Intellectual Property for SMEs in Cambodia
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Presentation by Mr. Pheng Thea on behalf of the South-East Asia IPR SME Helpdesk at the EPO-MIH Cambodia Conference on Intellectual Property, 28 January 2020 in Phnom Penh, Cambodia
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Intellectual Property for SMEs in Cambodia
- 1. Pheng Thea External Expert, South-East Asia IPR SME Helpdesk Partner, Abacus IP 28 January 2020 EPO - MIH Cambodia Conference On Intellectual Property
- 2. An initiative of the 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. Pheng is a graduate of the faculty of law of Pannasastra University of Cambodia. In addition, he holds a Certification in Intellectual Property Specialization from the World Intellectual Property Organization and the University of South Africa. Professional Memberships: Intellectual Property Association of Cambodia, Chairman; ASEAN IP Association, Council Member; International Trademark Association, Legislation and Regulation Committee; South-East Asia IPR SME Helpdesk, Member of Panel of Experts; Asian Patent Attorney Association, Member © European Union, 2019. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39. Speaker’s Bio
- 3. An initiative of the © European Union, 2019. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39. • Intro to helpdesk • Challenges faced by SMEs in Cambodia (access to information, lack of business registration, informality…) • Areas of IP for SMEs to consider • TM Search / Clearance • Registration • Benefit of Registration • Maintenance • Enforcement • Looking to the future… Agenda
- 4. An initiative of the © European Union, 2019. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39. Core Services – What We Offer Enquiry Helpline Webinars and E-learning modules Training Workshops Website & Blog Newsletter, E-Bulletin Guides and factsheets
- 5. An initiative of the © European Union, 2019. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39. • 99% of businesses • 40-50% of employment • Almost all operate in informal sector Cambodian SMEs: Facts & Figures Employees Assets Micro < 10 < $50k Small 11 – 50 $50-250k Medium 51 – 100 $250 – 500k Large 100+ $500k +
- 6. An initiative of the © European Union, 2019. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39. • High Regulatory Compliance Costs • Lack of Access to Information • Limited Access to Finance • Lack of Framework for SME Development • Uneven Playing Field • Low Productivity SME Challenges & Constraints Source: Ministry of Industry Mines and Energy Annual Report
- 7. An initiative of the © European Union, 2019. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39. Importance Reason Trademark Most SMEs have a brand name to protect Copyright © content being created, little protection Patent Little domestic innovation Trade Secret Lack of legal framework Geographic Indication 3 GIs registered Overview of IP for SMEs in Cambodia
- 8. An initiative of the © European Union, 2019. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39. • Most SMEs decide on a name without clearance • Problem when they: • Incorporate • Apply for trademark registration • Infringement • Perform a clearance search through: • Request to Department of Intellectual Property Rights • Do it through online database Trademark Clearance
- 9. An initiative of the © European Union, 2019. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39. Trademark Registration
- 10. An initiative of the © European Union, 2019. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39. • Exclusive right to use the registered mark • Right to oppose subsequent conflicting application • Right to cancel subsequent conflicting registration • Right to sue for infringement against confusing similar use • Right to apply for seizure by customs authority • Right to license third parties to use • Right to obtain damage for infringement • Right to file a complaint to the competent court Benefits of Registration
- 11. An initiative of the © European Union, 2019. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39. • Recording the affidavit of use or non-use after the fifth year of registration • Filing renewal application in tenth year since application • Recording any changes in the registrations/applications Trademark Maintenance
- 12. An initiative of the © European Union, 2019. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39. • Market Awareness • Phone Call or Cease & Desist Letter • Mediation through Department of Intellectual Property Rights • Court case Trademark Enforcement
- 13. An initiative of the © European Union, 2019. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39. • Growing domestic innovation • Improved awareness of IP • Completion and expansion of legal framework … SMEs and the Future of IP
- 14. An initiative of the © European Union, 2019. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39. © European Union, 2019. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39. Thanks for your attention Questions? © European Union, 2019. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39.
- 15. An initiative of the Thank you for your attention! Stay connected! South-East Asia IPR SME Helpdesk @ iprSEAsia South-East Asia IPR SME Helpdesk www.yourIPinsider.eu Channel: http:// www.ipr-hub.eu/desk TV www.ipr-hub.eu © European Union, 2019. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39.
Editor's Notes
- The South-East Asia IP SME Helpdesk if an initiative of the European Commission. The Helpdesk offers FREE OF CHARGE, first-line support on IP rights to facilitate the expansion of the European Union small and medium-sized enterprises that operate or intend to access the South-East Asian market. OUR SERVICES COVER THE FOLLOWINGS: Enquiry Helpline The helpdesk delivers confidential and tailored-made answers/ advices to your IP enquiries related to South-East Asia within a three working days. You can get in touch with the helpdesk via question@southeastasia-iprheldesk.eu or call the helpline number. Onsite & Online Training The Helpdesk organizes free-of-charge onsite trainings and webinars to EU SMEs in Europe and across the ASEAN countries. Keep an eye on the helpdesk events calendar to see what are the upcoming events and webinars. Guides & Factsheets Through our website, you can access free of charge to various publications e.g. IP Country Factsheets for each ASEAN countries, IP guides on general, industry specific topics. Last but not least, the Helpdesk also developed interactive learning tools for example E-learning modules on various IP topics or infographics, you can find them on the helpdesk website.
- To start with, what do we mean by an SME in Cambodia… the government definition is based on employment and assets. So up to 100 employees and $500k in assets. That is a fairly large firm in Cambodia. Most are much smaller, with lots of sole traders and micro-enterprises.
- Source: Ministry of Industry Mines and Energy Annual Report The first two are most applicable to IP, with the cost of registering and enforcing their rights and information regarding how to do so.
- IP in Cambodia is dominated by trademark law, with patents playing a growing role but almost exclusively for foreign owners. Copyright is pervasive, in that copyrighted content is being created constantly, but little in the way of enforcement. Trade secrets – still awaiting the law And lastly, GIs – three registered already. So important for producers of GI protected goods, but otherwise a small niche. For the remainder of my time, I will focus on trademarks for SMEs
- First challenge is just a basic awareness of what a trademark is, and why a business should be aware of them in deciding on a name. I haven’t done a survey, but my general impression is that almost all SMEs just pick a name and design a logo without any consideration for whether it is protectable or infringing. Two ways to do a clearance search: In person request to DIPR – cost associated, legwork of going there and picking it up. But reliable. Do it yourself through online WIPO database – free, but takes a good deal of expertise – especially clearing a design
- In Cambodia, trademarks are registered and administered by the Department of Intellectual Property Rights within the Ministry of Commerce. The applicant can represent themselves, or through a licensed trademark agent. The registration process starts with an application filing, which needs simply a notarized power of attorney, the mark and list of goods/services. Payment of official fee of $40 on filing The application will next undergo a formality check whether the information requirements written in the applications are correct and the original POA is submitted, followed by substantive examination. It usually takes around nine months to one year to get either acceptance or notice of rejection, which will state the reasons. In that case, you either need to abandon the application, accept the changes proposed, or appeal the decision. Once it is finally accepted, another $65 official fee is due, the mark is published in the official gazette and a certificate is issued. Conclusion: relatively complicated for an SME. Especially what to do when their application is provisionally refused, as most likely expect the application to be automatically granted.
- Once the mark has been registered with the Ministry of Commerce, Cambodia. The owner of the registered mark has the following rights: right to use the registered mark on the registered products/services throughout the country oppose the subsequent conflicting application if they are confusingly similar with yours oppose the subsequent conflicting registration sue for infringement against confusingly similar/identical use in respect with the same goods/services There is no custom recordal but you still can enforce right at the customs office by filing a complaint and pay the official fees license the mark to third parties to use in return of royalty right to claim for damage or compensation for infringement right to file a complaint to the competent court / three level of courts
- SMEs often believe that once they’ve registered, that is all they have to do, that they have the right forever. Not the case Trademark is valid for ten years counting from the filing date. In order to maintain the registration, the applicant must submit request the recordal of affidavit of use/non-use to the Registrar after the fifth year counting from the date of registration. The necessary documents are the request signed by local agent or attorney, original trademark certificate and the signed affidavit of use or non-use form. Renewal: If the client fails to submit within 6 month before the expiry date, they can submit within 6 month after expiry with late fee. Otherwise, the registered mark will deem to be inactive or abandon. The minimum requirements are the copy of registration certificate, endorsed affidavit of use or non use form which received after recording the affidavit of use in the fifth year and the original notarized POA if a local agent or attorney is appointed. Any changes in the registration or applications must be submitted in writing to DIP and recorded. The changes can be change of names, address, assignments, mergers, goods/services etc.
- Market Awareness: are other traders using your mark? Or a similar one? How similar? C&D: first step is simply to contact the other party and make them aware of the situation. Often times innocent infringement based on lack of understanding. Can be remedied relatively easily if identified addressed early. Third step: Mediation through DIPR. Non-binding but very helpful and effective. DIPR will inform the accused infringer and bring the parties to the table for a discussion and presentation of arguments. If a settlement reached, both parties will sign an agreement that is legally binding. Otherwise they can proceed to court or other
- Looking to the future, IP in Cambodia for SMEs will be much more than just a consideration of trademark rights. First, there is a very vibrant startup scene here. We can expect more and more domestic innovation, and patentable innovations being invented in the near future. Recommendations: Choose a strong mark, use the mark correctly, monitor, enforce Second, a growing awareness of IP rights in general. Through the efforts of the government ministries and the IP community through IPAC, there is certainly more knowledge of IP than a decade ago. I would foresee that growing and growing Third, filling in gaps in the laws and further regulations, such as the enactment of the trade secret law.