While Cambodia’s accession to the World Trade Organisation (“WTO”) in September 2004 brought with it obligations to implement a number of intellectual property (“IP”) related laws and regulations, the application, registration and enforcement mechanisms, while strengthening year on year, remain relatively nascent in comparison with more developed IP protection regimes in Europe and elsewhere. Recently, Cambodian authorities dealing with patents, copyright, design rights and trademarks, in conjunction with attendees from the European Patent Office and the Office of Harmonization for the Internal Market (“OHIM”), have indicated a pro-active approach to strengthening intellectual property rights (“IPR”) protection in Cambodia. The laws implemented to date in relation to IPR protection include the Law on Trade Marks, Trade Names, and Acts of Unfair Competition (2002) (“Trade Mark Law”); the Law on Patents, Utility Model Certificates and Industrial Designs (2003) (“Patent Law”); the Law on Copyright and Related Rights (2003); and the Law on Management of Seeds and Breeders’ Rights (2008). In addition to these laws, the Royal Government of Cambodia has also recently issued sub-decrees and regulations for implementing these laws such as the Sub-Decree on Implementation of the Law on Trade Marks, Trade Names, and Acts of Unfair Competition (2006); the Prakas on Procedures for Granting Patents and Utility Model Certificates (2006); and the Prakas on Procedures for Registration of Industrial Designs (2006). The recently implemented Law on Geographical Indications of Goods (2014) and the number of products granted such protection thus far is yet another indication of Cambodia’s commitment to providing robust protection to IPR holders.
In Cambodia, patent registration is effected by the filing of a patent application to the Ministry of Industry and Handicraft (“MIH”) and must consist of the application form, description, claims drawings (if applicable), abstract, information concerning any previous international registrations and evidence of such prior registrations. As in many jurisdictions, an invention is patentable only if it is new, involves an inventive step and is industrially applicable. While official timelines for actions to be performed by the applicant or the patent examiner are stipulated in the Patent Law and applicable regulation, these are generally extendable at the discretion of the MIH. In practice, and while no patents have yet been granted in Cambodia, it will take around 54 months for issuance of a patent from the date of application. The fact that the application forms must be translated into the national language of Cambodia (Khmer) also contributes to this lengthy approval process timeline. During the patent prosecution process, the MIH undertakes two examinations: a formalities examination and a substantive examination. The former is to ensure whether or not the application satisfies the requirements of the Patent Law, while the latter is to ensure that all substantive requirements have been satisfied by the applicant. The patent application must disclose the invention in such a way as to be sufficiently clear and complete for the invention claimed to be carried out by a person skilled in the art, and the description must indicate the best mode known to the applicant for carrying out the invention claimed. Given that Cambodia is a signatory to the Paris Convention for the Protection of Intellectual Property, and, to date, all pending patent applications in Cambodia have claimed priority from a foreign patent (as of 2013 there were 75 pending applications), there is arguably great reliance placed on the search and examination reports from the country from which priority is claimed.
While the present patent registration system in Cambodia arguably does not appear to meet international standards, the trade mark system for application, registration and enforcement is much more developed, and has been used extensively. Prior to application, a search is usually undertaken to ascertain whether or not a trademark can be registered before the application is filed (i.e. to determine whether there are any identical or confusingly similar marks and whether the mark is capable of registration). The application for a trademark search must be submitted to the Department of Intellectual Property Rights of the Ministry of Commerce (“DIPR”). Normally, the DIPR will respond in writing stating the result of the search within 50 to 60 working days following receipt of the application. In order to file an application for a trademark search, the applicant must provide a specimen of the trademark, classification and information regarding previous registrations in other jurisdictions, if any.
In summary, once an application has been filed with the DIPR, the trademark will be registered if it satisfies two basic requirements: (i) it must be distinctive, capable of distinguishing the products or services of one person (natural or legal) from those of another; and (ii) it must not fall into and of the categories excluded under Article 4 of the Trade Mark Law (e.g. if the mark is commonly used in the particular field of trade, if it is identical or confusingly similar to an earlier mark, if it is descriptive of the goods/services to which it relates or is contrary to morality, public order or custom).
The regulations and common practices governing the processes of applying for patents, trademarks, copyrights, and the like, are subject to further change and refinement as Cambodia continues to develop its regulatory framework in this area.