“DEGREE”: Cambodian DIP accepts the inherent registrability of the mark following applicant’s submissions against the provisional refusal

adminquantri - January 21, 2022

DegreeIn October 2020, Angles World Pte. Ltd.’s Cambodian trademark application for “DEGREE” applied for “ashtrays for smokers, cigarettes, cigarillos, cigarette filters, etc.” in class 34 was provisionally refused by the Cambodian Department of Intellectual Property (“DIP”) as it was considered a generic word and, at the same time, descriptive of the designated goods, thus devoid of distinctiveness, as per Article 4(a) of the Law concerning Marks, Trade Names and Acts of Unfair Competition.

As the authorized agent, D&N International advised and assisted our client to file a response to the refusal based on the main arguments that (i) the applied-for mark is an English word which has multiple different meanings, none of which refers to any name/kind/type/category or meaning of any goods, (ii) the applied-for mark is only, to some extent, suggestive but not descriptive of the designated goods, and (iii) the international trademark examination practice shows that the word “Degree” has been accepted for trademark registration for various goods in various classes even “alcoholic drinks” in class 33 in many countries including English-speaking ones such as the USA or Australia. As a matter of fact, many trademarks which consist exclusively or essentially of the word “DEGREE” have been granted registrations for class 34 in various countries such as the UAE, Vietnam, India etc.

After reviewing our submissions, in May 2021, the Cambodian DIP agreed with our arguments that the applied-for mark is neither generic nor descriptive of the designated goods and, as a result, granted it a registration.

Over the past years, D&N International has successfully handled hundreds of refusals of trademark applications issued by the Cambodian DIP. In the above case of “DEGREE”, our attorneys again employed their proficient English language in the arguments before the Cambodia DIP concerning the meanings of the applied-for mark, and skillfully invoked the local trademark examination regulations and practice in opposing the examiners’ opinions. Also, as always, we made a thorough study and presented all the most valuable precedential cases from trademark databases of various countries across the world in support of our arguments.