Trademark protection titles invalidation in Cambodia

A protection title is a type of legal document issued by a competent state agency to the owner of intellectual property rights to an intellectual property object. A protection title has the validity of establishing the owner’s intellectual property rights to such intellectual property objects and is protected by law. In the process of trademark management in Cambodia, the invalidation of a protection certificate may become a necessary decision, especially when businesses face changes in business strategies or market requirements. In addition, the invalidation of a protection title has a number of objective reasons. In general, the invalidation of a protection title always requires certainty and accuracy to avoid errors, which can lead to time consuming and costly. Invalidation of a protection title is a declaration by a competent state agency that a protection title is no longer valid. In order to help customers better understand the procedure for invalidating protection certificates in Cambodia, Viet An Law Firm will guide through the article below.

Legal basis

• Trademarks, Trade Names and Unfair Competition Practices Law of January 8, 2002;
• Decrees and related circulars.

Cases of trademark protection titles invalidation in Cambodia

• Titles of protection do not meet the conditions of protection. For example, protection titles granted to trademarks do not meet the conditions of novelty, creativity, industrial feasibility.
• Titles of protection are issued to owners who do not have the right to register. For example, a protection certificate is granted to a trademark to someone who is not the author of that trademark.
• The protection title is invalidated due to the fault of the National Office of Intellectual Property of Cambodia. For example, a protection certificate is issued for a trademark that coincides with a previously granted trademark.
• The owner of the protection title shall not use the trademark for a period of 5 years from the date of issuance of the protection certificate.
• The holder of the protection title does not pay the fee for maintaining the validity of the protection title.
• The owner of the protection certificate renounces ownership rights to the trademark.
• The holder of the protection title was declared bankrupt.

Right to request protection titles invalidation in Cambodia

The right to request the invalidation of a protection title belongs to the following entities:

• National Office of Intellectual Property of Cambodia.
• The person has the right to register the trademark but is not granted a protection certificate.
• Users of trademarks identical or similar to trademarks are granted protection certificates.
• Persons whose legitimate rights are infringed upon by the use of trademarks are granted protection certificates.

Dossier of request for protection titles invalidation in Cambodia

According to the provisions of Article 134  of the Law on Trademarks, Trade Names and Unfair Competition Acts, a dossier of request for invalidation of a protection title includes the following documents:

• Application for invalidation of the protection title. A petition for invalidation of a protection title must contain the following contents:
  • Name and address of the person requesting the invalidation of the protection title.
  • The number and date of issuance of the protection certificate are required to be cancelled.
  • Grounds for requesting invalidation of protection titles.
  • Evidence proving grounds for requesting invalidation of protection titles.
• A copy of the protection title is required to be cancelled.
• Evidence proving grounds for requesting invalidation of protection titles. Evidence proving the grounds for requesting invalidation of a protection title may include the following papers and documents:
  • Proof of trademark previously used in Cambodia.
  • Proof of a trademark is incapable of distinguishing the trademark owner’s goods or services from those of another entity.
  • Documents proving that the trademark is not capable of registration and commercial use.

Procedures for protection titles invalidation in Cambodia

The procedure for invalidation of a protection title shall be carried out as follows:

Step 1: File a request for invalidation of the protection title.

A person who has the right to request the invalidation of a protection title should submit a request for invalidation of a protection title to the National Office of Intellectual Property of Cambodia.

Step 2: Appraise the application for invalidation of the protection title.

The National Office of Intellectual Property of Cambodia will appraise the application for invalidation of the protection title within 6 months from the date of receipt of the application. If the application for invalidation of a protection title is valid, the National Office of Intellectual Property of Cambodia shall notify the owner of the protection title of the opinion of the person requesting the invalidation of the protection title.

Step 3: Present the opinion of the owner of the protection title.

The owner of a protection title has the right to express his/her opinion on the application for invalidation of the protection title within 30 days from the date of receipt of the notice from the National Office of Intellectual Property of Cambodia.

Statute of limitations for requesting invalidation of protection titles in Cambodia

The statute of limitations for requesting invalidation of a protection title is the period during which a person entitled to request the invalidation of a protection title can file a petition for invalidation of a protection title.

According to the provisions of Article 132 of the Law on Intellectual Property of Cambodia, the statute of limitations for requesting the invalidation of a protection title is 5 years from the date of issuance of the protection title.

Thus, if a person entitled to request the invalidation of a protection title does not file a petition for invalidation of a protection title within 5 years from the date of issuance of the protection title, after this period, that person will no longer have the right to request the invalidation of such protection title.

For example, the Trademark Protection Title is issued on January 1, 2023. The person who has the right to request the invalidation of a protection title must file a petition for invalidation of a protection title by December 31, 2028. If the person does not file a petition for invalidation of a protection title within this period, then after December 31, 2028, he will no longer have the right to request the invalidation of such protection title.

Note:

• The statute of limitations for requesting the invalidation of a protection title shall be counted from the date of issuance of the protection title, not from the date of discovery of the grounds for invalidation of the protection title.
• The statute of limitations for requesting invalidation of a protection title may be extended if the person requesting the invalidation of the protection title proves that he or she does not know or cannot know about the grounds for invalidation of the protection title.

Fees for requesting protection titles invalidation

According to Article 135 of the Cambodian Intellectual Property Law, the fee for requesting the invalidation of a protection title is 1,000,000 Riel (equivalent to about 250 USD). The fee for requesting the invalidation of the protection title shall be filed together with the dossier of request for invalidation of the protection title.

Note:

• The fee for requesting the invalidation of a protection title shall not be refunded in case the application for invalidation of the protection title is rejected.
• The fee for requesting the invalidation of a protection title may be changed in accordance with the provisions of law.

If customer want to apply for invalidation of a trademark protection certificate in Cambodia, please contact Viet An Law Firm for the most effective support.