5 important notes when filing trademark in Cambodia

24/05/2022 - 1362 views

Trademark applications in Cambodia have to be filed to the Department of Intellectual Property (DIP), Ministry of Industry and Commerce in Cambodia. The applicant can choose to file a trademark in a form of single-class application or multi-class application. There are no restrictions on the number of goods and/or services that can be included in each class. Below are some remarkable notes when filing trademark in Cambodia.

 

1. First-to-file rule for filing trademark in Cambodia

Filing trademark in Cambodia also follows the first-to-file rule. In particular, if two identical or confusingly similar trademarks of the same kind are filed with the DIP, priority will be given for the trademark with the earlier filing date. As a result, if you intend to use the mark, you should file a trademark application as soon as feasible.

2. Claiming priority right 

Cambodia officially acceded to Paris Convention for the Protection of Industrial Property on September 22, 1998 and became a member of the International Union for the Protection of Industrial Property (“Paris Union”), founded by the Paris Convention. Thus, under Article 4 of the Paris Convention, it is possible to claim the priority right for a consequent application in Cambodia if it is filed within six months of the the application’s filing date in the country of origin.

Under the general rule in Cambodia, for claiming priority right, all information of the consequent application must be unified with those recorded in the priority document. However, if the priority application includes the items of goods/services in the class heading, general items and items of goods/services marked with an asterisk, it is advisable to clarify such items with the specific items in order to avoid any possible office action. Besides, please be noted that the scope of goods/services in the application cannot exceed the prior application but limitation or reduction is allowed.

For filing trademark in Cambodia claiming priority, a certified true copy of the priority application as well as its English translation are required. Please be noted that scanned copy of priority document is acceptable at the time of filing, the original one must be submitted within one month later.

5 important notes when filing trademark in Cambodia

3. Conducting a search before filing trademark in Cambodia 

It is not mandatory to conduct a trademark search prior to filing. However, because of the benefits, it is suggested that you persevere with this step. You should do a full similarity search to see if any trademarks that are identical or similar to yours have previously been registered or applied for. Then, depending on the search report, you can select the best options for obtaining a trademark registration from the DIP. While doing a trademark search before to filing incurs an additional price, it nevertheless saves the applicant money and time in the long run.

For enabling us to conduct the trademark search in Cambodia and provide more precise comments and analysis on registrability in our Search Report, kindly provide us with:

  • Specimen of mark;
  • the concentrated and typical specification of goods/services, which the search requester may apply for the searching mark;
  • the name of the search requester, who may have already owned another earlier identical/similar trademark application or registration, if possible.
  • transliteration and meaning of Chinese/Korean/Japanese…characters (if any).

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

4. Disclaimer statement

Although there is not yet any specific regulation about the disclaimer on any terms in the mark when filing trademark in Cambodia, the disclaimer statement has still been applied under the current practice. 

Elements of a mark that are descriptive words or general terms, such as describing the qualities or attributes of the goods or services, will not be separately protected under Cambodia’ present IP Law. Therefore, to avoid rejection and additional costs, the applicant should state in the application form that he agrees to disclaim the exclusive right to use any specific term(s) apart from the mark and that he wants the mark to be protected as a whole.

5. Requirements for filing trademark in Cambodia

In order to file a new trademark application in Cambodia, the following documents are required:

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

Please be noted that under the current rules, the notarization must be done in the 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.

  • A specimen of the trademark in .JPEG file with a minimum resolution of 600 dpi;
  • Specification goods and/or services. Cambodia has adopted the Nice Classification of Goods and Services, which consists 45 classes. The goods/services for which registration must be classified according to the current version of the Nice Classification at the time of the filing trademark application. Please also be noted that in accordance with Cambodia Trademark Law, the items of goods/services in the class heading, general items and items of goods/services marked with an asterisk which may cover other classes and constitute ambiguous or too vague for classification purposes are not acceptable. Therefore, such items need to be clarified with the specific items or items with the basic number in the Alphabetical List of the 11th Nice Classification.

More information about filing trademark in Cambodia can be found HERE

Should you have any further questions about intellectual property matters in Vietnam, Laos, Cambodia and Myanmar, please kindly contact us via our email address info@ageless.vn.