Cambodia to Strictly Watch the Timely Submission of Affidavit of Use/Affidavit of Non-use for a Registered Trademark | Cambodia to Strictly Watch the Timely Submission of Affidavit of UseAffidavit of Nonuse for a Registered Trademark

Cambodia to Strictly Watch the Timely Submission

of Affidavit of Use/Affidavit of Non-use for a Registered Trademark

Attorney Dinh Phuong Thao – Bross & Partners

Cambodian trademark legislation forces trademark owners to lodge Affidavit of Use or Affidavit of Non-use since 2006[1] within the sixth anniversary of the date of registration of the trademark[2]. But this requirement has been quite loosely monitored by the Cambodian Department of Intellectual Property (“CDIP"). However, with the issuance of Notice 2652 of CDIP on August 11, 2023, stakeholders should pay special attention to timely file Affidavit of Use/Non-use otherwise their Cambodian trademark registrations may be removed.

Failure to timely submit Affidavit of Use/Affidavit of Non-use – a registered trademark may be invalid

During the past decades, CDIP has loosely monitored the trademark owners' obligation to submit Affidavit of Use/Affidavit of Non-use in the 6^th year from the date of registration, meaning that in practice, CDIP accepts trademark owners submitting Affidavit of Use/Affidavit of Non-use later than the 6^th year annivesary.

The above-mentioned practice will be different from Notice No. 2652, meaning that failure to submit Affidavit of Use/Affidavit of Non-use on time will lead to the removal of the registered trademark from the trademark registration. Specifically, Notice 2652 stipulates that owners of registered trademarks must submit Affidavit of Use/Affidavit of Non-use within 01 year after the 5^th year anniversary from the date of registration (for national registration) or from the date CDIP issues statetement of grant of protection (for Madrid Protocol-based international registration)[3]. This rule similarly applies to subsequent 10-year validity periods starting from the first 10-year period. On the other hand, CDIP only accepts renewal of validity for a registered trademark if an Affidavit of Use/Affidavit of Non-use has been filed in the 6^th year anniversary of such 10-year period.

Recommendation

Owners of registered trademarks in Cambodia need to review, monitor and determine the deadline for submitting an Affidavit of Use/Affidavit of Non-use to avoid the invalidation of such trademarks, pursuant to the said rule.

It should be noted that submitting an Affidavit of Use/Affidavit of Non-use is independent of the possibility of a third-party filing request at CDIP to terminate the validity of the registered trademark on the basis of 5 consecutive years of non-use in the Cambodian market[4]. This means that registered trademark owners in Cambodia need to pay attention to: (i) collect evidence of use of the trademark associated with registered goods/services; or (ii) declare that the registered trademark has not been used attached with reasons proving that due to special circumstances, the trademark owner cannot use the trademark but still intends to use it.

Bross & Partners, an intellectual property company ranked Tier 1 by Legal 500 Asia Pacific, has rich experience in trademark registration in Vietnam and abroad.

Our contact: vinh@bross.vn; mobile: 0903 287 057; Zalo: +84903287057; Skype: vinh.bross; Wechat: Vinhbross2603.

[1] Article 21 of Decree 64 dated of July 12, 2006 on the implementation of the Cambodia Law on Marks, Trade Names and Acts of Unfair Competition stipulates that owner of a registered trademark in Cambodia must submit an Affidavit of Use/Non-use in the 6^th year from the date of registration or the date of renewal. Failure to submit the Affidavit on time may result in the removal of such trademark from the registration system.

[2] The obligation to submit evidence of use to maintain the validity of a registered trademark is applied in very few countries (e.g. United States, Philippines, Mexico, Cambodia), for example, the US law stipulates that within the first 10 year of validity of a registered trademark in the US, if evidence of use is not submitted between 5^th - 6^th year and between 9^th- 10^thyear, this registered trademark will be invalidated by the USPTO. Explore more at: Understanding of US Trademark Law to Avoid Losing Brand Name in the US Market | Understanding of US Trademark Law to Avoid Losing Brand Name in the US Market (bross.vn)

[3] Cambodia has been a member of the Madrid Protocol since June 5, 2015, but Cambodia is not a member of the Madrid Agreement. To understand the advantages of the Madrid System, see: http://bross.vn/newsletter/ip-news-update/9-Key-Advantages-of-the-Madrid-System-for--Internationally-Registering-Trademarks-Abroad

[4] the Cambodia Law on Marks, Trade Names and Acts of Unfair Competition:

Article 15: Any interested person may request the Ministry of Commerce to remove a mark from the Register, in respect of any of the goods or services in respect of which it is registered, on the ground that up to one month prior to filing the request the mark had, after its registration, not been used by the registered owner or a licensee during a continuous period of five years, provided that a mark shall not be removed if it is shown that special circumstances prevented the use of the mark and that there was no intention not to use or to abandon the same in respect of those goods or services.