The procedures for recording trademark licenses and franchise agreements in Cambodia have undergone significant changes with the issuance of a new regulation by the Department of Intellectual Property Rights on January 13, 2020. New documentation and information is required, as compared to prior practice, and recordals are now only valid for renewable five-year terms. The regulation also requires license agreements to contain specific information in order to be able to be recorded.
Under the Trademark Law, a license must be recorded with the DIPR in order to be valid against third parties. Practically speaking, the recordal allows the licensee to enforce the trademark rights, should the trademark-owning licensor refuse or be unable to do so.
The new regulation, the Prakas on the Procedure of Recordal of License and Franchise Agreement, applies to recordal of trademark licenses and sub-licenses, and franchise agreements and sub-agreements (hereinafter collectively referred to as “licenses”).
License Agreement Requirements
Licenses covering both registered trademarks and pending applications may be recorded. However, requests for recordals covering pending applications will only be reviewed and examined once the application has been granted.
If the parties intend to record the license, it must contain at a minimum the following:
· Identification of the licensor and licensee [Name, nationality, and permanent residence if the licensor or licensee is a natural person - Company's name, nationality, and registered address in licensor or licensee is a legal person]
· Mark details including the mark, registration number or application number, classification, and goods/services subject to be recorded.
· Type of license contract, specifically whether it is an exclusive, non-exclusive, single license, and/or sub-license contract.
· Duration period shall be mentioned in the license agreement or can be determined by referring to another agreement.
· Conditions for monitoring the effectiveness and quality control on goods or services.
· Signatures of both parties and certified by the notary public or competent authorities.
Recordal Procedures
Licenses are recorded upon written application to the Department of Intellectual Property Rights. An application must be submitted within six months from the effective date of the license. Licenses can cover more than one mark/class. Single and multi-class applications for recordal a license are both acceptable, but the official fee will be charged for each mark/class.
The application must be accompanied by the following documents:
- Original or certified copy of license certified by the notary public or competent authority.
- If the entire license cannot be submitted, the applicant shall provide an extract of the license with the required information.
- If the license or extract is written in language other than English, it shall be translated into Khmer or English and certified as true and correct translation by authorized translator.
- Original notarized POA and Deed of Substitution if agent is appointed
- Copy of mark registration certificate or renewal registration certificate or acknowledgement of filing instruction,
- Documents required from licensor and licensee if they are resident in Cambodia: for Natural person of Khmer nationality: copy of ID card with signature or thumbprint; foreign nationality and has commercial establishment in the Kingdom of Cambodia: copy of passport with valid visa and documents pertaining to business registration; legal person: Copies of documents pertaining to commercial registration
- Receipt of payment of the official fee
The Registrar will notify the applicant within 30 days from the date of receiving the application for recordal if the conditions and required documents are not fulfilled. The applicant then has 60 days in responding to the notification, which can be extended upon the request.
If the application for recordal is refused, the applicant can appeal to the appeal board of the Ministry of Commerce or to the competent court within 90 days from the date of notification.
Publication
Upon successful recordal, the following information will be published in the Official Gazette of the Department of Intellectual Property Rights:
· Name and address of grantor and receiver
· Mark and registration number
· Classification and details of good/services
· Type of license
· Date of application for recordal, date of recordal and the duration
· Territory
· Name and address of the agent if appointed.
Validity and Term
In the new Prakas, only recorded licenses are enforceable against third parties. The recordal is valid for a maximum of five years from the date of the recordal, or the term of the license or the remaining validity of the mark registration, if either is less than five years. The recordal may be renewed for subsequent five-year terms, upon application and payment of the official fee. The renewal application must be submitted within six months prior to expiration of the recordal
Loss & Removal of Recordal
The validity of recordal can be lost and removed if:
1. The right granted through the license has been withdrawn or cancelled.
2. The license has been terminated
3. Validity of mark registration has been lost
4. Ownership of the mark has been changed to another proprietor
Any of these changes must be notified to the DIPR. Upon the request of concerned party, the Ministry of Commerce will issue the decision for cancelation of the recordal. The loss and removal of the recordal shall be effective from the date of the decision.
Rights of Recorded Licensee
Upon successful recordal, the licensee gains the rights:
- to lodge a complaint to the competent court or competent authority to ask for provisional measures or border measures to prevent an infringement, an imminent infringement or any act that is contrary to the Trademark Laws and other provisions enforce, ask for damages and other remedies
- to lodge a complaint to the competent court against any infringement if the licenseor refuse to do
- to request to the competent authority to enforce against any infringement if the licensor refuses to do.
- to participate in a complaint against infringement that has been initiated by the owner of the mark or licensor in claiming damages
Further, the applicant may publish the Letter of Recordal in any newspaper after the license has been recorded and can place a copy in the newspaper.
For more about the Cambodian trademark system, please refer to our Guide to Trademark Law in Cambodia.
