Chapter 17 : Intellectual Property
With accession to the World Trade Organization (“WTO”), Cambodia has now integrated with a fully developed matrix of intellectual property rights regulations. Bringing Cambodia’s legislative framework up to WTO standards will take a number of years, numerous new laws and regulations, and, most importantly, the development of an enforcement regime with sufficient resources to oversee the proper implementation of the WTO’s exacting standards.
In this region, investors will find that protection and enforcement of their intellectual property rights is an area of their business that merits close attention, particularly with the rapid growth in awareness of both the public and private sectors for the need to protect brand images for the future development of both local and foreign-owned businesses.
Watching Brief – Key Developments expected in 2016;
- Law on Protection of Undisclosed Information;
- Sub-Decree Implementing Special Border Measures in the Trademark Law; and
- Sub-Decree Implementing the Copyright Law.
Keep in touch with DFDL to stay abreast of these and other changes in this sector.
In February 2002, the Law Concerning Marks, Trade Names, and Acts of Unfair Competition (Trademark Law) entered into force, although registration of trademarks was possible prior to then. This section sets out the legal regime under this law as well as under related ministerial regulations and practices currently in eﬀect.
The Trademark Law is quite comprehensive in its scope. It covers the protection of trademarks and service marks, when an objection to registration may be made, and the priority given to the application when there has been a previous registration in another country (amongst other things). The protection given to trademark owners is also defined, as well as their right to assign, transfer and license their trademarks. Civil remedies, as well as administrative remedies, are made available under the Trademark Law. Key provisions of the Cambodian trademark system under the Trademark Law are discussed below.
1.1 Registration Procedure and Rights Conferred by Registration
Applications to register a mark are filed with the Department of Intellectual Property of the Ministry of Commerce (MOC). The application to the MOC must be accompanied by samples of the mark to be registered as well as proof of ownership of the mark. The registration process is complete when a certificate of registration is issued to the applicant and is published in the Oﬃcial Gazette of the MOC. The registration is valid for 10 years. An aﬃdavit of use is required during the fifth year of registration in order to keep the registration valid for the entire 10-year period. A registration can be opposed within 90 days of publication in the Oﬃcial Gazette. An applicant outside of Cambodia must be represented by an agent residing and practicing in Cambodia.
1.2 Cancellation and Removal
A registered mark that is not used for a continuous period of five years is subject to cancellation unless the applicant or owner submits an aﬃdavit of use/non-use.
1.3 Licensing of Marks
A mark can be licensed to a user through the use of a license contract. Such contract must be filed with the MOC for the license to be enforceable as to third parties.
1.4 Infringement and Remedies
Infringement includes the use of a registered mark in Cambodia by an unauthorized person and the unauthorized use of a sign identical to, or confusingly similar to, the registered mark or a well-known mark not registered in Cambodia.
1.5 Border Measures
The owner of any registered mark may apply to the customs or competent authorities or the court, to suspend clearance of goods suspected of being counterfeit by proving ownership. The Trademark Law authorizes interested persons to consult the register of marks and obtain extracts from it. All registrations, renewals, refusals or removals of the mark are registered in the Oﬃcial Gazette published by the MOC.
On 4 October 1996, Cambodia entered into an agreement with the United States known as the Agreement on Trade Relations and Intellectual Property Rights Protection. This agreement was ratified in early 1997 by Cambodia’s National Assembly. In this agreement, Cambodia agreed, amongst other things, to become a member of the Berne Convention for the Protection of Literary and Artistic Works, to protect all works encompassed by that convention and to ensure adequate enforcement measures to protect intellectual property.
2. Patents, Utility Model Certiﬁcates, and Industrial Designs
The Law on Patents, Utility Model Certificates and Industrial Designs (Patent Law) was promulgated in January 2003. This important law has, as its primary objectives; the encouragement of innovation; scientific and technological research and development; the stimulation and promotion of increased internal and external commerce and investment; the promotion of the transfer of technology to Cambodia in order to facilitate industrial activity and the development of the economy; and the protection of industrial property rights and to combat the infringement thereof from illegal business practices.
A “patent” is the title granted to protect an invention, while an “invention” is an idea of an inventor that provides a novel, industrially-applicable solution to a special problem in the field of technology. A patentable invention is one that;
- is new;
- involves an inventive step; and
- is industrially applicable.
Non-patentable inventions include;
- discoveries, scientific theories, and mathematical methods;
- schemes, rules, or methods for doing business, performing, purely mental acts, or playing games;
- methods (but not products) for treatment of the human or animal body;
- certain pharmaceutical products; and
- plants and animals.
The inventor is entitled to the right to the patent. However, the Patent Law recognizes the right of the employer, not the inventor, where an invention is made pursuant to the execution of an employment contract.
In order to have a new invention protected, the inventor must file an application for a patent with the Ministry of Industry and Handicrafts (“MIH”). The Ministry will issue a patent to the applicant following its examination of the application and the required documentation and information. The patent is valid for 20 years, subject to the payment of an annual fee, and can be assigned or licensed.
2.2 Utility Model Certiﬁcates
A utility model certificate is granted to protect a utility model, being an invention that is new and industrially applicable and may be or may relate to a product or process.
The key diﬀerence between a patentable invention and one for which the inventor may apply for a utility model certificate is that a patentable invention must include an inventive step. In addition, a utility model certificate expires at the end of its seventh year of registration and cannot be renewed. The Patent Law authorizes a one-time conversion of an application for a patent to the application for a utility model certificate, and vice versa.
The Patent Law provides for international applications to obtain a national patent or utility model certificate. This has the eﬀect that an application under the Patent Cooperation Treaty, designating Cambodia as the application country, will be treated as an application under the Patent Law. Therefore, the Cambodian registration oﬃce must comply with the regulations of that treaty and the provisions of the treaty shall apply in the event of conﬂict with applicable Cambodian law.
2.3 Industrial Designs
An industrial design is any composition of lines or colors, any three-dimensioned form or any material that gives a special appearance to a product of industry or handicraft and which can serve as a pattern for a product of industry or handicraft.
A protectable industrial design must be new. This means that it must not have been disclosed to the public within the 12-month period immediately prior to the date of applying for protection of the industrial design. Nevertheless, the disclosure will not be taken into consideration if it was by a person or in consequence of acts committed by the applicant or his predecessor in title or of an abuse committed by a third party with regard to the applicant or his predecessor in title. The Patent Law refuses registration of any industrial design that is contrary to public order.
The application for registering an industrial design must be filed with the MIH. Documentation specifying the design must accompany the application.
The registration of a design is valid for five years and can be renewed twice. The use of the registered design by a person other than the registered owner requires the owner’s consent. Any breach of the registered design or protest against it, will be within the jurisdiction of the competent court.
2.4 Implementation and Registration
The Patent Law provides for the MIH to establish a registration department to handle the granting and administration of patents, utility model certificates and registration of industrial designs. On 29 June 2006, the Ministry of Industry Mines and Energy (MIME – the former name of the MIH) passed regulations setting out the procedures for the granting of patents and utility model certificates and the procedures regarding the registration of industrial designs. These regulations describe in detail the procedures for applying and the required documentation accompanying the application. This is a significant advancement, as previously the MIME was not able to accept applications for the registration of these classes of intellectual property rights. The MIH (as the MIME is now called) is still in the process of issuing additional regulations to put the law into eﬀect.
3. Copyright and Related Rights
The Law on Copyright and Related Rights (Copyright Law) was promulgated on 5 March 2003, and aims to help secure the rights of authors with respect to works and to protect the works of authors, performers, phonogram producers and broadcasting organizations to ensure a just and legitimate exploitation of such cultural products.
3.1 Works Protected by Copyright Law
In order to gain protection under the Copyright Law, the work in question must fall into one of the following categories;
- works of authors who are Cambodian nationals or habitual residents;
- works first published in Cambodia;
- audio-visual works, the producer of which is headquartered in, or is a habitual resident of Cambodia;
- works of architecture erected in Cambodia, and other artistic works incorporated in a building or other structure located in Cambodia; and
- works to which Cambodia is obliged to grant protection under international treaties.
The author of a work shall enjoy an exclusive incorporeal property right in that work, which shall be enforceable against all persons. This right includes moral rights and economic rights. The moral right of the author is perpetual, cannot be forfeited, cannot be seized to meet an obligation, and may not be subject to prescription. However, an author of a copyright work may waive its moral rights and they may be transmitted upon death to the heirs of the author. In the case of no heir, this right will be subjected to the administration and governance of the Ministry of Culture and Fine Arts (“MCFA”).
Essentially, the moral rights of the author are;
- the exclusive right to decide the manner and timing of the disclosure of the work; and
- the right to oppose all forms of distortion or modification of the content of the work, which would be prejudicial to the author’s honor or reputation.
The protection of economic rights in a work commences from the date of creation and ends 50 years following the author’s death. Economic rights cover the following acts in relation to a work;
- translation or adaptation;
- rental, sale, and distribution to the public of the original or a copy;
- importation into Cambodia of reproductions; and
- public performance, public display, broadcasting or other communication to the public.
Equally important to note are the limitations on the owner’s rights, which allow use of the work in the following instances (among others);
- importation for personal use;
- use for the purpose of education that is not for financial gain; and
- analysis, short quotations, and citations.
Contracts, such as license agreements, in relation to exploitation of economic rights must be in writing to be valid.
Although works are automatically protected, the owners of copyrights may deposit their works at the MCFA. Upon payment of a registration fee, the MCFA will issue a certificate of registration for the registered work. Please note that registration of a work protected by copyright is voluntary and is not required for enforcement of the right against infringement by a third party.
3.3 Related Rights
In addition to the rights of authors, the Copyright Law also protects the rights of performers, phonogram producers, video producers and broadcasting organizations, covering the recording, reproduction, sale, rental and communication to the public of performances, phonograms, videos and broadcasts. In particular, the Copyright Law provides that use of a phonogram recording for broadcasting or public performance entitles the performer and the producer to a single payment from the user.
The duration of protection for the performer shall be 50 years starting from the end of the calendar year in which the performance was recorded in the phonogram or in the absence of such recording, from the end of the year in which the performance took place.
4. Collective Management of Rights
The authors of works and related rights-holders can establish a collective management organization (CMO) to manage their economic rights. The establishment of a CMO of broadcasting rights must be authorized by the Ministry of Information.
5. Disputes and Penal Provisions
5.1 Civil Disputes
Persons suﬀering a violation of their copyright or related rights have the right to file a petition to the court to prohibit or stop the violation. The defendant may be ordered to pay compensation of damages, to redress moral injury, or to return the disputed equipment or material, as well as to return any benefits deriving from the violation.
5.2 Criminal Disputes
All reproduction, performance, or diﬀusion of a work in violation of the author’s copyright is an oﬀense punishable by two to three years’ imprisonment and a fine of KHR 1 million to KHR 10 million (approximately USD 250 to USD 2,500).
5.2.2 Related Rights
All reproductions or broadcasts of a performance, phonogram recording or video recording made without authorization (where required) is punishable by two to three years’ imprisonment and a fine of KHR 1 million to KHR 10 million (approximately USD 250 to USD 2,500).
6. Application of International Treaties
The provisions of any treaties in respect of copyright and related rights to which Cambodia is a party shall apply to matters dealt with by the Copyright Law. In case of conﬂict with provisions of the Copyright Law, the provisions of such international treaties will prevail.
7. New Plant Varieties
A new plant variety is governed by the Law on Seed Management and Plant Breeders’ Rights (Plant Variety Law), promulgated on 13 May 2008. A new plant variety may be protected upon registration with the Department of Industrial Property of the MIH, in compliance with the following requirements;
- the variety is new, distinct, uniform, and stable;
- the applicant will file with the MIH an application for registration of the new seed, which will be technically evaluated by the Ministry of Agriculture, Forestry, and Fisheries (“MAFF”); and
- the applicant will be a Cambodian resident (Khmer or foreigner) or a citizen of a member state of the International Union for the Protection of New Varieties of Plants (“UPOV”) or in any state that has the principle of reciprocity with Cambodia on such registration.
A new plant variety, upon registration, may be protected for 20 years, extended to 25 years for liana and trees. The authorization of the holder of the plant variety right shall be required for;
- production or multiplication;
- conditioning for the purpose of propagation;
- oﬀering for sale;
- selling or other marketing;
- importing; and
- stocking for the purposes mentioned in the aforementioned items.
The plant variety right may be assigned or licensed subject to conditions and limitations.
Plant variety rights shall not extend to acts which are; i) done privately and for non-commercial purposes; ii) done for experimental purposes; or iii) done for the purpose of developing new varieties. However, if a variety is regularly used to produce propagating material of another variety, the authorization of the holder of the plant variety right shall be required. Note that the management and commercialization of plant varieties shall be under the authority of the MAFF.
8. Geographical Indications
Since early 2009, the protection of Geographical Indications (“GIs”) was governed by the Prakas on the Procedures for Registration (of Geographical Indications) However, it was only in January 2014 that the law on the Geographical Indication of Goods (GI Law) was adopted which provides the framework for registration of a GI as well as the scope of protection.
8.1 What Is a Geographical Indication?
A geographical indication refers to a name, symbol or any other sign or image which represents a geographical origin and can identify goods as originating from that area as having a particular quality, reputation or other characteristic which is essentially attributable to coming from that area.
8.2 The Purpose of GI Protection
The purpose of GI protection is to protect the intellectual property rights of procedures, operators and consumers of GI products from goods that do not conform to applicable standards. GI protection also serves to preserve and strengthen knowledge, traditional know-how and national identity in order to create jobs in rural areas, to develop communities, to reduce poverty and to attract tourists.
8.3 Scope of GI Protection
GIs may be protected and registered in relation to;
- agricultural goods;
- handicrafts; and
- other goods that are produced or transformed in Cambodia in compliance with the provisions of the GI Law.
The GI Law lists four main types of GI that are not allowed to be protected and registered in Cambodia which are;
- an indication that does not comply with the GI Law, the value of morality, good tradition and religion or the public order;
- an indication that confuses the public as to the quality, specification or geographical origin of the goods or the manufacturing process;
- an indication that has become a generic term; and
- an indication that is used as the name of a plant variety or animal breed.
8.4 GI Registration
An application must be filed with the Department of Intellectual Property at the MOC. The applicant needs to submit a book of specifications, specifying the geographical area of the goods in question, production conditions and the qualification process for the particular goods for which GI protection is sought. According to the GI Law, both domestic and foreign GIs can be registered.
In reviewing the substance of the application, the Department of Intellectual Property may invite the applicant or any related person to provide additional explanations or evidence.
When a GI is registered at the Department of Intellectual Property, producers and/or operators whose practices comply with the book of specifications will be provided the absolute rights to use the GI.
Even before the introduction of the GI law, the processes for registration of a GI were in place and notable products already registered as GIs in Cambodia include Kampot Pepper and Palm Sugar from Kampong Speu Province.
8.5 Validity, and Revocation or Cancellation Process for GIs
Once registered, a GI is protected indefinitely from the registration date (subject to any request for cancellation). Any interested person can make a request of revocation or cancellation a GI to the MOC. A registered GI can be cancelled by the Department of Intellectual Property for many reasons listed in the GI Law, such as;
- the registered GI’s rightful owner makes a cancellation request;
- the goods bearing the registered GI loses its special qualification (i.e. becomes generic);
- the GI’s owner does not comply with the condition stated in the application;
- the GI’s rightful owner does not comply with the law or any regulation governing GI; and
- the applicant fails to provide additional documents or information to the Department of Intellectual Property in response to the opposition procedure stated in the article 17 of the GI Law.
It is important to note that all provisions relating to Border Measures stipulated in the Law concerning Marks, Trade Names and Acts of Unfair Competition are applied to GI as well. Therefore, GI rights holders may prevent importation or exportation of infringing goods.
9. Layout Design of Integrated Circuits
The Prakas on Registration of a Layout Design of Integrated Circuits was issued on 16 March 2011.
9.1 What Is Layout Design?
Layout design means a three-dimensional disposition of the elements, at least one of which is an active element and some or all of the interconnection of an integrated circuit or such a three-dimensional disposition are prepared for an integrated circuit intended for manufacture.
9.2 What Is an Integrated Circuit?
An integrated circuit means a product, in its final form or an intermediate form, in which the elements, at least one of which is an active element, and some or all of the interconnections, are integrally formed in, or on, a piece of material that is intended to perform an electronic function.
9.3 What Layout Design of an Integrated Circuit Shall Be Registered in Accordance with the Prakas?
A layout design of an integrated circuit can only be registered if it is original. A layout design of an integrated circuit may be the subject of an application for registration only if the layout design of the integrated circuit has never been commercially exploited or has been commercially exploited anywhere in the world for a period not exceeding two years.
Furthermore, the following acts will be unlawful if performed without the authorization of the rights-holder, namely;
- reproducing, whether by incorporation in an integrated circuit or otherwise, the protected layout design in its entirety or any part thereof, save for the act of reproducing any part that does not comply with the requirement of originality under the Prakas; and
- importing, selling or otherwise distributing for commercial purposes, the protected integrated circuit layout design or an Article incorporating such an integrated circuit by any other persons other than the rights-holder.
9.4 Where And How Does The Applicant Register The Layout Design Of An Integrated Circuit?
An application for the registration of a layout design of an integrated circuit shall be made in writing and will be filed with the Department of Industrial Property of the MIH. The Department of Industrial Property will receive and examine the application form for registration and ensure the eﬀective registration administration.
9.5 Rights of a Layout Design of an Integrated Circuit
The right to a layout design of an integrated circuit is the right of the creator of that layout design of an integrated circuit. Such a right will be assignable or transferable by succession. Where several persons have jointly created a layout design, then such right shall belong to them jointly.
9.6 Validity and Cancellation of a Layout Design of an Integrated Circuit
The protection of a layout design of an integrated circuit will be for a period of 10 years, commencing from the date on which the protection starts. Any interested person may apply for the cancellation of registration of a layout design of an integrated circuit on the ground that:
- the layout design of the integrated circuit is not protected under the Prakas;
- the rights-holder is not entitled to protection; or,
- where a layout design of an integrated circuit has been commercially exploited anywhere in the world prior to the filing of the application for registration and the application thereof was not filed properly within the time limit as prescribed in the Prakas.
An application for cancellation of the registration of a layout design of an integrated circuit will be made in writing and be submitted to the registrar for review and approval. Where the grounds for cancellation are established with respect to only a part of the layout design of an integrated circuit, only the corresponding part of the registration will be cancelled.
Chapter 18 : Dispute Resolution
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