Trademark Basics
To virtually any business, trademarks are a core asset. Without them, firms and consumers would have great difficulty differentiating one producer’s good or service from a competitor’s.
Trademarks provide their owners the right to prevent rivals from using identical or confusingly similar identifying marks and trade names on their goods and services. The Law on Marks, Trade Names and Acts of Unfair Competition (2002) lists the steps for registering a trademark and the scope of protection.
This article answers common questions regarding trademark basics, the registration process, timing matters, and enforcement in Cambodia. For more specific information, the reader is directed to our report on Trademarks in Cambodia.
What is a trademark or servicemark?
A trademark is a word, name, symbol or device which indicate the source of goods and distinguish them from the goods of others. A servicemark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product.
What is the difference between patent, trademark, and copyright protection?
These are the three main forms of intellectual property. Patents protect technological inventions. Copyrights cover creative literary, scientific, artistic, and musical works. Trademarks indicate the source of a good or service. A single product can be protected by multiple patents, copyrights, and trademarks at the same time. A well defined IP strategy will consider how these three regimes can work together to protect a firm’s value.
What do the symbols ®, TM, and SM mean?
The ® (commonly pronounced “R-in-a-circle” or “Circle-R”) indicates to the public that the mark is registered. This notice can be used only with registered marks. Use of a ® with any unregistered trademark may result in claims of fraud.
A “TM” usually indicates an unregistered trademark for goods. It is an informal notice that there is a public claim to a trademark. SM is the equivalent indicator for servicemarks.
Do I have to register my trademark?
No, but you won’t get the full protection of the law unless you register. Unregistered tradenames and well-known marks are protected by law, and certain uses of unregistered trademarks could be illegal unfair competition. Nevertheless, registration is an obvious choice for companies doing business here, as it strengthens and simplifies the process of asserting one’s rights.
How do I register my trademark?
Trademarks are registered with the Cambodian Ministry of Commerce’s Department of Intellectual Property. The process begins with the filing of an application form, along with a power of attorney, business license, copies of the mark, and any information regarding previous filings in other countries. Once the Ministry is convinced that the mark should be registered, it will issue a Certificate of Registration.
Do I need an attorney to file a trademark application?
If you permanently reside or have your principal place of business outside of Cambodia, you will need a local agent to file the application for you. It is highly advisable that this agent be an attorney experienced in trademark law and procedures.
How do I know if I can register my company or product name as a trademark?
The best way to know is to seek a trademark attorney’s professional opinion. The attorney would compare the proposed mark to already registered marks, as well as other potential registration problems, and give an opinion as to the likelihood of registration.
How much does it cost to register a trademark?
The official registration fees are US$180 per mark, per class, plus professional fees for the attorney’s time. There are also ongoing expenses, such as registering renewals, which require periodic attention.
How long does it take for a mark to be registered?
Unless the application presents unusual difficulties, the process takes about four months from filing to issuance of the Certificate of Registration.
How long does a trademark registration last?
The initial registration is valid for ten years from the date of filing. So long as the trademark owner continues to use the mark, it can be renewed for subsequent ten-year terms indefinitely.
Do I need to use a mark before registering it?
No, the registrant is not required to be using the mark when filing an application. In fact, it is often a smart idea to immediately register marks you intend to use in the future. However, five years after the owner stops using a mark, the registration risks being cancelled.
Enforcing Your Rights
What can I do if someone else is selling a product using my trademark?
A trademark registration does not automatically prevent others from using it on their goods or services. If someone else is dealing in pirated products, or using a mark in a confusingly similar way, it is up to the trademark owner to police their own mark. The first step is typically to inform the suspected infringer of the trademark owner’s rights. If the infringer refuses to pay for a license, the mark owner can sue them in court or request the authorities to intervene.
What can I do if counterfeit goods are being imported into Cambodia?
If infringing goods are being imported into the country, you can request the customs authority or a court to suspend clearance of the suspect goods. The authorities can require the applicant to post a bond in order to protect the importer from false accusations. The suspension is only a temporary solution, as the mark owner must sue the importer for trademark infringement to decide the case on the merits.
Someone else registered MY mark!
If someone else registered your name or logo before you, it might be possible to cancel the registration, and then register the mark for yourself. However, if the other’s mark is registered for goods different from your own, it will be difficult to cancel and the two marks will co-exist in different classes.
What are the penalties for infringement?
The trademark law provides for both civil and criminal penalties for infringers. In a civil case, the plaintiff can win money damages and an injunction prohibiting further infringement. Criminal punishment can be as high as 40 million Riels (US$10,000) plus ten years imprisonment.
To download this report, click here.
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