In B2B Cambodia's 'Legal Update' we delve into the latest legal changes and developments in Cambodia's laws and regulations with key experts in the field.
In this episode we discuss Intellectual Property (IP) law, specifically concerning Trademarks, with Chanraksmey Sokun, Associate at Tilleke & Gibbins.
What Laws In Cambodia Apply To Intellectual Property (IP)?
Chanraksmey explained that when talking about laws governing intellectual property in Cambodia, one needs to first understand which international laws and conventions the country is a party to, such as the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) and the Paris Convention for the Protection of Industrial Property, which apply to different aspects of IP.
“Separately Cambodia has different laws that govern different types of intellectual property. For example, we have the Law on Marks, Trade Names and Acts of Unfair Competition that govern a form of IP called ‘trademarks’,” she shared.
“We also have the Law on Patents, Utility Models and Industrial Designs that govern patents and industrial designs. And we also have the Law on Copyright and Related Rights that cover copyright and… [for example] the related rights of a performer, broadcasting station, and so on," she added.
What Can Be Registered As A Trademark In Cambodia?
“To put it simply, a trademark is a source indicator,” explained Chanraksmey.
Businesses use it to identify the goods and service in the marketplace. So when consumers see ‘marks’ that are used for specific goods, they know where that products bearing the mark comes from, i.e. which company it's from.
Businesses can register letters, numerals, words, logos, shapes, colours, or a combination of those things, as a trademark. Pointing to the Tilleke & Gibbins logo as an example, Chanraksmey underlined how it is “a combination of words and symbols”, and a trademark registered for legal services under Class 45.
On what types of visible signs cannot be registered as trademarks in Cambodia, Chanraksmey boiled it down to three main criteria:
- If the chosen trademark is merely descripive of the goods and services it seeks to identify;
- If the chosen trademark is misleading, immoral, or takes the name or emblem of a country or state;
- If the chosen trademark is identical or confusingly similar to a priorly registered mark.
What Are The Steps To Register A Trademark In Cambodia?
Businesses need to submit an application to the Department of Intellectual Property (DIP) under the Ministry of Commerce, in which they will need to detail certain information such as who owns the mark, who is the applicant, what mark they wish to register, and the goods and services the registered mark will apply to.
“Regarding the types of goods and services, there is an international classification system because there are so many types of goods and services available in the world,” explained Chanraksmey.
There are a total of 45 classes. Thirty-four classes contain all types of different goods, and another 16 contain different types of services. For example, our legal services falls under Class 45, restaurants fall under Class 43, if you sell clothes, you are designated under Class 25.
“This may seem a bit complicated for business that want to register their trademarks because maybe they don't know what class they should register [under], but this classification… is publicly available online, there is a website you can check. But I understand that it still might be a bit complicated for businesses, so that's when they need legal mark agents to help them figure out [the classification] based on the business and the kind of goods or services they provide,” she added.
Chanraksmey especially stressed the importance of officially registering a trademark, as trademark rights can only be obtained through registration, including the exclusive right to use the mark.
[Being officially registered], no one can use your trademark unless you provide consent to, and you can also sell the trademark, so it's an asset as well.
Once an application has been filed, and if there are no objections found by the DIP, registration of a trademark in Cambodia can take between nine months to a year for straightforward cases.
Who Are The Main Bodies Responsible For Enforcing Trademark Law In Cambodia?
Besides the DIP (Department of Intellectual Property) and the Ministry of Commerce, the economic police under the supervision of the prosecution under the Ministry of Interior have the authority to take action against any crime concerning IP.
Besides the economic police, there are also courts, but Cambodia currently does not have commercial court that is specialised in IP. Chanraksmey, however, shared that it is in the Cambodian government's IP policy and long-term action plan to establish one.
Watch Part 2 of the Episode on Trademark Law in Cambodia:
Infringement Of Unregistered Well-Known Marks In Cambodia
Chanraksmey stressed that unregistered well-known marks receive very limited protection under the law. Owners of unregistered well-known marks (marks that are registered outside of Cambodia and are considered ‘well-known’ in another country or in the region) can only file against third-parties that have used a confusingly similar trademark for the same, or similar, goods and services that the trademark is known for.
She further clarified:
If there is a business abroad that has registered their trademark [in their jurisdiction], but has not entered the Cambodian market, and has also not registered a trademark here, and they find that there is a business [in Cambodia] that uses the same mark and has registered it for themselves… the rightful owner can still file to cancel that mark.
“In this type of cancellation action, the rightful owner has to provide evidence. They have to submit a request with the DIP and provide evidence saying: I'm the rightful owner who has used this mark way before the [offending] business was established, I have registered this mark in many jurisdictions in other countries since this time, so I'm the rightful owner," she added.
If the DIP is convinced by the evidence that a business registered in Cambodia is using a mark that they are not the rightful owner of, they can cancel that mark from the registrar and the the rightful owner can then register the mark themselves, ask the offending business to stop using the mark, and potentially also claim for damage.
Grey Areas In The Law Regarding Trademarks In Cambodia
Protection of trademark rights typically depend on registration status, but well-known marks are afforded some protections even if they are not registered in Cambodia. However, Chanraksmey highlighted one major grey area in the law in Cambodia when it comes to identifying whether a trademark is ‘well-known’ or not, due to the absence of an official record or system of identification account for well-known marks in the country, region and beyond.
In Cambodia… we have a criteria [for well-known marks] in the trademark manual that guides the practitioners, examiners and the DIP on how to determine what mark can be considered a well-known mark, but we do not have a system to record well-known marks, we do not have a list…
“In other jurisdictions, like China, they have a system to recognise well-known marks, so if the owner of a mark thinks it is well-known, they can submit an application with evidence required by the law to the authority to prove that their mark should be recognised as a well-known mark… In Cambodia, we have a criteria to follow, but [the final determination] depends solely on the examiner's knowledge," she added.
As a result, sometimes there can be trademark approved in Cambodia for businesses that are not the rightful owners due to a gap in the individual examiners' knowledge of certain well-known marks in other jurisdictions.
After it has been determined whether a certain mark can be deemed a ‘well-known’ mark, there is no list or system of recognition [for this information to be input into], so trademark owners, sometimes if they have to enforce their right over a well-known mark, they have to prove it all the time.
“In such cases, it becomes the responsibility of the owner of the well-known mark to really keep monitoring what marks have been allowed for registration in Cambodia, and whether there are any marks that are confusingly similar to it. If the owner finds, they have to file an opposition," explained Chanraksmey.
What Legal Routes Can Businesses Take If Their Trademark Rights Are Being Infringed Upon?
The legal route a business takes when it believes its trademark right is being infringed upon typically depends on the nature and gravity of the case.
“Certain types of infringement are not very grave, and not the type to require going to the economic police to file a complaint or to go straight to court," said Chanraksmey.
If the nature of a case is not very grave, like if it involves the use of a confusingly similar mark, for example, because, actually,
In Cambodia, knowledge on intellectual property, stuff like trademark rights, I would say are not that well-known among the people, so sometimes there are business… that see the logo of a well-known mark… and take the majority of its important elements to make it their own. Even if it's not identical, it's still confusingly similar. So in that case, the rightful owner can send a letter to that business informing them… that the owner's right is being infringed upon and the business is being asked to stop. This is the most common route that our clients take.
"[It's important] to inform a business first… if their action is infringing upon someone's right, asking them to stop. But if they don't stop [after we] send a letter, then another step is we can initiate an administrative proceeding, like a mediation by the DIP of the Ministry of Commerce… If you fail to negotiate or solve a dispute between parties, sometimes when there is an intervention from the local authority, the [infringing party] might listen.
“If that fails… then the party can go to court…. If the infringing action is grave, like if a business is counterfeiting a trademark for medicine, this affects people's health… Business owners can file a complaint with the economic police, and then the economic police will investigate and gather enough evidence, they can conduct great action, and after that, if they have enough evidence, they build a case further to court,” she added.
Updates Or Developments In Cambodia's IP Law – Ratification Of The Berne Convention
Regarding new updates and developments in the realm of IP law and protections in Cambodia, Chanraksmey shared that Cambodia recently ratified the Berne Convention for the Protection of Literary and Artistic Works, meaning there is more to look forward to in relation to copyright.
“Most of our clients here are foreign companies, and their concern is whether their copyright is protected here in Cambodia, because copyright does not require registration to be protected. That's why being a party to the Berne Convention means Cambodia will have to provide the same protection to foreign works as provided to local works,” she said.
However, even with this new ratification, Chanraksmey raised a grey area concerning the speed of the development of corresponding regulations that would detail how the Berne Convention is applied in the country.
After the ratification of the Berne Convention, there has not been any regulatory update from the relevant ministries or authorities about how the Berne Convention applies here and whether the ratification would really mean that Cambodia has to provide protection for all foreign works here, for example. We cannot say for sure, but it should be the case, because under the law, it should apply. But we have to wait for the regulatory updates.
“But what I have heard from the ministry is that there will be an amendment to the copyright law, which is also highlighted in the IP policy. So for us as practitioners, we look forward to the regulatory updates from the authorities before we can say for sure what will happens,” she concluded.