Skip to content
English
お問い合わせ

Cambodian trademark system overview

Picture of 弁理士 杉浦健文

Trademark application procedure

When filing a trademark application in Cambodia, you must first appoint a local agent. If an applicant for a foreign company does not have an address or residence in Japan, the applicant must go through the procedures through a local agent (patent attorney, etc.). Applications can be filed in English or Khmer, and are submitted by attaching trademark samples and a list of goods and services (categorization based on the Nice Classification) to the application (in the prescribed format). Actual use of the trademark is not required at the time of application, and no proof of use is required.

Required documents: The main documents required for trademark application are as follows:

  • Application form (prescribed format)

  • Details of goods and services and their classification (Nice classification classes)

  • Representation of the mark (trademark sample/Representation of the mark)

  • Power of attorney (if applying through an agent). *Certification by a notary public is required. You may submit a copy at the time of application, but the original must be submitted within two months from the application date.

  • Priority certificate if priority is claimed (submitted at time of application, photocopy acceptable). *The original and its English translation must be submitted within 3 months from the application date.

Application Procedures and Fees: For trademarks, it is possible to specify multiple categories in one application (multi-category application system). Previously, a separate application was required for each category, but from August 1, 2023, the system will be unified to cover multiple categories with one application. Applications are filed with the Cambodian Intellectual Property Department (DIPR, under the jurisdiction of the Ministry of Commerce), and as the electronic filing system is limited, most applications are submitted in writing through an agent. Official fees include an application fee of US$125, a registration fee of US$65 at the time of registration, and a renewal fee of US$75. In addition, there will be a government gazette publication fee (the cost of publishing the application in the government gazette when it is approved), and fees for filing an opposition or requesting cancellation, etc., as described below. For example,the government fee for filing an opposition is approximately US$20, and for requesting cancellation is approximately US$75.

Examination flow: After filing, a formality examination is first conducted to check for any document deficiencies or omissions in prescribed matters. After that, the process moves to substantive examination, where it is examined whether it can be registered as a trademark. In the substantive examination, it is determined whether the registration requirements under the Trademark Act (such as presence or absence of distinctiveness and applicability of reasons for non-registration) are met. If the examiner decides to approve the registration, the application information will be published in the Official Gazette and you will be given an opportunity to file an opposition. If no opposition is filed within a specified period (within 90 days) of public notice, or if the opposition is dismissed, a registration certificate will be issued after payment of the trademark registration fee. The standard time required from application to completion of registration (receipt of certificate) is approximately 3 to 7 months. This is a relatively short period of time, and if the review goes smoothly, registration can be obtained within six months.

Registration requirements and protection targets

Trademarks to be protected: Under the Cambodian Trademark Law, a "trademark" is a visual sign that distinguishes the goods or services of one company from others. Therefore, visually recognizable marks such as letters, figures, logos, and combined trademarks are eligible for protection. On the other hand, olfactory (smell) trademarks, sound trademarks, and taste (flavor) trademarks are not included in the scope of protection and cannot be registered. Furthermore, under current law, collective trademarks (joint trademarks used by members of an organization) are permitted, but 3-dimensional trademarks (3D trademarks), certification trademarks, and the system of associated trademarks and series trademarks that previously existed in Japan have not been established. Therefore, it is important to note that trademarks consisting only of three-dimensional shapes and quality certification marks cannot be registered in Cambodia.

Registration requirements and distinctiveness: In order to be registered as a trademark, it is necessary to be able to distinguish one's own goods and services from others (distinctiveness). Generic names or descriptive marks that cannot be distinguished from other companies' products or services cannot be registered. Specifically, trademarks that lack distinctiveness, such as the common name of a product or words that directly indicate quality, origin, etc., are grounds for non-registration. In addition, registration of marks that violate public order and morals (for example, trademarks that violate social ethics) or that may mislead consumers about the quality or origin of the product is prohibited.

Marks prohibited from registration (grounds for non-registration): Article 4 of the Cambodian Trademark Law stipulates that the following trademarks cannot be registered:

  • Lack of distinctiveness: As mentioned above, marks that cannot distinguish one's own products or services from others cannot be registered.

  • Violation of public order and morals: Marks that violate public order and morals or good customs cannot be registered.

  • Risk of misidentification of source: Marks that are likely to mislead the general public or industry personnel regarding the origin, quality, efficacy, etc. of goods or services cannot be registered.

  • Unauthorized use of official marks: Trademarks that are identical or confusingly similar to official marks, such as national flags, national emblems, emblems, emblems, flags, names or abbreviations of national governments or international organizations, cannot be registered without permission from the competent authority.

  • Creating confusion with another person's well-known/famous trademark: Trademarks that are identical or confusingly similar to well-known (well-known/famous) trademarks or trade names in Cambodia, or marks that are translations of trademarks, cannot be registered for products or services of other companies. Eligible well-known trademarks include not only well-known trademarks of others that are used for same or similar goods or services to the applied trademark, but also dissimilar goods or services in cases where the interests of the owner of the well-known trademark may be harmed (if there is a risk of dilution of the well-known trademark).

  • Conflict with earlier application/registered trademark: Registration will also be refused if the applied trademark is identical or confusingly similar to a trademark that has already been registered by someone else or has been applied for earlier (including priority date). Targets include earlier-filed and earlier-registered trademarks for identical or closely related products and services. This is a sign that Cambodia has adopted afirst-to-file system, in which the person who files the application first obtains the trademark right. However, applications made in bad faith that imitate someone else's well-known trademark at the time of application may be rejected or invalidated.

If any of the above reasons for non-registration are met, a notice of refusal will be issued at the examination stage, and the applicant will be given an opportunity to respond with a written opinion, etc. within 60 days after receiving the notice (a 45-day extension is possible if there is a valid reason). If there is no response within the period, the application will be deemed abandoned (rejected).

Trademark validity period, renewal system, opposition/cancellation system

Registration Validity Period: The term of validity (expiration date) of a trademark registration in Cambodia is 10 years from the filing date. Please note that these 10 years are calculated from the application date, not from the date of registration or the date of registration. Trademark owners can renew their trademarks as many times as they wish within 10 years by completing the renewal process before the expiration date. It is recommended that you apply for renewal from six months before the expiry date of your registration until the expiration date. Even if you forget to renew your registration and the deadline has passed, there is a grace period of six months after the expiration date, during which time you can renew by paying an additional late fee.

Renewal procedures and oath of use: At the time of renewal, the prescribed renewal fee will be paid and the registration certificate will be rewritten. It should be noted that as a system unique to Cambodia, a usage report (declaration) is required five years after registration. Specifically, you must submit an affidavit of use or non-use to the Department of Intellectual Property (DIPR) stating that you are "using" or "currently not using the registered trademark, but there is a legitimate reason for not using it" within one year from five to six years after the initial registration date. Similarly, if you renew, you will need to submit the declaration again 5th to 6th year after the renewal date. This declaration must be signed by the trademark owner and notarized, and must be submitted along with a copy of the registration certificate. The new notification (Ministerial Ordinance No. 2652) in August 2023 has made this use oath system stricter, and it is now more strictly required to submit it within the deadline. Please note that if you do not submit this declaration, your registered trademark may be canceled (subject to cancellation). In practice, it is rare for the Intellectual Property Office to carry out cancellation disposition on its own authority, but if there is a complaint from a third party, non-use may be grounds for cancellation.

Opposition system: In Cambodia, there is no mechanism for a third party to express their opinion at the examination stage, and once a trademark has passed the examination, a period for filing an opposition by publication in the official gazette is established. Anyone canopposethe trademark registration within90 days from the date of publication of the application. If an opposition is filed, the trademark registration process will be temporarily suspended. The opponent submits a document and evidence explaining the reasons for the opposition in detail to the other party (applicant) and the Intellectual Property Office. The applicant must submit reasons and evidence rebutting the objection within 90 days from the date of the notice of objection. If no counterargument is filed within this time limit, the application may be considered abandoned. The Intellectual Property Office will make a decision on the objection based on the arguments and evidence of both parties. If the opposition is upheld, the application will be rejected; if the opposition is rejected, the registration process will be restarted. Parties who are dissatisfied with the final decision may file an appeal (appeal) to the Ministry of Commerce's Appellate Body or court within 30 or 90 days (depending on the case) from the date of the decision.

Cancellation/invalidation trial system: Even after a registration decision has been made, there is a procedure to cancel (invalidate) a trademark registration if certain reasons apply.

  • Cancellation for non-use: If a trademark has not been used for 5 consecutive years without justifiable reason, any person canapply to the Intellectual Property Office for cancellation of the registered trademark. However, the trademark owner can defend against a request for cancellation by proving that ``use was prevented due to special circumstances'' or ``there was no intention not to use or abandon the trademark.'' For example, if there are circumstances such as import restrictions or natural disasters that prevent the product from being put on the market, cancellation may not be permitted even if the product is not used. In this way, the hurdle for non-use cancellation is high, and unless the right holder has the intention to waive it, it is not easily granted.

  • Registration invalidation (dispute): Within a certain period of time after registration, it is possible to request an invalidation trial (dispute) to invalidate the rights retroactively to the time of registration. In Cambodia, an interested party can apply to the Intellectual Property Office for invalidation of a trademark registration within 5 years after registration. Reasons for invalidation include cases such as ``the trademark in question was not subject to protection as a trademark (it was outside the definition of a trademark)'' and ``the trademark did not meet the registration requirements (lack of distinctiveness, infringing on another's trademark, etc.).'' The Intellectual Property Office conducts an invalidation hearing and makes a decision, but any party who is dissatisfied with the decision can file a lawsuit with the Trial and Appeal Board within the Ministry of Commerce or the competent court within three months from the date of the decision.

  • Cancellation ex officio or for specific reasons: In addition to the above requests, the Trademark Law also provides for the authority of the Minister of Commerce (Ministry of Commerce) to cancel registration ex officio. For example, ``if an application for renewal is not made within the renewal deadline'', ``if the right holder requests cancellation of the registration'', ``if the registration conditions or restrictions are not complied with (such as when conditions are attached to the designated product or manner of use)'', ``if the right holder is unable to deliver within Cambodia.'' The Ministry of Commerce can order the cancellation of a registration in cases such as when a registered trademark no longer has an address, when it is proven that the current right holder is not the true owner, or when it is confirmed that the registered trademark is similar or identical to a well-known trademark owned by a third party. These provisions mainly deal with changes in circumstances after registration or defects in rights, but it is rare for them to actually be revoked ex officio. In many cases, cancellation or invalidation is finalized after a petition from an interested party or a court decision.

Trademark enforcement (dealing with infringement)

There are four main approaches to dealing with trademark infringement in Cambodia: Administrative measures (responses by administrative authorities), Civil litigation, Criminal prosecution, and Border measures at customs. Below is an overview of each.

  1. Administrative means (Preliminary Alternative Dispute Resolution/PADR): Cambodia has developed a system in which administrative authorities intervene to arbitrate and mediate disputes over intellectual property rights. The trademark owner files an infringement complaint with the Intellectual Property Division (Department of Commerce's Division of Intellectual Property, or DIPR), and the bureau's dispute resolution division requests the infringer to appear and mediates settlement negotiations. Although this procedure is informal, it is relatively transparent and inexpensive (approximately 80,000 riel = approximately $20 in filing fees), so it is widely used. DIPR staff will act asarbitratorsand advise the infringer to come to variousagreements, such as discontinuing sales, destroying or handing over inventory, and submitting pledges to prevent recurrence. If an agreement is reached, a settlement agreement will be signed and the dispute will be resolved unless the infringer violates the agreement. Although this administrative measure does not have the power to directly impose coercive measures such as fines and seizures, receiving a summons from the administrative authorities has the effect of putting psychological pressure on infringers, and in fact, most infringers respond to the summons and participate in negotiations. If a solution cannot be reached through negotiation, or if the infringer continues to ignore negotiations, we will move to other means (civil and criminal) based on the evidence we have collected. Additionally, Cambodia has an intellectual property enforcement agency called the Counter Counterfeits Committee of Cambodia (CCCC), and it is also considered effective to file a complaint with this committee as an administrative means. The CCCC is a joint team of various ministries and agencies that can seize infringing goods and carry out on-site enforcement (search and evidence collection)** if necessary, so you can expect a quick and effective response.

  2. Civil measures (civil action): Trademark owners can sue infringers in civil court and seek injunctions (injunctions) and damages. Cambodian courts do not have specialized intellectual property departments or commercial courts, but it is possible to seek remedies for trademark infringement through normal civil litigation procedures. In a civil lawsuit, you can obtain a preliminary injunction at an early stage to stop the infringing act, and you can also claim compensation for the damage you have suffered (financial damage, damage to your reputation, etc.). However, it is said that the Cambodian court system is difficult to predict the outcome of a judgment, and litigation costs and time are required, so it is common to first seek a solution through the aforementioned administrative means, and if that is not sufficient, proceed with civil litigation.

  3. Criminal Measures (Criminal Prosecution): In cases of malicious trademark infringement (for example, intentionally manufacturing and selling counterfeit branded products), criminal penalties may be imposed. The Trademark Act and related laws provide forfines and/or imprisonmentfor those who infringe on trademark rights or copyrights. For example, if you are involved in exporting or importing pirated (counterfeit) goods, you may be subject to a fine of 2 million to 10 million riel (approximately US$500 to 2,500), 6 to 12 months in prison, or both. In order to proceed with criminal proceedings, the rights holder must file a complaint with the police authorities, and after an investigation, the public prosecutor must file charges. If found guilty, the infringer will be subject to the penalties listed above, as well as being ordered to confiscate and destroy the infringing goods. In criminal proceedings in Cambodia, the right holder who is the victim can also seek compensation for damages at the same time (ancillary civil action), so criminal prosecution has the advantage of being able to stop infringement and recover damages all at once. However, since criminal prosecution is carried out by the state, the hurdles for evidence collection and proof are high, and the police may not act on minor violations. In practice, the strategy is to first issue a warning through administrative means, and then use this as a deterrent by showing that criminals are willing to take action against repeat criminals.

  4. Customs Border Measures: In Cambodia, within the framework of intellectual property law, Customs has a system for interdicting the import of counterfeit goods. Trademark rights holders can file a petition with the customs authorities to request a temporary suspension of the import and export of goods that are suspected of infringing their trademark rights. If the petition is approved, Customs will monitor and suspend the clearance of goods using the rights holder's trademark without permission forup to 60 days from receipt of the petition. If importation of the subject product is detected during the period, customs will immediately suspend customs clearance procedures and notify the rights holder accordingly. The right holder (petitioner) must take the following measures within 10 business days after receiving the notice, such as obtaining a court injunction to make the injunction more serious and filing an infringement lawsuit (10-day extension possible if there is a justifiable reason). If the product does not proceed to judicial proceedings within this period, the customs office will release the reservation and allow the product to clear customs. Border measures can prevent domestic distribution of counterfeit products, but for the system to work, trademark rights holders must monitor the market and collect customs clearance information.

As mentioned above, trademark rights can be enforced in Cambodia through administrative (mediation), civil, criminal, and customs routes. Administrative measures, in particular, are locally established practices and are preferred asquick and cost-effective methods. It would be a good idea to consider exercising your rights by combining appropriate means depending on the nature of the infringement and the maliciousness of the other party.

International application system (Madrid Protocol)

Cambodia is a member of the Madrid Protocol, an international trademark registration system. The Protocol was accepted on June 5, 2015, and from the same year it became possible to file international trademark applications with Cambodia as a designated country through the Madrid System. Therefore, if you apply for and register a trademark in another member country, such as Japan, and then designate Cambodiaby filing a Madrid application, you can seek trademark protection without having to file directly locally. When Cambodia is designated in an international registration application, the designated currency (services) will be examined by the Cambodian Intellectual Property Department (DIPR) based on the trademark law of the country. The examination period is generally 12 to 18 months, and if there are no reasons for refusal, you will be notified of the refusal, and the international registration will have the same effect as a registration in Cambodia. On the other hand, if there are reasons for refusal, a notification of refusal will be sent via the international registration, and the applicant will have to respond by submitting a written opinion through a local agent.

In order to operate the Madrid System, the Cambodian government established the "New Prakas (Ordinance) on International Registration Procedures for Marks Based on the Madrid Protocol" in November 2016, and established procedures for the country of origin and designated country procedures. This domestic regulation stipulates the requirements for filing an international application with Cambodia as the country of origin and the handling of internationally registered trademarks in Cambodia (for example, the application of the obligation to submit a declaration of use locally). In addition, Internationally registered trademarks with Cambodia as a designated country are also subject to submission of declaration of use/non-use5 years after registrationand renewal procedures, just like direct applications. Even if you obtain rights through an international application, please be aware that if you neglect these domestic requirements, your rights may be lost.

Practical points to note/Cambodian-specific system

Finally, we will summarize practical points when acquiring and maintaining trademarks in Cambodia, as well as the country's unique system.

  • First-to-file system and the importance of early filing: Cambodia has adopted a first-to-file system, and as a general rule, the person who files first obtains the rights. Although there is a certain degree of protection based on prior use (such as protection of well-known indications under the Unfair Competition Prevention Act) as in Japan, trademark rights themselves do not arise unless they are registered. It is important for brands planning to expand locally to apply as soon as possible to prevent trademark trawls from being preempted by others. Additionally, if your company's trademark has been fraudulently applied for or registered by a third party, prevention is of paramount importance, as seeking cancellation or invalidation requires high hurdles such as proof of celebrity and proof of bad faith.

  • Local agent/language requirements: As mentioned above, if a foreign company applies directly to Cambodia, it is essential to appoint a local agent and submit a power of attorney. The power of attorney must be certified by a notary public, so in the case of Japanese companies, it takes time and effort to prepare an English power of attorney document that has to be certified by a notary public in Japan and confirmed by the Cambodian embassy before being sent to a local agent. For this reason, we recommend that you leave plenty of time in your application schedule and contact your agent early to prepare the documents. Additionally, applications can be submitted in English, which is a relatively low hurdle for Japanese companies (translation into Khmer is not required; however, registration certificates will be issued in Khmer). In order to avoid document deficiencies, it is a good idea to use the English notation of the International Classification (Nice Classification) when displaying goods and services, and to check with your agent about the expressions commonly used locally.

  • Fifth year use oath system: As a unique system in Cambodia, there is a use declaration every five years. Failure to comply with this procedure will result in the registration being canceled in the worst case scenario, so Japanese companies must also remember to comply with this procedure. While in other countries, usage history is often only asked at the time of renewal (every 10 years), Cambodia is unique in that confirmation is also required at intermediate points. Particularly in cases where there is no local subsidiary or agency and the trademark is being licensed from Japan, be sure to manage deadlines through the local agent, and be careful to promptly submit the declaration as the deadline approaches.

  • Scope of protected trademarks: In Cambodia, only visually recognizable marks can be registered as trademarks, non-visual trademarks such as sounds and smells cannot be registered. Additionally, new types of trademarks that have recently become recognized in Japan, such as 3D trademarks, trademarks consisting only of colors, and hologram trademarks, are not envisaged under Cambodian law. Even if you rely on three-dimensional packaging or color discrimination for your brand strategy, it is difficult to protect it alone in Cambodia, so it is necessary to register the trademark in combination with a logo or name.

  • Protection of well-known and well-known trademarks: Cambodia is a party to the Paris Convention, which provides certain protection to unregistered well-known trademarks. However, proving that the trademark is well known is not easy, and in practice it is recommended to first register the trademark in your own country. Even if the trademark has been registered by someone else first, it can be invalidated if it can be proven that the trademark is a well-known brand of the company, but this requires a wealth of evidence such as advertising and sales records in the local market. It is important to note that even if a brand is famous only in Japan, it is difficult to recognize it as a well-known trademark if it is not recognized in Cambodia.

  • Counterfeit products countermeasures and enforcement: Counterfeit products of foreign brands may also be distributed in the Cambodian market. In particular, it has been pointed out that there is an influx of trademarks from Thailand and Vietnam, which share borders, so after acquiring trademark rights locally, please consider recording the draft (record registration) with customs. By registering your trademark with customs, you can have it subject to import monitoring. It is also effective to utilize the CCCC (Counterfeit Countermeasures Committee)** mentioned above. If you discover infringing products through market reconnaissance and trial purchases in collaboration with local agents and research companies, you can promptly file a complaint with the government authorities and expect an injunction or collection of evidence through unannounced inspections. The Cambodian authorities are also focusing on protecting intellectual property rights, and in recent years have made progress in legal reforms and personnel training. However, there are limitations, such as the lack of specialized intellectual property divisions in courts, so it is realistic to respond quickly through administrative channels as an initial response, and to combine criminal and civil measures as necessary.

  • Official information source/contact: Finally, the official source of information regarding the Cambodian trademark system is the official website of the Cambodian Ministry of Commerce, Department of Intellectual Property (DIPR), which has jurisdiction over trademarks. Application forms, procedure guidance, trademark database searches (also participating in ASEAN TMview), etc. are provided. In addition, WIPO's "Madrid Member Profiles" discloses points to keep in mind when designating Cambodia as a designated country. The local laws and regulations themselves consist of the ``Act on Trademarks, Trade Names, and Unfair Competition Activities'' enacted in 2002 and implementing regulations (Cabinet Orders, etc.), and English translations are available for viewing on WIPO Lex, etc. If you have any questions regarding practical matters, we recommend checking with a local intellectual property lawyer or patent agent.

As mentioned above, although the basic framework of the Cambodian trademark system has many parts in common with Japan and other ASEAN countries, there are also unique rules, such as the 5-year declaration of use and the recently introduced multi-class application obligation. As a foreign company, please follow the latest practical trends, check official information, and carry out appropriate procedures for acquiring and maintaining rights.

Reference materials/information sources:

  • Cambodia Trademark Law (2002 Act) English translation text

  • Intellectual property information data bank for emerging countries, etc. “Overview of the trademark application system in Cambodia”

  • Ariake International Patent Office "Cambodian Trademark System" (2023 revised edition)

  • BLJ Law Office Makoto Endo “Intellectual Property Law in Cambodia” Essay

  • KENFOX Law Office “Trademark-related matters in Cambodia”

  • Tilleke & Gibbins Law Firm Insight article “Administrative Proceedings to Resolve Trademark Infringement in Cambodia”

  • Other public information on JETRO, WIPO, etc. (status of participation in the Madrid Protocol, etc.)

 

Takefumi SUGIURA, Patent Attorney

AUTHOR

Takefumi SUGIURA （杉浦 健文）

EVORIX Intellectual Property Law Firm　Managing Patent Attorney

Supports clients across IT, manufacturing, startups, fashion, and medical industries, covering patent, trademark, design, and copyright filings through trials and infringement litigation. Specialized in IP strategy for AI, IoT, Web3, and FinTech. Member of the Japan Patent Attorneys Association (JPAA), Asian Patent Attorneys Association (APAA), and Japan Trademark Association (JTA).