Before Filing for a Trade Mark Registration
What should I do before filing a trademark application?
Before filling a trademark application: Understand all the contents in Applications for trademarks are made on form TM 001, Application for registration of a trademark. Application forms may be obtained from the Intellectual Property Department, Ministry of Commerce or from its web site.
A trademark can be any visible sign. A letter, number, word, phrase, shape, logo, picture, aspect of packaging or a combination of these can fall into this category. It is a sign that is used to distinguish the goods and/or services of one trader from those of another. Therefore it must not be a sign that other traders may wish to use without any improper motive to promote or describe their goods and/or services.
Application in Cambodia
1) Where do I have to apply for the registration of a trademark?
You can apply for the registration of a trademark at the Ministry of Commerce, Department of Intellectual Property Rights.
2) How can I get and complete the TM form?
Applications for trademarks are made on form TM 001, Application for registration of a trademark. Application forms may be obtained from the Intellectual Property Department, Ministry of Commerce or from its web site.
3) Must I have an agent representation to stand for me in the process of filing for a Trade Mark Registration?
In the process of mark registration, applicants can file the application by themselves or have an agent to represent, but in case applicants’ permanent residence or principal of business is outside the Kingdom of Cambodia, they shall be represented by an agent residing and practicing in the Kingdom of Cambodia.
4) Can I use a multi-class application form?
Yes, You can. The application may also list goods or services within more than one class on which the trademark will be used. The goods or services that fall in the same class should be grouped together.
5) What supported documents do I need to accompany with my Application Form for Mark Registration?
The applications for registration of a mark, recordal of change of applicant address and endorsement of affidavit of use or non-use shall be filled with the Ministry of Commerce. The application for registration of mark shall contain a request:
- 15 additional reproductions must be summited for each class in the application. The additional representations must be identical. It should not be more than 8 cm by 8 cm.
- A list of the goods or services for which registration of the mark is requested, listed under the applicable class or classes of the International Classification as mentioned in the annex.
- Shall be subject to the payment of the prescribed application fees as mentioned in the joint declaration of the Ministry of Economy and Finance and the Ministry of Commerce.
- Power of attorney if any
- Deed of substitution
- Translation of foreign worlds,
- Convention details if applicable
6) Is it possible to apply for the registration of a mark consisting of one color?
Yes, It is possible for an applicant to apply for registration of a trademark consisting of a shape, or color, aspect of packaging or a combination of these. These kinds of trademark may be combined with words, letters, numbers or pictures. In many cases it may be difficult to obtain registration for these kinds of trademarks without evidence of use.
7) What are the minimum requirements for giving a Filing Date and Filing Number to my trademark?
To allocate a filing date and an application number the following minimum requirements must be met at the time of filing an application.
• The name of the applicant;
• An address to which communications can be directed;
• A reproduction of the trademark;
• A Specification of goods or services;
• The required filing fee for at least one class of goods and services.
8) What should I do if I can’t rectify the deficiencies within the time allowed?
Each time an adverse report is issued, the applicant will be given 45 days from the date of receipt of the report to response. If no response is received within the given time period, the application will be considered withdrawn.
9) Can I apply for a trademark registration covering all goods or services in one class?
Yes, you can.
10) How many specimens of the mark should I attach to the application form and how size is required?
15 additional reproductions must be summited for each class in the application. The additional representations must be identical. It should not be more than 8 cm by 8 cm.
11) What should I do if the registrar finds that my trademark application is filled by mistake?
You can send a request in writing. Supporting documents are usually not necessary although the examiner may request such documents if any doubts exist regarding the validity of the request or ownership.
12) How long does it take to know that my trademark is accepted for registration or not?
Any deficiencies identified in the initial screening (formality check) must be rectified within 45 days from the date of receiving the letter detailing the non-compliance. The application will be considered withdrawn if the deficiencies are not rectified within this time. Once the application meets the entire filing requirement, the office will inform the applicant that the filing requirements have been met and notify the allocated application number(s) and the filing date. The application number(s) must be used with all future communications with the office.
13) How do I oppose the registration of a trade mark?
When an application for registration is registered, it is advertised in the Official Gazette and is open to opposition for a period of 90 days from the date of the advertisement.
To oppose a registration, a person must serve a notice of opposition on the Registrar in an approved form together with the appropriate fee within the period allowed. Form TM 0010 or an equivalent may be used. The Registrar will send a copy of such notice to the registered owner immediately. The Notice of Opposition must be in writing (may use Form TM/0010) and should include:
• The trademark number;
• Name of the applicant for registration;
• Name and address of the opponent;
• Address for service of the opponent; • Grounds of opposition relied upon;
• The appropriate fee (no fee at present).
POST REGISTRATION:
1) How long does the protection of a trade mark last?
The registration of a mark is for a period of ten years from the filing date of the application for registration. The registered mark can be renewed for consecutive periods of ten years provided the registered owner pays the prescribed renewal fee.
2) What information should I be aware of?
No reminder will be sent for renewal. The registered owner must also provide a notarized power of attorney, a copy of the registration certificate and 15 copies of the mark at the time of renewal.
3)Can I amend my registration in the Register?
Yes. A request to amend details of an application to register a trademark must be made in writing by the applicant or their agent. Requests for amendments must be sent to the office as soon as possible indicating the application number and the nature of the amendment required. The request must:
• Clearly indicate the amendment required;
• Identify the trademark application/s by stating the filing date and any other identifiers;
• If the representation of the mark is amended, applicant will need to submit 15 copies of the new representation for each class in the application.
4) What should I do if I do not do an affidavit of use/non-use of my trademark?
The registered owner must at the fifth anniversary provide an affidavit of use/non use. If an affidavit of use/non use is not provided at the fifth anniversary, the registration may be removed even if the mark has been continuously used in Cambodia.
5) Can I remove my trademark from the Register?
An application may be made by any interested person to remove a trademark from the Register for non-use. The trademark may be completely or partially removed. Complete removal involves having the trademark removed from the Register in respect of all goods and/or services for which it is registered. Partial removal involves having the trademark removed in respect of some of the goods and/or services for which it is registered.
6) Will I receive the reminder for renewal?
No reminder will be sent for renewal.
7)How do I renew my trademark registration and can I add some more goods or services?
You can request the Registrar to remove a mark on the register. No, you can not add more goods or services.
8) What supported documents do I need to provide at the time of renewal?
Applications for removal must:
• Be in writing;
• Provide the details of the registration;
• Be accompanied by the relevant fee.
9) What should I do if I want to change the ownership of my registered mark?
To record the change of ownership of a trademark the owner should as soon as possible:
• Advise the Registrar in writing (may use Form TM/00/0056-Application to Record change of ownership of a registered trademark may be used)
• Clearly identify the trademarks being assigned;
• Supply documentary evidence of proof of title such as a deed of assignment, merger document, simple letter of assignment, probate document or declaration;
• List the goods/services being assigned in cases of partial assignment.
Note: The onus is on the parties involved to ensure the change of ownership will not result in public deception or confusion.