NEW REGULATIONS ON RECORDAL OF TRADEMARK LICENSING AGREEMENTS AND FRANCHISING AGREEMENTS
On 13 January 2020, the Ministry of Commerce (“MOC”) issued a new Prakas 036 on the Recordal of Trademark Licensing Agreements and Franchising Agreements (“Prakas 036”). This Prakas is for the purposes of strengthening intellectual property protection, technology transfer, and expertise in terms of investment appeals, commercial operations, and fair competition of goods and services under trademark licensing agreements and franchising agreements in the Kingdom of Cambodia.
The scope of Prakas 036 covers recordal of licensing agreements, sub-licensing agreements, franchising agreements and sub-franchising agreements for registered trademarks and trademarks under registration process in the Kingdom of Cambodia. If any agreement falls under the scope of Prakas 036 and is not recorded with the Department of Intellectual Property (“DIP”) of the MOC, such agreements will not be effective against third parties.
A recordal must be filed with the DIP within 6 months from the effective date of an agreement. A recorded agreement will be published in the official bulletin of the DIP.
A recorded agreement will be valid for five years from the recording date or less than five years in line with the validity of the recorded agreement and the trademark registration. The validity of the recorded agreement is renewable. The application for such a renewal must be submitted within 6 months before the expiry of the recorded agreement.
If there is a termination of the recorded agreement or there is a change to the trademark’s ownership, the validity of the recorded agreement is automatically lost. Most importantly, the validity of the recorded agreement will be considered void if the MOC discovers any violation of Clause 17 of Prakas 036. This includes breaching statutory conditions governing a recorded agreement including effective implementation of quality inspections of goods and services in regard to the concerned trademark.
When an agreement is recorded under Prakas 036, the transferee or licensee may file a complaint to the court or relevant authorities to pursue causes of action against third parties for the purpose of protecting their rights as provided in the recorded agreement.
If you would like our assistance in submitting a recordal application with the DIP or if you have any other questions or concerns regarding this legal update, please contact us at cambodia@dfdl.com.
The information provided here is for information purposes only and is not intended to constitute legal advice. Legal advice should be obtained from qualified legal counsel for all specific situation.
