Cambodia officially joined the Madrid Protocol on June 5, 2015, becoming the 95th member of the Madrid System. Since that time, obtaining a trademark registration has become possible through both national and international trademark registration designating Cambodia. Within the framework of this article, we will point out some similarities and differences when responding to a refusal of trademark in Cambodia between a national application and an international registration.
1. Deadline for response
In accordance with the current regulation, when a national trademark application is refused by the Ministry of Industry and Commerce’s Department of Intellectual Property (DIP), the Applicant has sixty (60) days commencing from the date of receiving the DIP’s notification to request a hearing or submit written comments in response to the DIP’s refusal. The applicant must tell the DIP in writing and modify his or her application if he or she does not object to any such amendments, modifications, disclaimers or limitations or other conditions. If the applicant does not respond in one of the aforementioned ways or the others, it will be assumed that they have given up on their application. In fact, it is advised to submit a response within 60 days of the Notification’s issuing date in order to prevent any danger regarding the deadline. The deadline for submitting a response may be extended three times.
Different from the DIP’s provisional refusal regarding a national trademark application, the deadline for response regarding the refusal of an international trademark registration designating Cambodia is sixty (60) days from the date of receipt of the notification of this refusal from the International Bureau of WIPO. The date of receipt of the notification of rejection regarding an international trademark registration is the date that WIPO notifies the holder, as notifications are currently sent by email due to the advent of the internet.
2. Grounds for the provisional refusal
There is not any difference about the grounds for the provisional refusal of a national trademark application or international trademark registration. In particular, a trademark application will be refused protection, if it violates into either absolute grounds or relative grounds.
Trademark applications in Cambodia may be partially refused for some goods/services. In this case, if the applicant agrees with the DIP’s requirement, the solution procedure is as follows:
- In respect of National trademark applications, the applicant or the applicant’s representative (if the applications were submitted through a representative) must submit an amendment request directly with the DIP to request the removal of the refused goods/services from the designated specification of goods/services. Then, filing a response to the Notice of Refusal with the DIP based on the request for amendment.
- In respect of international trademark applications: The request for limitation of goods/services must be submitted with the IB of WIPO, rather than the DIP. Then, the response to the Notice of Refusal should be filed at the DIP together with the request for limitation in advance and the notification of recordal the limitation of goods/services later.
3. Response method and required documents
3.1. Response method
– The response to refusal of National trademark application can be filed directly if the applicant is a Lao national or has a head office or business establishment in Cambodia. Foreign applicant who does not have head office or business establishment in Cambodia must file response through a local Agent.
– The response to refusal of international trademark registration designating Cambodia must be filed through a local Agent.
3.2. Required Documents
- Power of Attorney: It is not required to file a notarized Power of Attorney (POA) when filing a response to the office action regarding a national trademark application if this application was filed by the same representative. Meanwhile, in respect of international trademark registration, the POA is required at the time of filing response.
- Supporting documents, if any;
- Other evidence and/or other relevant information (where applicable)
4. Procedure
Normally, it takes three to six months to review the response. If the DIP accepts the response, the DIP will issue Certificate of Trademark Registration in respect of a National Trademark Application and the Statement of Grant of Protection in respect of an International Trademark Registration. The International Bureau of WIPO and the applicant’s representative in Cambodia will both receive the Statement of Grant of Protection at once. On the contrary, the DIP will issue further refusal requesting to respond.
In case you require more information or require advice to register trademark in Laos, Cambodia, Myanmar, Vietnam as well as other IP matters, please do not hesitate to contact us via email: info@ageless.vn
More information about trademark protection in Cambodia can be found HERE