What is a Cambodian Trademark?
A Cambodian trademark is often one of a startup’s most valuable and strategic assets. A strong, distinctive mark can help build a recognizable brand and build goodwill in the marketplace.
In Cambodia, a trademark can be any visible sign identifying and distinguishing the goods or services of an enterprise. Such signs specifically include words, names, letters, numerals, logos, devices, labels, signatures, slogans, and colors combinations, shapes, three-dimensional signs, and holograms. Thus, the shape and look of a product, as well as its packaging, are registerable.
Related to trademarks are trade names, often also referred to business or company name. A trade name can be registered as a trademark, but does not need to be in order to be afforded a certain degree of protection from unfair competition.
The Purpose of Cambodian Trademarks
Trademarks are ubiquitous in daily life, their purpose being to allow the public to recognize that a good or service originates from a specific company, and not from another. Without a trademark system, a business that built a good brand reputation would see a competitor adopt the same brand, selling inferior products and wreaking its reputation. Trademarks thereby promote a consistent level of quality, and are ultimately a form of consumer protection.
Trademark Classification System
In Cambodia, trademarks are registered for specific goods or services, not for every good or service conceivable. Thus, one business might have the exclusive right to use the ORANGE brand in conjunction with cars, while another has the right to it for super-markets. As cars and super-markets are not closely related, the two marks can co-exist without consumers being confused that the super-market chain is selling cars, or vice versa.
However, if another firm were to start selling trucks or motorcycles under the ORANGE brand, the car-selling trademark owner would be able to prevent that, as trucks and motorcycles are related to cars. Again, the purpose of trademarks is to prevent consumer confusion and deception.
These goods or services are grouped together in classes, under what is known as the “Nice Classification” . In registering a trademark, a startup will want to identify the classes under which its products and/or services fall, and apply for registration in these classes. The costs of obtaining the registrations will depend on the number of classes sought.
Types of Cambodian Trademarks: What is – and is not – Registerable
Cambodian trademarks, whether words or images, are typically categorized according to their distinctiveness. From least to most distinctive they are as follows:
Generic mark: The generic word, or image, for a product or service can never be registered for those goods or services. No one should have the exclusive right to label their smartphone “smartphone”, or prevent others from selling apples with a picture of an apple on the box. Generic marks are never registerable for the goods they describe. However, when a generic word or image is applied to completely unrelated products or services, it becomes an arbitrary mark and fully registerable – think of Apple for computers.
Descriptive marks: Terms or images that describe a good, service or their characteristics are generally not registerable, unless they have “acquired distinctiveness” through use. For instance, a startup might name their dating app “Meet ‘n Greet”, but if they applied for a trademark at the time of the app’s launch, it would likely be rejected because it describes the services (dating). However, if after a few years of success, consumers have come to recognize that “Meet ‘n Greet” as an app from this company, then it can show acquired distinctiveness and should be registerable.
Suggestive marks: A step further along the distinctiveness spectrum are suggestive marks – those that suggest an attribute or benefit without describing the goods themselves. Some amount of imagination, thought or perception is needed between hearing or seeing a suggestive mark, and determining what the product or service is. Microsoft for software, Grab for ride sharing, or Netflix for streaming services could all be classified as suggestive. Suggestive marks are usually registerable in Cambodia.
Arbitrary marks: These are words or images with a commonly understood meaning but used in relation to unrelated goods or services. Apple Computer, Tinder, Uber, and Amazon would all be examples. These are registerable in Cambodia.
Fanciful or coined marks: Made up words, like Xerox, Kodak or Google, had no dictionary meaning at the time of their adoption, and are inherently registerable.
Choosing and Clearing a Name and Logo
Any new business will need to choose a name for itself, likely a design to use as a logo and possibly a slogan to identify itself. Before settling on any of these, each should be cleared to make sure it can be registered and does not conflict with other marks.
The first question is whether there are any “absolute” grounds for refusal of the Cambodian trademark application. This is the case for generic and descriptive marks, as well as those that are misleading or amoral (typically profane or sexually suggestive words). If any of these apply, another mark should seriously be considered, as trademark protection will be difficult.
Second, the startup will need to consider whether there are other marks already in use that will prevent their use or registration of the mark they are considering. Problems can arise from both registered and unregistered marks, in Cambodia and abroad.
Third, before settling definitively on a choice of its Cambodian trademark, it is highly recommended to perform a full, official trademark search in Cambodia and any markets it hopes to launch in. Trademark rights are, with some exceptions, territorial – meaning that a registration in Cambodia is not valid in other countries, and vice-versa. Of course, clearing each of the name, logo and slogan in the nearly two hundred countries around the world is not financially feasible for most startups – but at least a basic search in major regional countries and intended markets outside the region is wise.
In Cambodia, a trademark search can be conducted by simply submitting a written request and payment of the official fee to the Ministry of Commerce, Department of Intellectual Property Rights (“DIPR”). The request will need to specify which trademark classes to search (see above for an explanation of the class system), and the fee is based on each class searched. In a few weeks’ time, the DIPR will issue a written report stating whether the mark is available in those classes, or whether there are any absolute or relative grounds for refusal. If the report shows it to be available, an application for the mark will in most be cases be accepted without any further issue – although the search report is not legally binding on the DIPR.
If, however, the search report indicates a ground for refusal with which one disagrees, one can still submit an application for the mark. This will most likely result in a provisional refusal on the grounds stated, which can then be appealed. The chances of success will depend on the specifics of the mark and grounds for refusal, it is recommended to consult a trademark agent on the likelihood of success before doing so.
Conducting a trademark search in other countries is a separate process, which needs to be undertaken country-by-country. In most countries, the trademark office can issue a report similar to that in Cambodia. However, in some countries (the United States for example), unregistered marks need also to be considered. A number of trademark search firms can assist in the process, as can trademark attorneys in each of the countries considered.
Registering a Cambodian Trademark
With limited exceptions, a mark needs to be registered in Cambodia in order to afford any rights. Applications can be filed in paper or, for Cambodian applicants, electronically with the Department of Intellectual Property Rights.
The application form requires the name and address of an applicant, a copy of the mark, the Nice classification (see above for explanation) and goods/services, as well as certain other information describing the mark.
For early-stage startups that have decided on a mark, but have yet to incorporate, it is possible to register the mark in the name of the founder(s), and thereafter transfer the registration to the company once it is set up. However, there is additional cost involved, as well as the risk that one of the trademark owner/founders is uncooperative and refuses to agree to the transfer. Depending on the case, it might be wiser to wait until incorporation is finalized and then apply for the mark in the name of the company.
Foreign mark applicants must be represented by a Cambodian trademark agent residing and practicing in the Kingdom of Cambodia. Local applicants, whether individuals or companies, may apply for registration themselves or hire a licensed agent. If an agent is retained, a power of attorney must be notarized by a notary public or certified by a lawyer.
Once the complete application form is submitted and the official fee of USD 40 is paid, the trademark office will issue a Notice of Filing Instruction and the mark published in the official database. If the mark is acceptable, the office will issue a second notice to the applicant informing them and requesting payment of the final official fee of USD 65. If, however, the mark is not accepted, the applicant will receive a provisional refusal. This will inform them of the reasons for refusal and offer the chance to provide further information or evidence to overcome the rejection. At the end of the process a trademark registration certificate will be issued. Assuming the application has not encountered any problems that needed resolving, the registration is typically finalized in nine to twelve months.
A mark is valid for ten years from the date of application, and can be renewed for further ten-year terms indefinitely. In the fifth year, as counted from the date of registration, an affidavit of use or non-use must be submitted. Both these due dates should be entered in a calendar that provides automatic notification, as missing the deadlines can result in the total loss of the trademark and serious problems for the startup’s brand.
Going Abroad: International Trademark Registration
Most Cambodian startups will have plans and dreams to expand abroad, so a careful clearance search and registration strategy for marks in other countries needs to be considered. As previously discussed, trademarks are territorial, meaning a Cambodian registration generally does not provide any rights in other countries, and vice versa.
In most cases, a startup will want to register their trademarks in each country where they are, or plan to do business. Some countries require an applicant to be using the mark at the time of application, whereas others (like Cambodia) follow an intent-to-use rule.
To obtain a trademark in a foreign country, there are two basic paths. The first is to file an application directly with the respective trademark office, most advisably through a local trademark lawyer or agent.
The second option is through the Cambodian trademark office and what is known as the Madrid System. The system facilitates the filing of applications in multiple countries around the globe. Rather than having to file a trademark application in each country, a startup can file a single application with the Cambodian trademark office, and then select which other countries they want to register in. This greatly simplifies and reduces the cost of the process, as more than 110 countries are part of the system. Further, businesses from Cambodia benefit from a 90% discount on certain user fees, as Cambodia is considered a least-developed country.
