A change in practice of Affidavit filing
Under the Law Concerning Marks, Trade Names and Acts of Unfair Competition (the Cambodia TM Law), the filing of an Affidavit of Use/ Non-Use is not only required to maintain the trade mark registration but also the key process to complete the renewal of the registration.
On 11 August 2023, the DIPR issued an official announcement, Announcement No. 2652 (the Announcement) that changes the practice of Affidavit of Use/ Non-Use filing in Cambodia. It stipulates that a late filing of an Affidavit of Use/ Non-Use shall not be accepted, and significantly this rule shall be effective immediately from the date of the issuance of the announcement i.e., 11 August 2023. The reason being to fully comply with the regulation set-out in Cambodia’s Trade Mark law.
According to Article 21 of the Sub-Decree on the Implementation of the Cambodia Trade Mark Law, the owners of registered trade mark(s) are required to file an Affidavit of Use/Non-Use within one (1) year, following the fifth anniversary of the registration date or renewal date. Failure to do so will result in the registered trade mark(s) being removed from the registry.
A glimpse at the practice prior to the Announcement is that the late filing of an Affidavit is acceptable by the DIPR so long that it is duly filed by the renewal date of each registration at the latest.
Effectively, this means that if an Affidavit is not filed within the required timeframe as mentioned above, there will be risks for trade mark owners including (i) losing the validity of the registration and (ii) not being able to renew the registration.
Given the short notice on the implementation of this announcement and while there are some ambiguous issues (including whether or not there is any allowed grace period for late filing and/or late filing penalty fee and/or any interim period for owners to immediately file the overdue Affidavits) a discussion with and among the DIPR is needed to clarify them.
While we wait for this clarification which we will share in a future update, we recommend that companies and trade mark owners should attempt to file an Affidavit, if due, as soon as possible to maintain their registrations.
Change of rule in multi-class trade mark application filing
In a second announcement from the DIPR (Announcement no. 2501, dated 1 August 2023), it requires that “the applicant shall use only 1 application form for requesting registration of one trade mark for goods and services in one or more classes.” That said a single class application is no longer allowed.
This change of formality requirement for trade mark filing is made for the purpose of reducing the paperwork and streamline the registration process of the DIPR. It is effective from the date of the announcement i.e., 1 August 2023.
If you have any questions about either of the new Announcements, please contact our Trade Mark team in Cambodia who will be pleased to help you: TMGCambodia@rouse.com.
Authors: Sreymom Mao; Phengchhay Ing and Ratana Soy