BELLMONA case: Reclaiming the right to register trademark for a later-filed application in Cambodia by proving the legitimate ownership
Recently, RONASCOSMETIC CO., LTD, represented by D&N International, has successfully registered the trademark BELLMONA in Cambodia despite a third party’s earlier-filed application for this trademark.
Our client, RONASCOSMETIC CO., LTD., a Korean cosmetic manufacturer (hereinafter “RONASCOSMETIC”), has registered and used its trademark BELLMONA and the stylized variant “” for cosmetic products in numerous nations all over the world.
On July 17, 2020, D&N International, authorized by RONASCOSMETIC, filed a Cambodian trademark application for BELLMONA for cosmetic products in class 03 (hereinafter “the Trademark”).
On December 17, 2020, the Department of Intellectual Property of Cambodia (hereinafter “Cambodian DIP”) issued a provisional refusal of the Trademark due to its similarity to the Cited Mark “” in the name of URBAN COSME CO., LTD having an earlier filing date (namely, February 26, 2020). Accordingly, the Cambodian DIP requested RONASCOSMETIC to provide the evidence proving that the company is the legitimate owner of the trademark.
Noting that the applicant of the Cited Mark had filed the application in dishonesty so as to misappropriate the mark being used by RONASCOSMETIC, D&N International advised the client to collect the evidence proving that the Trademark and its variation “” had been registered and used in commerce prior to the filing date of the Cited Mark and submitted these materials to the Cambodian DIP for justification of the legitimate ownership of the mark in question.
It is worth noting that in this case, the Cambodian, at the same time, requested the applicant of the Cited Mark, URBAN COSME, to provide the evidence to prove its legitimate ownership of the BELLMONA trademark, but the owner failed to respond and, therefore, the Cited Mark was subsequently officially refused on July 14, 2021.
As a result, after considering the evidence and arguments provided by D&N International, the Cambodian DIP has accepted to grant the trademark protection for the Trademark in the name of RONASCOSMETIC.
The provision of Article 4(g) of the Law on Trademarks, Trade Names and Unfair Competition Practices (hereinafter “Trademark Law”) shows that Cambodia is also a country that applies the “first-to-file” principle in the examination of trademark applications.
However, there is a difference in the application of the “first-to-file” principle between Cambodia and many other countries: In the cases where there are a number of applications for the same trademark or confusingly similar trademarks for identical or similar products, filed by different applicants in different dates, the provision of Article 9(a) of the Trademark Law shall be applicable, making the “legitimate ownership” prevail over the “first-to-file” principle. Specifically, in this case: (i) the applicant of the earlier-filed trademark application is not automatically considered the person having the right to register; (ii) all the applicants of the relevant trademark applications are requested to prove their legitimate ownership of the trademark(s) in question, which is essentially to prove that they are the creators and have actually used the trademark(s) in their production and business activities. Then, in the case where only one party responds to the Cambodian DIP’s request, that party will be considered the legitimate owner of the trademark(s). In the case where the parties all file reponses claiming their ownership, the Cambodian DIP will continue to request the parties to file further arguments or to enter a hearing for further consideration.
In the case being discussed, the applicant of the earlier-filed application failed to respond to the DIP, showing that they are not the legitimate owner of the trademark. Thus, the Cambodian DIP had all its necessary basis to grant the protection to the later-filed trademark in the name of RONASCOSMETIC.
It can be seen that this is an interesting point of Cambodia’s trademark law, which is a relatively reasonable combination of both the “first-to-file” and “first to use” principles in determining the ultimate ownership to the applied-for trademark(s), thereby ensure fairness for the legitimate owner, who have worked their fingers to the bone to build the reputation of the trademark, against those who intentionally register the mark with the evil aim to take a free ride of the fame of the brand.