I. Introduction
The Law on Geographical Indications of Goods (“GI Law”) came into force in Cambodia on 20 January 2014, and aims to protect the intellectual property rights of producers, operators and consumers by marking goods/products with a geographical indication (“GI”) as well as to preserve and strengthen traditional know-how, national identity and overall reduce poverty.
Before the GL Law was issued, GI status had already been granted to a number of products, as prescribed by the Prakas on the Procedures for the Registration and Protection of Marks of Goods dated 18 May 2009 (“Prakas”). Since the Prakas related to the procedural aspects of applying for GI registration with the Department of Intellectual Property (part of the Ministry of Commerce (“MOC”)), there had been (until now) no statutory recourse for owners of GIs against infringement.
II. What is a Geographical Indication and why protect it?
A GI is a distinctive name, symbol and/or any other image that represents a geographical origin and identifies goods originating from that area as having a particular quality, reputation or other characteristic attributable to that area. Well known examples include champagne, prosciutto di Parma and gorgonzola cheese.
However, GIs are more than just a name or a symbol. They reflect a reputation strongly linked to geographical areas of varying sizes, giving them an emotional component. A geographical indication’s reputation is a collective, intangible asset. If not protected, it could be used without restriction and its value diminished and eventually lost.
A GI right enables those who have the right to use the indication to prevent its use by a third party whose product does not conform to the applicable standards. For example, in the jurisdictions in which the Darjeeling GI is protected, producers of Darjeeling tea can exclude use of the term “Darjeeling” for tea not grown in their tea gardens or not produced according to the standards set out in the code of practice for the GI.
However, a protected GI does not enable the holder to prevent someone from making a product using the same techniques as those set out in the standards for that indication. Protection for a geographical indication is usually obtained by acquiring a right over the sign that constitutes the indication. Therefore, while a third party, from the same area of production and using the same production techniques as the GI right holder might produce similar (or even identical) goods, it cannot use the registered GI on that product without the consent of the right holder.
III. GI Registration Procedure
Application for registration of a GI must be made by a GI association, comprised of interested parties, including producer groups, operators and institutions in a certain geographical area and in relation to a specific type of goods. Each association must file a “statute” with the MOC and receive acknowledgement from the competent authorities (the meaning of which is unclear). Where an applicant’s permanent residence or principal place of business is outside the Kingdom of Cambodia, the applicant must be represented by a legal agent recognized by the MOC, whose residence and place of business is within Cambodia.
As part of the application, the Association must produce a “book of specifications”, which sets out the criteria that must be met in order for a product to use the GI (when registered). These specifications must include, amongst other things (the exact detail to be determined by the association), the geographical area of production, any production conditions (for instance, if a certain technique must be used to produce the goods) and any quality control processes that the good/product must satisfy. Upon registration, it will be the association that owns the rights to use the GI. However, unlike the owner of a trade mark, the ownership of rights to use a GI does not confer property ownership.
The GI Law also provides for the registration of foreign goods, although for local registration, the foreign goods must previously have been registered as a GI in accordance with the regulations of the country of origin. The procedure for registration, petition and objection for the foreign GIs are then the same as those for local GIs.
So long as the application complies with the required formalities and the specifications the association sets out in its “book of specifications”, there are few restrictions on what may be registered as a GI. However, a GI may not be registered if it is:
(1) contrary to the laws and regulations, value, social morality, religion, good custom of the nation or public order;
(2) likely to mislead or confuse the public with respect to the characteristics, nature, quality, place of origin, production process or use;
(3) used as a name of plant variety or animal breed; or
(4) a generic term.
It is likely that only the last of these exceptions may cause problems for potential applicants. For instance, if the name of a product has become so synonymous in the eyes of a consumer with the product itself rather than where it is actually made, or the process by which it is made, this may defeat registration as a GI.
IV. Rights conferred by registration and penalties for infringement
Upon registration, the MOC will issue the applicant with a certificate of registration and the GI may be used by any member of the applicable GI association. Further, the owner of the GI has the right to file a complaint with the competent court against any person who (without the owner’s consent):
(1) directly or indirectly, and for commercial purposes, uses the GI on goods that are the same as, or comparable to, the goods for which the GI was registered, such that the infringing use unfairly benefits from the reputation conferred by the GI;
(2) uses, imitates, recalls or translates the GI of goods so as to cause confusion among the general public, notwithstanding such use/translation on goods is accompanied by the terms “style”, “specific”, “type”, “methodology”, “method”, “imitation” or similar (or translations thereof);
(3) falsifies, or causes confusion as to, the origin, type or special quality of goods on packaging or advertising materials (or other documents) in connection to the goods; and/or
(4) does any other act which may cause confusion among the general public as to the actual origin of goods.
The penalty for individuals committing any of these infringing acts is one (1) to five (5) years’ imprisonment together with a fine of between KHR 2,000,000–20,000,000 (approximately USD 500-5,000).
The penalties for legal entities committing any infringing act include, amongst others, a fine of between KHR 20,000,000–50,000,000 (approximately USD 5,000–12,500), dissolution of the legal entity, expulsion from public procurement and confiscation of property.
The MOC publishes registration of the GI in an official bulletin in order to allow interested parties to file an objection to such registration within ninety (90) days from the publishing date. If no objection is filed within this time, the registration of the GI is valid from the date the MOC accepted the application form and lasts for a period of ten (10) years (renewable on an ongoing basis).
Today, only two (2) products have been registered as GIs in Cambodia: Kampot Pepper and Kampong Speu Palm Sugar, both in 2010. However, we understand that there are currently numerous local products for which GI registration is anticipated including, Kirivong Pepper, Rattanakiri Café, Siem Reap Sachkrock, Battambang Rice and Battambang Oranges.
