INTERNET LAW - TRADEMARKS IN CAMBODIA

The Cambodian act known as the Law Concerning Marks, Trade Names and Acts of Unfair Competition (Trademark Law) was put into effect in 2002, and was the first of its kind in the country. In general, intellectual property laws and its respective rights in Southeast Asia are newly developed areas, and all countries in ASEAN, the Association of South East Asian Nations, realize much is at stake in this undertaking. But every country that buys into the global intellectual property model will ultimately profit. No economy can be built to sustain long-term success while ignoring the importance of intellectual property or tolerating piracy. This article answers the following questions: What is a “Mark” & “Trade Name” in Cambodian Law? What is the Definition of Trade Names in Cambodian Law? What are the Rules of Registration & Rights of Trademarks? What are Acts of Unfair Competition for Trademarks? What are the Infringements and Remedies of Cambodian Trademarks?

Cambodia had no legislation on Trademarks before the Law Concerning Marks, Trade Names and Acts of Unfair Competition (Trademark Law) was promulgated in 2002, the issue being novel to the national legislation of this country. Since there was no civil Cambodian law on intellectual property (IP), trademark issues were guided essentially by practices, ministerial decrees and by reference to related topics in other laws. The country was motivated to build a tradition of Intellectual property, and so worked with the World Intellectual Property Organization (WIPO) to help craft the present provisions.

Intellectual Property laws are essential, but useless without enforcement. This has been a sore spot in Southeast Asia’s developing countries, as they have seen little legal protection of intellectual property rights (IPR). This fact has spawned many related problems. First, there has not been the enthusiasm to develop inventions, since there was not as much protection or reward as in the West. Second, a culture of piracy has developed, as the idea of Intellectual Property had not caught on, whether as a defense, or prohibition. Third, the net result has been impoverished economies that lack entrepreneurship in these vital areas.

As in any other country, IP laws in Cambodia were needed not only to stop unfair competition, but also to encourage creativity. World IP organizations are helping turn the tide in countries like Cambodia. For instance, WIPO has helped to develop comprehensive IP laws, including enforcement mechanisms, and other organizations are teaching, helping get related laws passed, and ushering countries on compliance issues.

What is a “Mark” & “Trade Name” in Cambodian Law?

The law lists, in Chapter 1, Article 2, three Trade Name elements to be protected: Marks, Collective Marks, and Trade Names. A mark is “any “visible sign” usable for “distinguishing the goods (trademark) or services (service mark) of an enterprise.”

A “collective mark” means any “visible sign” that is designated as able to be registered as a unique mark, and used for designation on goods and services. A Trade Name means the “name or/ and designation identifying and distinguishing an enterprise.” Marks and Names shall be registered, and cannot be against public morality or confusing of another, whether local or international. (Articles 1, 2).

An example of Marks would include, drawings, brand names, a word, styled numbers, a design, a logo, graphic devices, Trade Dress labels, colored marks, combos of colors, signatures, 3-D marks, slogans, a shape or figure of objects, persons, or any combination of the previous.

What is the Definition of Trade Names in Cambodian Law?

A Trade Name “means the name or/ and designation identifying and distinguishing an enterprise.” Marks and Names shall be registered (Article 3, 4).
Chapter 6 deals with the issue of Trade Names. First, a word or designate may not be used as a Trade Name if its use goes against public morality or is deceptive. (Article 20) Also, pre-established Trade Names in Cambodia will be protected from 3rd parties, outside of any law or regulation regarding registration. Moreover, use of such an unregistered but existent Trade Name by any 3rd party is illegal. (Article 21 (a), (b)).

What are the Rules of Registration & Rights of Trademarks?

Chapter 2 establishes Registration and Rights for Trademarks, Articles 5-12.

Application: An application for all kinds of registration of marks is filed with the Ministry of Commerce.

Contents of Application: The application for registration of Mark shall contain a “reproduction of the mark and a list of the goods or services for which registration of the mark is requested, listed under the applicable class or classes of the International Classification as mentioned in the annex.” An “affidavit of use or non-use” for the mark, along with payment shall be included, as detailed by the joint declaration of the Ministry of Economy and Finance and the Ministry of Commerce. (Article 5(a), (b)).

Right of Priority is established by including in the application a certified claim of priority of a previous regime’s application filed by applicant or predecessor in title of any state member of the Paris Convention. (Article 6 (a), (b)).

When the Registrar of Trade Names receives a proper application, he registers the mark, issues a certificate of registration to the applicant, and then publishes a reference in the Official Gazette of the Ministry of Commerce. (Article 10(a)). If the application is defective, the submitter has 45 days after receiving written notice from the Registrar to amend the application. (Article 10(b)). Within 90 days of publication, the registration can be challenged for cause. (Article 10(c)).

Rights: Any use of the Trade Mark must be done with the owner’s permission. If breached, the owner has the right to proceed to court to ask for action against the infringement. He has the right of asking for cessation of the infringement or damages. (Article 11 (a), b)).

Period: The period of ownership of a Trade Mark shall be ten years, and upon filing, more periods of ten years may be granted, by fee. A six months lapse may be allowed for renewal. (Article 12(a),(b),(d)).

What are Acts of Unfair Competition for Trademarks??

Chapter 7 covers this issue, terming “Unfair Competition” as competitive behavior “contrary to honest practices in industrial, commercial, or service matters.” (Article 22).
The chapter lists specific acts of Unfair Competition, being competitive acts that “create confusion” regarding products of consumer, or industrial goods or services. Attempts to discredit business competitors via “false allegations” regarding their practices or produce, also qualify. Moreover, the use of misleading statements about one’s own products or services as regards the process of manufacture, use, effectiveness, or other essentially dishonest claims, are also sanctioned. (Article 23 (a), (b), (c)).

What are the Infringements and Remedies of Cambodian Trademarks?

Infringement: Chapter 8, Articles 24-28 deal with this issue. An infringement is the use of the same or a confusingly similar mark, owned by another, without permission, for the same type or a similar good. For goods not the same, but related, and where the sign is well-enough known as to make the application seem plausible, there may be Infringement. (Articles 24 & 25 a),(b)). Infringement on an “unregistered well-known mark” is similar. (Article 26)

Remedies: After a Mark owner has proven his Infringement, he may ask the court for specific relief, and be granted a judgment for cessation of the use of the competitor’s mark, have imminent infringement stopped by court order, or be granted damages. (Article 27).