One of the fundamental principles of trademark protection is that trademark rights should only be maintained when the trademark is genuinely used in commerce. The purpose of this principle is to prevent the passive hoarding of trademarks, ensuring that registered trademarks are intended for actual use, generate value, and contribute to socio-economic development, while also creating fair opportunities for others to obtain and exploit registered trademarks that are no longer being used.
On this basis, the laws of many jurisdictions provide for the cancellation of trademarks that have not been used for a specified period of time. Cambodia is no exception. However, the current legal framework in Cambodia contains several inadequacies that make the non-use cancellation mechanism almost impossible to enforce in practice.
I. Provisions on trademark cancellation based on non-use and inadequacies
Article 15 of the Law Concerning Marks, Trade Names and Acts of Unfair Competition of the Kingdom of Cambodia provides:
“Any interested person may request the Ministry of Commerce to remove a mark from the Register, in respect of any of the goods or services in respect of which it is registered, on the ground that up to one month prior to filing the request the mark had, after its registration, not been used by the registered owner or a licensee during a continuous period of five years…”
In theory, this provision establishes an important mechanism for removing trademarks that are no longer being exploited in the marketplace. It also provides a legal basis for third parties to seek cancellation of trademarks that obstruct the registration or use of their own marks in Cambodia.
However, Article 15 further provides that:
“…a mark shall not be removed if it is shown that special circumstances prevented the use of the mark and that there was no intention not to use or to abandon the same in respect of those goods or services.”
This exception was originally intended to protect trademark owners in cases of force majeure or other objective circumstances beyond their control. However, when combined with other provisions, it significantly undermines the effectiveness of the non-use cancellation mechanism.
Specifically, the following issues arise:
1. The “Affidavit of Non-Use” mechanism has neutralized the purpose of the non-use requirement
Under Article 21 of the Sub-Decree on the Implementation of Law Concerning Marks, Trade Names and Acts of Unfair Competition of the Kingdom of Cambodia, a trademark owner is required to file an Affidavit of Use or Non-Use within one year following the fifth anniversary of the date of registration or renewal (if the mark has been renewed). Accordingly, where the trademark is being used, the owner must submit an Affidavit of Use together with evidence of use. However, where the trademark is not being used, the owner may instead file an Affidavit of Non-Use stating that:
“The mark is not in use at the time of filing this Affidavit, but is intended to be used and there is no intention to abandon the use and the said non-use is due to justifiable circumstances”
Importantly, Cambodian law does not currently require the trademark owner to:
- Prove the existence of the “justifiable circumstances” justifying non-use;
- Provide evidence of objective obstacles that prevented use;
- Demonstrate any concrete plan or intention to use the trademark in the future;
- Show preparatory activities for commercialization of the trademark.
In other words, the assertion of “justifiable circumstances” is currently nothing more than a unilateral statement by the trademark owner and is not subject to any substantive examination by the authorities. Likewise, there is no requirement to provide evidence demonstrating that the mark “is intended to be used and there is no intention to abandon the use”, making these requirements vague and largely formalistic.
This creates a legal paradox: although the law provides that a trademark may be cancelled after five consecutive years of non-use, trademark owners can easily maintain their registrations merely by filing a simple declaration stating that they intend to use the trademark in the future.
2. Lack of clear standards for proving use
Another shortcoming is that Cambodian law currently does not impose strict standards regarding evidence of trademark use. Under current practice, evidence of use may originate from virtually any third party and does not necessarily need to come from the trademark owner or an authorized user.
This approach weakens the connection between actual use and trademark ownership rights, while increasing the risk that formalistic or artificially created evidence may be accepted solely for the purpose of avoiding cancellation. Furthermore, it makes it difficult for the authorities to determine whether the alleged use genuinely reflects the owner’s commercial activities.
By contrast, in many other jurisdictions, including Vietnam, trademark use must be carried out by the trademark owner or an authorized licensee, and evidence must clearly demonstrate genuine commercial exploitation of the trademark in relation to the registered goods or services.
3. Lack of proactive enforcement
Article 21(4) of the Sub-Decree provides that:
“A registered mark will be removed from the Register if the owner of the mark or his/her legal agent fails to file the Affidavit of Use or Non-Use of that mark within the prescribed period.”
However, in practice, the Cambodian Intellectual Property Office has rarely taken proactive steps to remove trademark registrations that fail to comply with this requirement. As a result, there remains a significant gap between the law on paper and its practical implementation. No matter how well-designed a legal mechanism may be, it is unlikely to function effectively without proper compliance monitoring, review, and enforcement by the competent authorities.
4. Restoration provisions undermine the cleansing function of the system
Even where a trademark is removed from the Register for failure to file the Affidavit of Use or Non-Use within the prescribed period, Section 6 of Article 24 of the Sub-Decree allows the owner to request restoration of the trademark registration within 60 days from the date of the removal decision.
If such restoration is permitted without stringent requirements regarding justification and supporting evidence, it significantly weakens the cleansing function of the trademark registration system. In effect, trademark owners are almost always given a “second chance” to maintain their registrations and revive their trademarks, even where they have failed to comply with the statutory requirements regarding use or the filing of an Affidavit of Use or Non-Use.
II. Legal and practical consequences
The shortcomings mentioned above give rise to several concerning legal consequences:
- Increased “trademark warehousing”: Parties may register and maintain large numbers of trademarks without any genuine intention to use them, merely to reserve rights or for future contingencies.
- Reduced accuracy of the Trademark Register: The register no longer accurately reflects trademarks that are genuinely being used in the marketplace, but instead becomes a repository for marks that exist only on paper.
- Barriers to market entry and increased legal costs: Businesses, particularly start-ups, may be prevented from registering trademarks they wish to use because of earlier registrations that are not actually used in the market. As a result, they may be forced to pursue more complex and costly alternatives, such as negotiating assignments, obtaining Letters of Consent, or rebranding, rather than relying on the non-use cancellation mechanism.
- Negative impact on the investment environment: A trademark system that lacks an effective mechanism for removing registrations with no genuine commercial value may reduce the transparency and predictability of the legal environment, particularly from the perspective of foreign investors.
Conclusion
Although Cambodian law formally recognizes a mechanism for cancelling trademarks on the grounds of non-use, the combination of the regulation on filing the Affidavit of Use or Non-Use, lenient evidentiary standards, limited enforcement, and relatively easy restoration procedures has significantly diminished its effectiveness in practice.
From a practical perspective, pursuing trademark cancellation on the grounds of non-use in Cambodia remains a high-risk strategy with uncertain prospects of success. Therefore, where a business’s mark registration is blocked by an earlier trademark that is not being used in Cambodia, it should simultaneously consider alternative approaches-such as negotiating with the trademark owner, obtaining a Letter of Consent, acquiring the trademark via assignment, or adopting an alternative filing strategy, rather than relying solely on the non-use cancellation mechanism.
By Tran Thi Anh Thi
Trademark Department
