IP Practice in Cambodia

When an international trademark is rejected by the Department of Intellectual Property of Cambodia (DIP), the applicant should not be disappointed about the rejection because there are still a possibility to overcome the rejection. However, to do this, the applicant needs to know about the trademark law in Cambodia and/or needs to have a contact of a professional IP representative who can analyze the refusal and find out important points to overcome the provisional refusal. How can we get success to file a response to a provisional refusal for an international trademark in Cambodia?

Firstly, it should be noted that an applicant can file a response within 60 days receipt of the notification of a provisional refusal. There are few types of rejections that each should be dealt with by a specific type of response, particularly:

- Rejection by absolute ground: the applied trademark is rejected because it is descriptive to the goods/services.

- Rejection by a term which should be disclaimed apart from the trademark.

- Rejection by relative ground: the applied trademark is rejected by a cited mark which is confusing similar.

One example is shown as below:

International Registration No. 141723 was rejected because it is confusing similar to an earlier trademark, particularly:

To file a response to a provisional refusal for international trademark No. 141723 in Cambodia, the applicant can provide arguments to prove that the applied mark “WAKAI” in Class 25 is distinctive to the cited mark “KOOKAI” in Class 25. Alternatively, the applicant can provide evidence to prove that trademark “WAKAI” in Class 25 and trademark “KOOKAI” in Class 25 are co-existed in other countries.

After considering the response, if the provided evidence is acceptable, the DIP will issue a final decision.

To file a response, IP representative needs a notarized Power of Attorney and supporting documents including scanned copies of trademark certificates in the applicant’s home country and in other countries.

Our firm, HAIHAN-IP, can assist applicants to overcome the International Refusals for trademarks in Cambodia by analyzing the rejections and filing responses with the most relevant arguments. For example of the above-mentioned  case, we argued that the applied trademark “WAKAI” in Class 25 and cited trademark “KOOKAI” in Class 25 are co-existed in many countries. We also provide supporting documents and our arguments to strengthen our response and requested DIP to accept to grant for International Registration No. 141723 for trademark “WAKAI” in Cambodia. Our Response was filed on December 24, 2019 and 10 months later, on October 20, 2020, we received a Decision to grant for the above-mentioned trademark.

From the above illustration, it can be seen that applicants always have a chance to overcome international refusals in Cambodia although filing a response to a provisional refusal for international trademark in Cambodia is a difficult procedure and needs effort from both applicant and represented.

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HAIHAN-IP is a prestigious intellectual property law firm. We provide clients with services including search, filing, prosecution, licensing, assignment and litigation of patents, utility solutions, trademarks, industrial designs in Cambodia. For any enquiries about our services, please email hh@haihan.vn or phone us at 84-24-3202 8222 or 84-24-3202 8222 or fax us at 84-24-3202 8333.

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