We reviewed two recent announcements from the Cambodian Trademark Office to assess their impact on brand owners.
Changes in how affidavits are filed
According to the provisions of the Trademarks, Business Names and Unfair Competition Practices Act (˂Cambodia Trademark Law˃), submitting an “Affidavit of Use or Non-use of a Trademark” is not only a necessary condition for trademark registration, but also a key procedure for completing registration renewal .
On August 11, 2023, the Cambodian Ministry of Intellectual Property issued an official announcement, Announcement No. 2652 (the “Announcement”), changing the practice of submitting an affidavit of use or non-use of a trademark. The announcement stipulates that late-submitted affidavits of use or non-use will not be accepted; it is worth noting that this provision will take effect immediately from the date of the announcement (i.e. August 11, 2023). The reason for the change is to fully comply with the provisions of the Cambodian Trademark Law.
According to Article 21 of the Subsidiary Decree on the Implementation of the Trademark Law of Cambodia, the registered trademark owner must submit an affidavit of use or non-use of the trademark within one year from the fifth anniversary of the trademark registration or renewal. Otherwise, the registered trademark will be removed from the register.
Recalling the practice before the issuance of the Announcement, the Intellectual Property Department can accept a late submission of an affidavit as long as the affidavit is formally submitted no later than the registration renewal date.
This actually means that if the affidavit is not submitted within the aforementioned time limit, the trademark owner will face multiple risks, including: (1) the registration will become invalid; (2) the registration will not be renewed.
Since the Announcement will be implemented immediately and some issues are still unclear (including whether there is a grace period for late submissions, whether late submissions require a fine, and whether there is a transition period for immediate submission of overdue affidavits), the Intellectual Property Office needs to start relevant discussions , to clarify these issues.
We will continue to share clarification on these matters, but in the meantime, we recommend that companies and trademark owners submit affidavits as soon as possible to keep their registrations valid.
Changes in the rules for single-bid, multi-category applications
Another “Announcement” issued by the Ministry of Intellectual Property (i.e., Announcement No. 2501, issued on August 1, 2023) stipulates that “when applying for registration of the same trademark in one or more categories, the applicant should only use One application form.” In other words, (a registration application for multiple categories with one mark is split into several) single-category applications will no longer be allowed.
This change in application format requirements is intended to reduce paperwork at the Intellectual Property Department and streamline the registration process. This change will take effect from the date of announcement, that is, August 1, 2023.
If you have any questions about these two new announcements, please contact our trademark team in Cambodia and we will be happy to assist you: TMGCambodia@rouse.com .
For further information, please contact:
Sreymom Mao, Rouse
sreymao@rouse.com
