Introduction to Intellectual Property in Cambodia

Introduction to
Intellectual Property
in Cambodia
Mr. Pheng Thea, Partner
RULE, Phnom Penh
22 February 2020

Name: Pheng Thea
Firm: Abacus IP
Location: Phnom Penh, Cambodia
Pheng Thea is a partner at Abacus IP. A seasoned IP professional, Mr. Pheng is licensed by the Cambodian
Ministry of Commerce's Department of Intellectual Property and certified by the World Intellectual Property
Organization. Prior to founding Abacus IP, Mr. Pheng lead the IP prosecution practice at a leading Cambodian
law firm. His practice involved the registration and maintenance of hundreds of trademarks, patents, industrial
designs and other forms of IP on behalf of innovators and businesses from around the globe.
Mr. Pheng was elected Chairman of the Intellectual Property Association of Cambodia in August 2019. Mr.
is a graduate of the faculty of law of Pannasastra University of Cambodia. In addition, he holds a Certification
Intellectual Property Specialization from the World Intellectual Property Organization and the University of
Africa.
Professional Memberships:
Intellectual Property Association of Cambodia, Chairman
ASEAN IP Association, Council Member
International Trademark Association (INTA), Legislation and Regulation Committee
South-East Asia IPR SME Helpdesk, Member of Panel of Experts
Asian Patent Attorney Association, Member
22-Feb-2020 www.abacus-ip.com 2

GENERAL INTRODUCTION

Different types of IP (I)
Legal
right
What for? How?
Utility
models
New inventions
Copyright
Original creative or
artistic forms
Exists
automatically
Patents New inventions
Application and
examination
Application and
registration

Different types of IP (II)
Trade marks
Distinctive identification
of products or services
Use and/or
registration
Registration
Trade
secrets
Valuable information
not known to the
public
Reasonable
efforts to keep
secret
Legal
right
What for? How?
Industrial
Designs
External appearance

One product - many IP rights
Copyright
 Software
 User manuals
 Ringtones
 Start-up tone
 Images
Designs
 Form of overall phone
 Arrangement and shape of buttons
 Position and shape of screen
Trade secrets
 Some technical know-how kept
"in-house" and not published
Trade marks
 NOKIA
 Product "208"
 Start-up tone
Patents and utility models
 Data-processing methods
 Operating system
 Operation of user interface

The importance of intellectual property (I)
 IP protects small innovative firms
– W. L. Gore & Associates: GORE-TEX®
– Dolby Laboratories: invented noise-reduction technology
 IP is an essential business asset in the knowledge economy
• Sandvik AB: innovative high-technology tools
and steel technology
• ARM Holdings: licenses its technology to
microprocessor companies

The importance of intellectual property (II)
 IP is needed to enable the release of IP into the public
domain under controlled conditions.
– General Public License (GPL): Linux
– Creative Commons License
 IP helps guarantee standards for public benefit by means
of licensed trade marks.
– Fairtrade International (FAIRTRADE)
– Forest Stewardship Council (FSC)

The IP System
Competitors
benefit from their efforts
Innovators
make significant investments
in developing new products
Heavy pressure
may drive the
innovator out of
business
Get a free ride
on the back of the innovator's
creativity and inventiveness
IP system
Rights over the use of inventions, designs,
brands, literary and artistic works
Can offer similar or identical
products at a cheaper price

Examples of valuable intellectual property
Coca-Cola® Apple® iPod touch® Harry Potter
Polaroid® instant camera DNA copying process

PATENTS

What is a patent?
• A legal title which grants the holder
• the exclusive right to prevent others from making,
using or offering for sale, selling or importing a
product that infringes his patent without his
authorisation
• in countries for which the patent was granted
• for a limited time (up to 20 years).
• In return for this protection, the holder has to disclose
the invention to the public.
Reveal
invention
(disclosure)
Get
exclusivit
y
(patent)
Patent applicant Public
Patents are granted in
nearly every country in the
world!

What exactly can be patented?
For an invention to be patented, it
must usually be
 new to the world (i.e. not
available to the public
anywhere in the world)
 inventive (i.e. not an
"obvious" solution), and
 susceptible of industrial
application
In Cambodia, patents are not granted for scientific theories,
pharmaceutical products, Math methods, business methods
or rules of games as such, or for methods of treatment,
diagnostics and surgery on the human or animal body or
plants varieties.
Patents protect inventions which solve technical problems:
 processes,
methods, uses
 Products, devices,
systems

UTILITY MODEL CERTIFICATES

What is a utility model certificate?
• A utility model grants the holder the
exclusive right to prevent third parties
from:
• exploiting an invention (e.g. making,
using, offering for sale)
• without authorisation in the country
where the utility model was
registered
for a short period (3 to 10 years).
• The holder has to disclose the invention
to the public.
Reveal
invention
(disclosure)
Get protection
(utility model)

Scope of protection compared with patents
Utility models
• Registered territorial IP right
• Available in limited number of
countries
• Protection for 7 years
• Search reports in some countries
only
• Registered and published after
a few months
• Generally no substantive
examination (novelty & industrial
applicable)
• Reviewed only in revocation or
infringement proceedings
Patents
• Registered territorial IP right
• Available in most countries
• Protection for up to 20 years
• Search reports standard
• Application published after
18 months
• Substantive examination (novelty,
inventive step, industrial
applicable)
• Grant or refusal after substantive
examination procedure

TRADE MARKS

What is a trade mark?
• Mark means any visible signed capable of distinguishing of the
goods (trademark) or service (service mark) of an enterprise
• Many different types: word, figurative, colour, shape, numeral,
slogan, package design, combination of colors etc
• Absolute grounds for refusal
• Distinctiveness
• Relative grounds for refusal
• When peaceful co-existence of marks is impossible

• Word, number
• Logo, symbol
• Slogan JUST DO IT, Save Money. Live Better
• Product or packaging
shape or distinguishing guise
that identifies the source of a specific product or service and
distinguishes it from others in the marketplace.
What is a trade mark?

• Sound
• Color
• Fragrance
• Design of a business establishment
• Motion
Non-Traditional Trademarks

• Trade/Business Name: identifies a company or
business.
– Example: The Coca-Cola Company
• Trademark: identifies the goods or services of
that company.
– Example:
Trademark vs. Business Name

• Indicates the source or origin of goods or
services.
• Assures consumers of the quality of goods
bearing the mark.
• Creates business goodwill and brand
awareness.
Functions of Trademarks

Select Clear Protect
Process of Registration

Selecting a Mark
The more distinctive the mark, the greater its level of legal protectability.
Generic marks are not capable of trademark protection. Descriptive marks
are capable of protection only with a showing of secondary meaning.
Distinctiveness Spectrum

Trademark Searches
• International screening search
• Country-specific search
• Trademark registers – classes/categories
• Corporate names
• Internet uses and domain names
• Other directories/dictionaries
• Local expertise

Cambodia Trademark Search
http://www.wipo.int/branddb/kh/en/

Minimum Filing Requirement
• The applicant name
• The applicant address
• A reproduction of the mark
• A specification of goods or services and classification
• Official fee

Application Process

Rights Obtain from Registration
• the exclusive right to use the registered trademark;
• the right to oppose subsequent conflicting applications;
• the right to bring a cancellation action against a subsequent conflicting registration;
• the right to sue for infringement against confusingly similar third-party trademark use;
• the right to license third parties to use the trademark;
• the right to apply for seizure by customs authorities of counterfeit goods being imported
into this jurisdiction;
• the right to obtain damages for infringement;
• the right to sue for infringement if a transliterated version of the owner’s mark is later used
by a third party;
• the right to oppose and/or cancel subsequent applications for transliterated version of the
registered trademark by third parties
2/24/2020 www.abacus-ip.com 29

Maintaining Registrations
• Recording the affidavit of use or non-use after the
fifth year
• Filing renewal application within 6 months before
expiry
• Recording any changes in the
registrations/applications

Loss of Rights
• Improper use • Failure to police
• Genericide • Failure to renew
• Non-use • Cancellation
• Improper assignment
or licensing

Proper Use — Avoiding Genericide
• Once a trademark, not always a trademark
• Important to
police third
parties’
unauthorized
and/or
improper
use
escalator
dry ice
cellophane
aspirin
linoleum

Scope of protection
• Exclusive right, but
• principle of speciality
• principle of territoriality
• Affidavit of Use/Non-Use (every five years)
• Potentially perpetual (renewal every ten years)
• Risk of loss of protection if:
• improper use, genericide, non-use
• failure to renew, cancellation,
• Allowed uses

INDUSTRIAL DESIGNS

What is an industrial design?
• A design is the outward appearance of the whole or parts of a product resulting
from its features.
• A product is any industrial or handicraft item.
• Requirements for protection
• New (worldwide)
• Some exclusions

Routes for registration
•National
•International (Hague System)

Scope of protection
• Exclusive right
• Principle of territoriality
• Duration (Maximum 15 years)

Cambodian Database
http://www.asean-designview.org/designview/welcome

Industrial Design Examples

GEOGRAPHICAL INDICATIONS

What are geographical indications?
• Geographical indications identify a good as originating in the
territory of a country or a region or locality in that territory, where a
given quality, reputation or other characteristic of the good is
essentially attributable to its geographical origin.

Purpose & Scope
Purpose: The purpose of GI law is to protect the consumers and
the intellectual property rights of producers, operators, to preserve
and strengthen the traditional know-how and national identity, to
create job in rural areas, to develop community, to attract tourists,
and to reduce poverty.
Scope: The agricultural goods, foodstuffs, handcrafted goods and
any other goods produced or transformed in conformity with the
provision of this law may be registered and protected in the
Kingdom of Cambodia.

5 Pillars of GIs

Cambodian GIs
Kampot Pepper Kampong Speu Palm Sugar Koh Trong Pomelo
Scotch WhiskyChampagne

PLANT VARIETY RIGHTS

What are plant variety rights?
• Exclusive exploitation rights for new plant varieties
• Four requirements for protection:
• novelty
• distinctness
• uniformity
• stability
• Right holder = breeder
• Obtained through registration

Scope of protection
• Duration
• At least 20 years
• At least 25 years for varieties of vine and tree species
• Subject-matter
• Propagating material
• Harvested material
• Acts subject to authorisation
• Exceptions

COPYRIGHTS

What is copyright?
• Copyright protects any production of the human mind, such as literary and
artistic works.
• This production must be an expression and not a mere idea.
• The expression must be original.
• Copyright creates a special legal relationship between authors and their work.
• It confers legal protection for a limited period of time.

Scope of protection
• Economic rights
- relate to the economic exploitation of the work
- are freely transferable or licensable
• Moral rights
- relate to a moral interest of the author
- are always retained by the author
• Exceptions and limitations
• Infringement and remedies

TRADE SECRETS

What are trade secrets?
• Information that
• is not generally known or easily discovered
• has a business, commercial or economic value (actual or potential)
because the information is not generally known
• is subject to reasonable efforts to maintain secrecy
• Unlimited life, provided the information does not become public
knowledge.

Products/processes
where reverse
engineering is
difficult
Images from www.coca-cola.com
Scope of protection?

Means of protection
Contractual
• Restrictive covenants in
employment contracts
• Non-disclosure
agreements
Practical
• Limited access to information
• "Need to know“
• Encryption of data
• Monitored entry to
installations

IP in the real world
A practical exercise to help you decide what IP to use and when

An anti-allergy sprayer and spray
NEBU-ALLERG

Which elements can be protected?
 Medicinal product
 Nozzle
 Pumping system
 Sprayer can
 Brand name:
– "NEBU-ALLERG"
 Logo
 Slogan:
"Press green for go!"
 Domain name
 Advertising material

Patents and designs (I)
Medicinal product
Patents for
– the active ingredient?
(the "chemical X")
– the method of making X?
Better as a trade secret?
– the formulation?
(combination of X with other ingredients)
– the method of use?
(i.e. treatment of allergies using X)

Patents and designs (II)
 patent
 utility model
But who owns all this IP?
 patent
 utility model
 designs: registered and unregistered
 trade mark
Pumping systemNozzle
Sprayer can

Trade marks, copyright and domain names
 Brand name: NEBU-ALLERG
 Logo:
 Slogan: "Press green for go!"
 Advertising material:
Who owns all this IP?
 Domain names:
- www.nebu-allerg.com
- www.thegreenbutton.com
trade mark ®
trade mark ®
trade mark ®
copyright ©

What next?
 Patents - search for free in Espacenet's
90+ million documents and Patentscope
 Trade marks and designs - search for free
in eSearch plus, Global brand, Cam-TM Database
TMView
 Seek professional advice
– Is your invention novel, inventive and patentable?
– Do you risk infringing other people's rights?
– Who could you license it to?
– Who could you license from?
– Who are your potential customers,
suppliers and competitors?

For More Information….
Download @ www.abacus-ip.com

Thank You
436 Plov Lum, Chamkar Orvleuk 2,
Sangkat Kakab 2, Khan Posenchey
Phnom Penh 120913, Cambodia
+855 (0)88 8005400 / +855 (0)12 215 129
info@abacus-ip.com
Credit: based on INTA, EPO & EUIPO works with modification. INTA, EPO and
EUIPO are not be responsible for the correctness

Introduction to Intellectual Property in Cambodia

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