Phnom Penh, Cambodia – Since 1 November 2024, an original latest certificate/recordal has been no longer required for procedures of recordal of change of name and/or address, assignment, or merger for a trademark registration in Cambodia. Instead, the scanned copies of the said documents are now sufficient. This new practice is to streamline the trademark change process in Cambodia, reducing the administrative burden of providing original documents and accelerating the overall procedure.
As you may be aware, in Cambodia, the procedures for recording changes to a trademark registration, such as a change of name or address, assignment, or merger, are governed by the Cambodian Law on Marks, Trade Names, and Acts of Unfair Competition, and the regulations of the Ministry of Commerce. We provide below some general steps for the said procedures.
- Change of Name and/or Address
- Prepare Required Documents:
- A formal request or application for recordal of the change of name/address.
- A notarized declaration or certificate evidencing the change of name/address, issued by a competent authority in the applicant’s jurisdiction.
- A copy of the current certificate of registration or application details of the trademark.
- A notarized Power of Attorney (POA), if the request is made through a local agent or attorney.
- Submit to the Department of Intellectual Property (DIP) – Ministry of Commerce:
- File the application at the DIP, either physically or electronically (if online filing is available).
- Examination and Approval:
- The DIP will review the request to ensure all documents are valid and consistent.
- Upon approval, the change will be recorded, and an updated certificate of registration will be issued.
- Processing Time:
- It typically takes around 3–6 months, depending on the workload of the DIP.
- Assignment of Trademark
- Prepare Required Documents:
- A formal request for recordal of the assignment.
- A notarized Assignment Agreement or Deed, signed by both the assignor and assignee.
- Proof of trademark registration or application details.
- A notarized POA, if filed by a representative.
- Submit the Application:
- File the request with the DIP, ensuring all required documents are included.
- Examination and Publication:
- The DIP examines the application and may publish the assignment details in the Official Gazette for opposition purposes, if required.
- Final Approval and Issuance:
- Once the assignment is approved, the DIP updates its records and issues an updated certificate of registration in the assignee’s name.
- Processing Time:
- Typically 3–6 months.
- Merger
- Prepare Required Documents:
- A formal request for recordal of the merger.
- A notarized certificate or evidence of the merger issued by a competent authority.
- Documents evidencing the surviving entity’s authority over the trademarks (e.g., merger agreement or court order).
- A notarized POA, if submitted through an agent.
- Submit the Application:
- File the request at the DIP.
- Examination and Approval:
- The DIP examines the documents to verify their authenticity and consistency.
- Once approved, the surviving entity is recorded as the owner of the trademarks.
- Processing Time:
- It typically takes around 3–6 months.
Key Notes:
- Language of Documents: If the documents are in a foreign language, they must be translated into Khmer by an authorized translator and certified.
- Filing through an Agent: Foreign applicants must file through a local trademark agent or attorney authorized to practice in Cambodia.
- Fees: Fees vary depending on the type of recordal.
Why should we proceed with recordal of change of name and/or address, assignment, or merger for trademark registration?
Proceeding with the recordal of changes such as a name or address update, assignment, or merger for trademark registration in Cambodia is essential for several practical, legal, and administrative reasons:
- Legal Validity and Enforcement
- Ownership Confirmation: Recordal ensures that the official records at the DIP accurately reflect the current owner of the trademark. This is crucial for proving ownership in case of disputes or litigation.
- Avoid Challenges: If records are outdated, third parties may challenge the validity of the trademark registration, arguing that the owner does not have a legal claim to the mark.
- Customs and Border Enforcement: Correct ownership records help customs authorities enforce rights against counterfeit goods, especially for trademarks registered for enforcement with customs.
- Avoiding Administrative Issues
- Timely Renewal Notices: The DIP uses the name and address on record to send important notices, including reminders for trademark renewals. An incorrect address could lead to missed deadlines and the risk of losing the registration.
- Filing Accuracy: If subsequent filings (e.g., oppositions, cancellations, or license agreements) list an unrecorded new owner, the DIP may reject these filings due to inconsistencies in ownership records.
- Compliance with Cambodian Law
- Cambodian trademark law requires that significant changes in the trademark owner’s details, ownership, or corporate status (such as mergers) be recorded. Failure to comply can result in:
- Invalidation of Transactions: Agreements, such as licensing or enforcement actions, may be deemed invalid if the owner on record is incorrect.
- Penalties: Non-compliance may attract fines or administrative complications.
- Facilitating Commercial Transactions
- Licensing Agreements: Potential licensees often require confirmation of the ownership details before entering agreements. Accurate records ensure smoother negotiations.
- Assignments and Sales: Prospective buyers of the trademark or related business assets rely on accurate records to assess the validity of the trademark rights.
- Mergers and Acquisitions: Accurate recordal of trademarks is essential to facilitate due diligence and legal compliance in M&A transactions.
- Protection of Rights Internationally
- Harmonization with International Standards: Maintaining up-to-date records in Cambodia aligns with international trademark best practices, especially for businesses involved in cross-border operations.
- Madrid Protocol Considerations: For trademarks extended to Cambodia under the Madrid System, consistency in local and WIPO records is crucial to avoid administrative conflicts.
The recordal of changes ensures that trademark ownership and related details are clear, enforceable, and compliant with Cambodian law. It protects the trademark owner’s rights, avoids administrative and legal issues, and facilitates commercial activities involving the trademark. Neglecting recordal can expose a business to unnecessary risks, including the loss of trademark rights.
For further information, please do not hesitate to contact us at bud-prairie@bud-prairie.com.
