Cambodia’s Trade Mark Law (formally known as the Law concerning Marks, Trade Names and Acts of Unfair Competition) was enacted in 2002. However since then there has never been any clear guidance on the recordal of license and franchise contracts until recently, the Ministry of Commerce (MOC) issued a Prakas (Ministerial Decree) on Recordal of License and Franchise Contracts which took effect from 13 January 2020. The recordal is administered by the MOC’s Department of Intellectual Property Rights (DIPR).

Under both the Trade Mark Law and Prakas, a license or franchise contract must be recorded to be enforceable against third parties. The licensor/franchisor or licensee/franchisee or their respective legal representatives may file a request for recordal of the contract with the DIPR.

In order to record a license or franchise contract in Cambodia, the following documents must be submitted:

• Notarized license/franchise agreement (in English or Khmer) or certified true copy or an extract thereof which must contain the following essential terms:
  • Information of the parties such as name, registered address and country of incorporation/nationality
  • Details of the mark(s) including the mark(s)’ application/registration number, classification and specifications
  • Type of contracts, i.e. exclusive license, non-exclusive license, sole license or sub-license
  • Term of contracts
  • Conditions on control of effectiveness and quality of goods or services
• Notarized Power of Attorney
• Copy of registration or renewal trade mark certificate (or a copy of Acknowledgement of Filing Instruction for a pending application)
• Copy of business registration documents of any parties registered in Cambodia which include:
  • Copy of latest patent tax certificate
  • Copy of valid Certificate of Incorporation
  • Copy of valid Articles of Incorporation.

A request for recordal of a license/franchise contract must be filed within six months of the effective date of the contract. The legal timeframe to complete a smooth recordal is about 60 days. In practice, however, it may take longer due to a backlog at the registry.

A recordal of a license/franchise contract is valid for a maximum of five years depending on the term of the contract and validity of the trade mark(s) within the contract. Renewal of a license/franchise contract can be filed six months prior to the expiry date of the recordal.

Upon recordal, when there is any infringement, imminent infringement, or acts of unfair competition in relation to mark(s) related to the recorded license or franchise contract, the licensee/franchisee and/or licensor/franchisor may take one or more of the following actions:

• Request the DIPR to send a warning letter to the alleged infringers;
• File a complaint to the DIPR to resolve the dispute; and/or
• File a complaint to the Appeal Board, National Commercial Arbitration Centre, or Courts to resolve the dispute.

Disclaimer: This is for information only and must not be relied on as advice. You are recommended to seek professional advice specific to your case.

TAGS

• Trade Marks
• Cambodia
• Agreements
• Licensing