You can register trademark in Cambodia with Department of Intellectual Property, Ministry of Industry and Commerce in Cambodia. Only one mark can be registered in an application. A series of marks is not accepted for protection in Cambodia. The mark can be displayed in black & white or in a variety of colors. But, will the scope of protection for a black-and-white mark be broader than for a color mark or not? Here are some thoughts on the subjects.
1. What can be registered as a trademark in Cambodia?
The current Intellectual Property Law in Cambodia defines a mark as “any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise”. Signs may be in the form of letters, numerals, words, phrases, shapes, pictures, images, logos, including three-dimensional images or their combinations, presented in one or several given colors. These signs are used to distinguish the goods and/or services of one trader from those of another. Non-visible signs, such as sound, olfactory (odor, scent or smell), taste and moving marks are not registrable as a trademark in Cambodia.
2. Scope of protection of a trademark in Cambodia
There is not yet any specific regulation to determine the scope of protection of a registered trademark in Cambodia. However, under the current practice in Cambodia, the scope of protection of mark is established based on all what they are displayed consisting of all elements and color(s) and color arrangement, if any. It is not possible that the trademark that is protected in black and white will be protected in all colors and contrary. It just means that the protected trademark in black and white can prevent other from using and registering later similar trademarks in all colors in the name of third parties. Similarity, the protected trademark in colors can preclude the use and registration of later similar trademarks in black and white of third parties.
3. Whether use of the mark in color demonstrates use of the registered trademark in Cambodia in black-and-white?
According to Article 5 C-2 of Paris Convention, use of a trademark by the proprietor in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered in one of the countries of the Union shall not entail invalidation of the registration and shall not diminish the protection granted to the mark.
Cambodia is a member of Paris Convention so the aforesaid Article will be considered. However, under the current Trademark Law in Cambodia, there is no specific provision provided for alternation of distinctive characters OR change the nature of trademark OR change mark substantially. As a result, it varies case by case and much depends on the opinion of trademark examiner.
In another aspect, according to the Cambodia Trademark Law, in order to maintain the validity of a registered trademark in Cambodia, the owner of the registered mark should file an Affidavit of Use or Non-Use within one year following the fifth anniversary of the registration date. The Affidavit of Non-use is also considered as sufficient to avoid a possible cancellation based on non-use of a third party. If an affidavit of use/non-use is not provided at the fifth anniversary, the registration may be removed even if the mark has been continuously used in Cambodia. This means that, under present law and practice, timely filing of an affidavit of use/non-use is critical.
It is difficult to have a definitive answer to the question “Should we register trademark in Cambodia in color or black and white?”. However, to prevent any potential risks, it is advisable to use the same mark as the registered one and to file the Affidavit of use/non-use in a timely manner.
More information about register trademark in Cambodia can be found HERE.
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