Cambodia has just introduced its long-awaited Trade Mark and Unfair Competition Law which, at time of writing, is awaiting consent by King Sihanouk. Cambodia has struggled for two decades to cast off the stigma of its brutal Khmer Rouge regime. The Cambodian Government is now seeking to stimulate foreign investment by establishing a basic legal structure to govern the country’s business environment. The Trade Marks and Unfair Competition Law (which is expected to be followed by a Copyright Law) forms a part of this drive to modernize the economy.
Although trade marks have been registrable in Cambodia for approximately 10 years under an interim system established by Government Decree, there has been no trade mark law in force.
Cambodia has been plagued by petty infringement and trade mark piracy. Although it has been possible to file cancellation proceedings against pirated trade mark registrations which have obviously been misappropriated from foreign proprietors, there have been no effective procedures in place to govern conflict between trade marks in situations which fall short of actual piracy.
The new law introduces formal opposition proceedings for the first time. The opposition deadline is 90 days from the date of publication of the official gazette advertisement for the application. It is possible to file opposition proceedings on a wide range of grounds, including lack of distinctiveness and conflict with a prior registered or well-known trade mark. If no counterstatement is filed, the application will be deemed to be abandoned.
If a counterstatement is filed provision is made for opposition hearings to take place.
The definition of a trade mark under the new law now includes any "visible sign" capable of distinguishing the goods or services of the applicant. This definition suggests that three dimensional trade marks are now registrable in Cambodia. All of the other usual categories of trade marks (such as local script, logos, word marks, packaging, etc.) have always been registrable.
Various categories of trade marks are excluded from registration. In particular, it is prohibited to register trade marks which may mislead the public.
A basic provision is also included in the law which prohibits the registration of trade marks which are identical or confusingly similar to trade marks which are already well-known in the Kingdom of Cambodia for similar goods or services and which belong to another enterprise. It is not necessary for the well-known trade mark to be registered in Cambodia in order to rely on this provision.
In addition to the above prohibition, it is also prohibited to register a trade mark for any goods or services similar to those which are covered by a trade mark which is already well-known and registered in Cambodia for similar goods.
The law also contains the usual proviso that the trade mark may not be registered if it is identical or similar to a prior registered mark, even if it is not well-known in Cambodia.
The new law envisages that trade mark applications will be examined both for registrability and for conflict with prior trade marks. Examination was not consistently carried out in the past, perhaps due to the fact that the Decree on trade marks did not provide specific authority to undertake examination procedures. There is a deadline of 45 days for responding to any official actions which are issued during the examination process. If no response is filed the application will be refused.
Once accepted and advertised in Cambodia’s rather elegant full color Trade Marks Gazette, and following expiry of the 90 day opposition period, a mark will be entered on the Register for a period of 10 years.
A grace period of 6 months is allowed for late renewal. It is still necessary to file an Affidavit of Use (or non-use, as the case may be) five years (half-way) through the renewal term. The hybrid combination of formal renewal procedures and provisions for filing Affidavits of Use probably arises from a need to maintain income from official fees in a cash-strapped economy. In the past, officials at the Cambodian Trademarks Registry were held personally accountable by the Government for any accounting discrepancies and after one official mistakenly accepted forged United States bank notes, a practice arose of photocopying bank notes received in cash payments for official fees in order that applicants using the forged bank notes could be more easily traced.
Trade marks may be cancelled either by the Ministry of Commerce or at the request of a third party if the mark is not renewed within the prescribed period or on any of the same grounds which are available in opposition proceedings.
It is also possible to request cancellation of a trade mark on the basis that it has not been used for a continuous period of five years up to a date one month before the cancellation request is filed. Although this is not made clear in the law, it appears that this provision is intended to apply only where an affidavit of use/non-use has not been filed.
Provided that acceptable quality control provisions are specified, it is now possible to register licence agreements in Cambodia. It is mandatory to record licence agreements, which will have no effect against third parties until they are recorded. It is also mandatory to record any change of ownership of a trade mark.
The registered proprietor of a trade mark will have the specific right to commence court proceedings against any person who infringes the trade mark. Infringement rights cover not only identical marks, but also similar marks if the use of the infringing mark would cause consumer confusion.
Although the scope of this provision is not clear, it appears that a trade mark registration may be relied upon to prevent use of a conflicting trade name.
Any act of competition which is contrary to honest practices will be deemed to be an act of unfair competition. Such acts include all acts in trade which are of a nature which will create confusion with a competitor or any false or misleading allegations which may discredit competitors or mislead the public concerning the goods.
A registered well-known mark may be infringed by use of an identical or confusingly similar sign in relation to either goods or services which are identical to those which are covered by the registration or any other goods or services where the use of the mark without authority would tend to indicate a connection between the infringing goods and the owner of the well-known mark.
In the case of an unregistered well-known mark, infringement would occur if a similar or identical mark is used in relation to identical or similar goods.
Either the owner of a trade mark or a licensee may commence court proceedings. The courts may issue injunctions and interim injunctions, award damages and grant any other remedies provided for under the Civil Law of Cambodia. The same types of relief are available in the case of unfair competition.
The court has the right to make orders for preservation of evidence or for payment of security for costs.
Any preliminary relief which is granted by the court may be appealed within 15 days. If preliminary relief is granted, the plaintiff must initiate substantive proceedings within 20 working days. The defendant may require the plaintiff to put up a bond against any damage which may be suffered if the preliminary relief turned out to be unjustified.
It is possible for owners of registered trade marks to request the Customs Authority to seize goods which are suspected to be counterfeit. Any such application must be presented in writing and accompanied by evidence of the trade mark registration and prima facie evidence that the goods are counterfeited. It may be necessary for the plaintiff to post a security bond. If court proceedings are not commenced within 10 working days, the goods may be released.
The Cambodian Customs Department is entitled to act on its own initiative in seizing counterfeit products.
Oddly enough, counterfeit goods of a non-commercial nature contained in travellers personal luggage are not covered by this provision of the law.
Both monetary and internment penalties may be imposed in cases of trade mark infringement or unfair competition. The penalties may be doubled in the case of repeat offences.
Conclusion
Although Cambodia has yet to establish an effective and independent judiciary, the introduction of specific and relatively well-drafted legislation on trade marks and unfair competition will undoubtedly help to improve confidence of foreign companies wishing to protect their intellectual property rights in Cambodia.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances
