trademark are identical and applied for the same goods/services. Any minor differences from signs or description of goods of two marks in the similarity question can help to seek the co-existence of trademark registrations on the basis of consent rule in Cambodia.
[3] affidavit system
According to the Cambodia Trademark Act, the term of protection of trademark in Cambodia is ten [10] years from the date of filing, but it is also required that during the term, to avoid cancellation of the registration upon the request of a interested party or a counterclaim against the refusal in the registration proceedings, the owner of the registration must submit an affidavit of use/non-use between the period of the fifth and sixth year after the registration date. However, in practice, the affidavit of use or non-use can be submitted after the said prescribed period that does not meet any challenge or risk from the registry or interested person [see the paragraph “outstanding matters” below].
In respect of affidavit of use, where the mark has been in use on goods/services in the Kingdom of Cambodia, the Affidavit of use stating such status must be filed with the Cambodia Trademark Office (invoices, invoices, bill of lading and/or packing list, and certificate of origin certifying the goods bearing the mark produced, photo of goods
In respect of affidavit of non-use, where the mark has not been used on goods/services in the Kingdom of Cambodia, the Affidavit of Non-use must be filed with the Cambodia Trademark Office in which stating that the mark is intended to use and there is no intention to abandon the same and the non-use is due to justifiable circumstances.
[4] disclaimer statement
There is no article in Cambodian Trademark Law directly stipulate about disclaimer of part of the applied mark for trademark registration. However, in practice of trademark examination at Cambodian Trademark Office, all terms are common or descriptive must be disclaimed from exclusive rights to use such term apart from the mark as a whole.
In order to avoid possible office action and the incurred costs as well related to the above mentioned reason, the applicant, with advices of their IP representative, should make a disclaimer statement at the time of filing, if necessary.
| SUMMARY | [+] |
| PRACTICE | [+] |
| OUTSTANDING ISSUES | [+] |
