If trademarks are infringed in Cambodia, there are three main avenues of enforcement: administrative actions, civil litigation and criminal prosecution. In many cases, however, private mediation via legal professionals is more effective and should be considered as a viable option.
Administrative proceedings can be initiated at the Department of Intellectual Property Rights (DIPR). In an administrative proceeding, the DIPR conducts one or more hearings and serves as a mediator between the parties. Without having binding power, the DIPR has an excellent track record in convincing infringers to sign undertakings to cease unlawful activities.
Trade mark owners may sue for monetary damages in Cambodian civil court. It should be noted that only trade mark owners or licensees (under certain conditions) may seek civil remedies for trade mark infringement where such remedies include the power to grant injunctions, awards and monetary damages etc. The court also has the power to order preliminary injunctions or temporary restraining orders to prevent infringement or imminent infringement, or to preserve evidence.
Initiating civil procedure in Cambodian civil court can be time-consuming and expensive due to systematic problems in the Cambodian judiciary.
Trade mark infringement is punishable with fines ranging from 1 million Riels and 20 million Riels (approximately EUR 190 to EUR 3,700) and/or imprisonment for one to five years. The maximum penalty for a repeat offender is the doubling of both the fine and term of imprisonment. Goods that are imported, sold, offered for sale or held for the purpose of sale in violation of the law shall be confiscated or destroyed, whether or not anyone has been convicted of an offence. In cases where the infringer is a juristic person, the managing director, manager or legal representative may be criminally prosecuted, unless evidence is provided by the defendant that he or she had no knowledge of the infringement.
Using Customs to block counterfeits
As most infringing goods in Cambodia are imported, filing a request to suspend customs clearance and destroy counterfeit goods can be an effective means to enforce trade marks in Cambodia. The customs authority will suspend clearance of the goods for a defined period, which may not be extended for more than 10 working days. Moreover, if the applicant wishes to destroy the counterfeit goods, civil court proceedings must be initiated within ten (10) working days of suspension of the goods because the customs authorities may only destroy counterfeit goods with a court’s approval. The customs authority will release the goods if the applicant does not initiate court proceedings.
In order to benefit from customs protection, the trade mark owner needs to file a request to the customs authorities to suspend customs clearance and destroy counterfeit goods. An application for suspension of customs clearance must contain:
- A statement showing prima facie evidence (evidence which supports the claim) of counterfeit;
- A description of the goods;
- Proof of trade mark registration; and
- The applicant’s information
The authorities may also require the applicant to pay a security deposit or provide other assurance for the suspension.