PATENTS
Patent Law of Cambodia
The Law on Patents, Utility Models and Industrial Designs, enacted in 2003 as part of Cambodia’s accession to the World Trade Organization, provides inventors with a set of exclusive rights, in exchange for disclosure of their invention to the public.
The Law on Patents, Utility Models and Industrial Designs has been amended on the article 37, 38, 109 and 136 on 24 November 2017. The Law is complemented by a Prakas (Declaration) on the Procedure for the Grant of Patents and Utility Model Certificates, dated June 29, 2006.
Cambodia employs a first-to-file system, meaning that the person whose application has the earliest filing date – or, if priority is claimed, the earliest priority date – he/she is granted the patent or utility model certificate.
A patent to be patentable in Cambodia need to be
Novelty
Inventive Step
Industrial Applicability
* Computer software is patentable and Utility Model are allowed.
Patent Filing Requirements in Cambodia
- Full name, address, and nationality of applicant and inventor;
- International classification of the patent
- Priority claim information and certified copy of application, if applicable
- Patent specifications (title, description, claims, abstract, and drawings)
- Notarized Power of Attorney (POA)
- Notarized statement justifying applicant’s right
Patent Registration Process in Cambodia
Filing
Patent applications can be filed with the Department of Industrial Property of the Ministry of Industry and Handicraft (DIP/MIH).
Priority
Applications may claim priority based on an earlier national, regional or international patent application, according to the Paris Convention and the Patent Cooperation Treaty. In such case, the Department of Industrial Property will request a certified copy of the priority application, as well as any search or examination reports or foreign office actions.
Formal Examination
A formality examination will take three (3) months from the filing date.
A response for formality refusal have to be made within two (02) months from the date of notification.
The patent application form must be made in Khmer and be accompanied by a description of the invention, one or more claims, one or more drawings when necessary to understand the invention, and an abstract, and be accompanied by payment of the official fee. The descriptions must disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person having ordinary skill in the art. If the application claims a prior filing date, a certified copy of the priority application is required and must be submitted within three months from the request’s date by the Registrar. Where a certified copy of the priority documents is in a language other than Khmer, it must be translated into Khmer and be submitted to the Registrar within six months from the request. In addition, an English translation for non-English language documents is also required by the Registrar for the purpose of searching and examination, and must be submitted to the Registrar within six months from the filing date.
Substantive examination and amendments
The substantive examination should be requested at the time of filing of a patent application in Cambodia. It is possible to file a request for use of the search and examination results from the ASPEC member-country, and thus expedite the examination process.
At this stage the applicant need to provided the examination result from the international offices.
Up until the application is ready to be granted, the Patent application may be amended, so long as it does not go beyond the original disclosures. Similarly, the application may be divided into two or more applications.
The novelty grace period constitutes 12 months from the first disclosure to the filing date or the priority date, if any.
* A response for substantive refusal have to be made within five (05) months from the date of notification.
Publication
If the application is considered formality accepted, it will be published in the official Gazette in the 18th month counted from the filing date or the priority date.
There is two publication in Cambodia:
First publication (18 months from filing)
Second publication | Post - Grant (36 months from filing)
Grant
If the application is considered accepted to grant a patent, the Registrar will request the applicant to pay the grant fee within three (3) months from the date of the notification.
Remarks in document requirements
* The Department of Industrial Property will require the original notarized power of attorney (POA).
* Additionally, a notarized statement justifying the applicant’s right is required where the applicant is not an inventor of the claimed invention.
- The original notarized power of attorney, the statement justifying the applicant’s right and a certified copy of the priority application must be submitted with the application or at a later date. The Registrar will issue a letter requesting these documents within two (2) weeks of filing.
Timeframe
For patents, it takes about 2 to 3 years, approximately for registration (The faster the applicant could provide the examination result from the international offices, the faster the Registrar will proceed with resolution).
But in the practice the whole duration for the grant and publication of Patent certificate is about (32) - (48) months from the date on which the application is filed in due course
Duration
A patent is valid for 20 years from its filing date
Annuities
Patent is subject to payment of an annual maintenance fee.
Annual fees are due each year starting from the 2nd one and should be paid on each anniversary of the filing date. Payment of annual fees may still be made within 6 months from the due date, subject to the payment of a surcharge.
Utility Model
Utility Model Certificates are valid for only seven (7) years and there is no possibility for renewal.
TRADEMARKS
Trademark Law in Cambodia
Legal basis is the Law on Marks, Trade Names and Acts of Unfair Competition in force since February 2002. This was followed in 2006 by a Sub-Decree on its implementation.
Cambodia became a member of Madrid Protocol as from June 5, 2015.
Cambodia is not a member of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks. However, Cambodia applies the current edition of the Nice Classification of goods and services consisting of 45 classes for trademark registration.
Trademark protection is obtained by registration. It can also be acquired by sufficient public recognition.
Document required
Power of Attorney (POA) duly Notarized.
The notarized or certified POA can be submitted on filing or within two (2) months of the application date.
Classification
Although Cambodia is not a signatory to the Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks, nor the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks, it still FOLLOWS these two classification systems. Class headings are not acceptable, except if the nature of the goods or services is clear. If the mark consists of, or contains figurative elements, these must be described using the Vienna Classification. Similarly, when the mark consists of or contains non-English words, the transliteration and the meaning are also required.
Trademark Registration Process in Cambodia
Filing:
All trademarks are applied for and registered with the Ministry of Commerce’s Department of Intellectual Property Rights (D/IPR). The department will accept a single mark application with multiple classes, but the official filing fee must be paid for each class.
Publication:
The Registrar will issue the Acknowledgement of Filing Instruction and the mark information will be published on an online database of the D/IPR and the World Intellectual Property Organization (WIPO). Further required information and documents must be submitted thereafter.
National Opposition Period:
The opposition period is 90 days from the publication date of the registration in the Official Gazette.
Grant:
The D/IPR will issue the notice of acceptance of mark. registration when the mark application is deemed to comply with the requirements of the Trademark Law and the certificate of mark registration will be granted after the registration fee has been paid.
Timeframe
The current process for registering trademarks in Cambodia usually takes around nine (09) months to one (1) year, although longer waiting times may be encountered depending on the nature of the mark, the applicant and the Registrar. If an applicant believes they will be seriously disadvantaged due to the delay between filing and registration, they may request expedited examination. The request must be in writing and accompanied by a declaration setting forth the
reasons for the request.
Priority
For a mark application claiming a priority date under the Paris Convention, it must be made within six months from the date of the earlier application. The application must contain the name of office of priority filing, priority filing date, and application number and name of the country. A certified copy of the priority document must be submitted within three months from the date of the request by the Registrar.
Duration
Protection backdates to the day of application upon registration. A trademark registration is valid for 10 years from date of application. The registration is indefinitely renewable for periods of 10 years. The renewal mark application may be submitted to the D/IPR within six months preceding the expiry of the registration. In case the owner of the registered mark or their legal representative fails to submit the mark renewal application within six months preceding the expiry of the registration, it can still be submitted in a grace period of another six months. The registration of renewal will not be granted if the owner of the registered mark or their legal representative fails to submit the request for affidavit of use/non-use in the sixth year. In this case, the owner of the registered mark or their legal representative can submit a request for affidavit of use/non-use before or together with a renewal application. Any changes in the mark application or certificate of mark registration must be made in writing to the D/IPR. The Registrar will amend the mark application or records in the certificate of mark registration as soon as the request and other supporting documents are in order and will then issue a certificate of recordal of change. All changes will be published in an online database of the D/IPR and WIPO. Changes have no effect against third parties until they are properly recorded.
Remarks about the registration procedure in Cambodia
The application is filed at the Department of Intellectual Property Rights of the Ministry of Commerce.
Multi-class applications are not accepted in Cambodia.
The application process includes a formality examination and substantive examination.
Signs not deemed distinctive in the examination can be registered if distinctiveness has been acquired by use. Yet, the percentage to get this registration is low.
The Registrar will publish only the registered marks in the Official Gazette periodically.
Registrations under the Madrid System
Cambodia became a member of the Madrid System for the International Registration of Mark on June 5, 2015. 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 brand owner can file a single application with their national or regional IP 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. Following Cambodia’s accession to the Madrid Protocol, the Cambodian government enacted a new Prakas (Declaration) on the Procedures for the International Registration of Marks under the Madrid Protocol on November 1, 2016. The declaration sets forth procedures and documents that are required where Cambodia is an office of origin, or where Cambodia is chosen as the designated office by a contracting party.
Prohibitions on Registration
A mark cannot be validly registered if it is:
- Incapable of distinguishing the goods or services of one enterprise from those of other enterprises;
- Contrary to public order or morality or good custom;
- Likely to mislead the public or trade circles, in particular as regards the geographical origin of the goods or services concerned or their nature or characteristics;
- Identical with, or is an imitation of, or contains as an element, an armorial bearing, flag and other emblem, a name or abbreviation or initials of the name of, or official sign or hallmark adopted by, any State, intergovernmental organization or organization created by an international convention, unless authorized by the competent authority of that State or organization;
- Identical with, or confusingly similar to, or constitutes a translation of a mark or trade name which is well known in the Kingdom of Cambodia for identical or similar goods or services of another enterprise;
- Identical with, or confusingly similar to, or constitutes a translation of a mark or trade name which is well-known and registered in the Kingdom of Cambodia for goods or services which are not identical or similar to those in respect of which registration is applied for, provided that use of the mark in relation to those goods or services would indicate a connection between those goods or services and the owner of the well-known mark such that the interests of the owner of the well-known mark are likely to be damaged by such use; or
- Identical with a mark belonging to a different proprietor and already on the Register, or with an earlier filing or priority date, in respect of the same goods or services or closely related goods or services, or if it so nearly resembles such a mark as to be likely to deceive or cause confusion.
Official Actions
Should the application not comply with one of these points, the D/IPR will issue a notification of provisional refusal of mark registration. The applicant or appointed agent has to reply to D/IPR within 60 days. Another 45 days will be given, upon the request for extension of time. If the D/IPR does not receive a response within this period, the mark application will be lapsed and the application fee will not be refunded.
Maintaining a Mark / Declaration of Use or Non-use
In order to maintain or renew the registration, the request for endorsement of affidavit of use or non-use must be submitted to the D/IPR within one year following the fifth anniversary of the date of registration of the mark, or the date of registration of renewal when the registered mark has been renewed. The Registrar will remove the registered mark from the registry if the owner or their legal representative fails to comply with this provision.
In current practice however, the Registrar rarely removes a mark from the registry on their own initiative, but it may be a ground for cancellation if a third party submits a request.
The minimum requirements for filing a request for endorsement of affidavit of use/non-use are an original/duplicate mark registration certificate and an original signed affidavit of use/non-use form. Only the original mark certificate/duplicate mark certificate issued by the D/IPR is acceptable. The process for recordal of affidavit of use/non-use takes approximately four to five months to be completed.
Opposition
As soon as an application is granted, the Registrar will publish the registration in the Official Gazette and update the status of the mark on the online database of the D/IPR and WIPO. Any interested person may file a notice of opposition, along with supporting evidence to the Registrar and payment of the official fee, within 90 days from the date of publication. A notarized POA is required for opposition.
Under the Trademark Law of Cambodia, the grounds for opposition are:
- The registration does not satisfy the definition of a mark as “any visible sign capable of distinguishing the goods or services of an enterprise.”
- Incapable of distinguishing the goods or services of one enterprise from those of other enterprises;
- Contrary to public order or morality or good custom;
- Likely to mislead the public or trade circles, in particular as regards the geographical origin of the goods or services concerned or their nature or characteristics;
- Identical with, or is an imitation of, or contains as an element, an armorial bearing, flag and other emblem, a name or abbreviation or initials of the name of, or official sign or hallmark adopted by, any State, intergovernmental organization or organization created by an international convention, unless authorized by the competent authority of that State or organization;
- Identical with, or confusingly similar to, or constitutes a translation of a mark or trade name which is well known in the Kingdom of Cambodia for identical or similar goods or services of another enterprise;
- Identical with, or confusingly similar to, or constitutes a translation of a mark or trade name which is well-known and registered in the Kingdom of Cambodia for goods or services which are not identical or similar to those in respect of which registration is applied for, provided that use of the mark in relation to those goods or services would indicate a connection between those goods or services and the owner of the well-known mark such that the interests of the owner of the well-known mark are likely to be damaged by such use; or30
- Identical with a mark belonging to a different proprietor and already on the Register, or with an earlier filing or priority date, in respect of the same goods or services or closely related goods or services, or if it so nearly resembles such a mark as to be likely to deceive or cause confusion.
- The application did not comply with the procedural requirements of the Registrar, including payment of the official fees.
Under current practice, the Registrar allows the applicant to file a counter statement within 45 days from the receipt of the notice of opposition. If the applicant does not submit a counter statement or does not take any actions within 45 days, they are deemed to abandon the registration. A hearing may be held upon the request from either party.
The D/IPR may invalidate, remove or cancel a registered mark from the Registry if one or more requirements of Articles 2, 4, 10, 13, 14 and 15 of the Trademark Law are not fulfilled.
Cancellation
The D/IPR has the right to cancel a registered mark on the following conditions:
- The applicant does not apply for renewal of the registered mark within the period prescribed;
- The registered owner requests the removal;
- The registered owner has not complied, within 90 days, with the conditions or restrictions prescribed under Article 8;
- The registered owner ceases to have an address for service in the Kingdom of Cambodia;
- It is convinced upon evidence that the registered owner is not the legitimate owner;
- It is convinced that the registered mark is similar or identical to a well-known mark owned by a third party.
Although the Trademark Law allows the D/IPR to cancel a registered mark on the above conditions on its own initiative, an interested person can also use those conditions as grounds for a cancellation request. One or more conditions as provided above must be included in a request for cancellation or a notice of cancellation of the D/IPR.