Maintenance of Trademark in Cambodia

An application of trademark in Cambodia must be filed with the Ministry of Industry and Commerce’s Department of Intellectual Property (DIP). After being examined by the DIP, the mark will be granted a certificate of trademark registration in Cambodia if it meets all of the criteria for protection both as to form and substance. Once your trademark is protected, you will have sole ownership and exclusive rights to it. The concern is whether the trademark will be valid indefinitely after being granted a trademark registration certificate, or what needs to be done to keep it valid.

To maintain the validity of trademark in Cambodia, the owner is required to submit the Affidavit of Use or Non-use as well as the renewal request in a timely manner. Below are the details of these procedures.

 

 

1. Filing Affidavit of use or Non-use to maintain the validity of trademark in Cambodia

Article 15 of Cambodia Trademark Law states that “Any interested person may request the Ministry of Commerce to remove a mark from the Register, in respect of any of the goods or services in respect of which it is registered, on the ground that up to one month prior to filing the request the mark had, after its registration, not been used by the registered owner or a licensee during a continuous period of five years, provided that a mark shall not be removed if it is shown that special circumstances prevented the use of the mark and that there was no intention not to use or to abandon the same in respect of those goods or services.”  This means that a registered mark in Cambodia may become vulnerable to cancellation upon request by any third party, if the mark has not been used for a period of 5 consecutive years after registration without justifiable reasons.

 

Meanwhile, Article 21 of Sub-Decree stipulates as follows:

• In order to maintain or renew a registration, the registered owner of a mark shall be required to file Affidavit of Use or Non-Use of mark within one (01) year following the fifth anniversary of the date of registration of the mark;
• When a mark has been renewed, the registered owner of the mark shall be required to file Affidavit of Use/Non-Use within one year following the fifth 10 anniversary of the date of renewal;
• The Affidavit of Use or Non-Use shall be made in the Form prescribed by Prakas (Declaration) of the Ministry of Commerce and the fee for endorsement of Affidavit of Use or Non-Use shall be paid in accordance with the Joint- Prakas (Joint Declaration) of the Ministry of Economy and Finance and the Ministry of Commerce;
• The registered mark will be removed from the Register, if the owner of the mark or his/her legal agent fails to file the Affidavit of Use or Non-Use of that mark as prescribed in paragraph (1) above.

 

In the light of above, in order to maintain the validity of a registered trademark in Cambodia, the owner should file an Affidavit of Use or Non-Use within one year following the fifth anniversary of the registration date. In case, the registered mark has been used in Cambodian market, the owner should file an Affidavit of Use, otherwise, an Affidavit of Non-use is recommended. The Affidavit of Non-use is also considered as sufficient to avoid a possible cancellation based on non-use of a third party.

 

In order to file Affidavit of Use or Non-Use in Cambodia, the following documents are required:

• A notarized Power of Attorney, if appropriate;
• A copy of the current concerning Certificate of trademark registration.

 

Besides, if the trademark owner chooses to file Affidavit of Use, evidence of use is mandatory. Up till now, there has not yet been any detailed guidance about evidence of use. However, under the current practice, the following documents are acceptable:

 

• Documents showing trading/ distribution of products in Cambodia, for example, photos of the outlet/s where the goods are being offered for sale, receipts, invoices, purchase orders, bills of lading, notification of import and export, receipts of tax payments, etc.;
• Documents showing the marketing activity in Cambodia, for example, advertisements and promotional materials of the wholesale and retail information, etc;
• Document showing the acknowledgement of the public in Cambodia, for example, magazines, journals, newspapers, catalogues, signboards, photographs of the event or exhibition, etc.

 

2. Filing the renewal request to extend the validity of trademark in Cambodia

The period of trademark protection in Cambodia is ten years from the filing date and can be renewed indefinitely, according to the Cambodian Trademark Law. A renewal request must be submitted within six months of the expiration date. However, with an additional cost, a six-month grace period is permitted. As a result, in addition to filing an Affidavit of Use/Non-use, the trademark owner must file a renewal request in a timely manner to maintain the validity of trademark in Cambodia.

 

Required documents for filing a renewal request to extend the validity of trademark in Cambodia:

• A Notarized Power of Attorney (POA). Scanned copy of the POA is accepted at filing, the original one must be submitted within 1 month later;

 

Under the current rules, the notarization must be done in the home country of the Applicant and the following paragraph in the POA should be done even in case there is a specific form of each Notary Office: 

I hereby certify the above firm is a juristic person duly organized under the laws of __________ and that the signature above is that of ____________(name), (title)_____________who is duly authorized to sign on behalf of the above-mentioned firm;

• Concerning copy of Certificate of trademark registration in Cambodia together with the privious endorsement of Affidavit of Use or Non-Use OR copy of Notice of Acceptance of Affidavit of Use or Non-Use;
• Specimen of the trademark in JPG. File with resolution at least 600DPI.

You can see more details about trademark renewal in Cambodia in this article

 

3. Conclusion

The owners of trademark in Cambodia must be aware of the information and deadline  listed above in order to proceed both filing Affidavit of Use/Non-use and renewal, thereby avoiding a cancellation .

In case you require more information or require advice on Trademark in Cambodia or Intellectual Property right in Myanmar, Vietnam, Laos, Cambodia 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