Cambodia

Cambodia is rapidly emerging as a significant market in Southeast Asia. Since the trademark office was established in 1991, more IP developments have ensued, with the country promulgating the Law on Geographical Indications (GIs) in 2014, signing the Madrid Agreement in 2015 and establishing the Intellectual Property Association of Cambodia (IPAC) in 2016 to promote public awareness of IP rights and to work with the government to enhance IP legislation. The Department of IP Rights introduced an e-filing system for trademark applications in 2017, which recently expanded to enable online document submission for most post-registration matters. IP rights are clearly a national priority, with champagne the first foreign product to be awarded GI status last year, followed by Scotch whisky. However, despite the Counter Counterfeit Committee of Cambodia (CCCC) taking proactive action to police rampant counterfeiting by launching campaigns such as ‘Stop Fake! Respect intellectual property rights’, fake and illegal goods remain a significant problem. Nevertheless, global companies have taken great interest in Cambodia, with the likes of Apple and Unilever leading the way in trademark filings, which number more than 105,000. In view of these developments, the WTR 1000 has identified 10 among more than 40 registered trademark agents in the country to inaugurate in the Cambodia chapter.

Firms

  • Abacus IP
  • BNG Legal
  • Bun & Associates
  • HBS LAW
  • Kimly IP Service
  • Rouse
  • Schmitt & Orlov
  • Tilleke & Gibbins
  • VNP iNTERPRO Law Office
  • ZICO Law

Abacus IP

For a “highly responsive and competent firm with a real strategic approach”, look no further than Abacus IP. Co-founded by California-qualified David Haskel and Cambodian IP lawyer Thea Pheng in 2015, the IP boutique’s compact team of two belies a mighty offering that spans IP prosecution and enforcement to more complex matters such as licensing and franchising. Well-known global brands entrust them with their local trademark portfolios and instruct them for IP enforcement work, while domestic companies look to them to protect their IP rights because of their “targeted” approach towards trademark searches and applications, as well as legal opinions on domain names. Last year, the firm co-founded the Cambodia Start-up Advisers alliance to support the local start-up community with its IP, legal and tax needs. Armed with more than 10 years’ IP experience, Haskel and Pheng tend to all sorts of commercial and IP problems. Fluent in French, German and Mandarin, Haskel is active on the local IP scene and keeps up to date with the latest legal developments, while Pheng currently leads IPAC as chair.

BNG Legal

For the past two decades, full-service commercial law firm BNG Legal has been tending to the IP needs of a predominantly foreign law firm clientele. Splitting into separate teams to handle trademark filings and enforcement, the seven-strong IP ensemble – which recently added a trademark attorney in anticipation of growing enforcement work – is a favourite among foreign entities, including a global car and machinery manufacturer, which sought advice on anti-counterfeiting and assistance with its local IP enforcement project. Not only does the practice have an outpost in Myanmar and foreign desks in China and Japan, it is active in various local, regional and global IP associations. Founding partner Darwin Hem holds the reins of the IP department. A licensed trademark agent, Hem is described as a peer “well known in the local market and really good in IP work”. His broad legal practice covers real estate as well as corporate and investment issues. He is supported by senior associate and qualified trademark attorney Thavsothaly Tok, who manages enforcement matters and technical issues in prosecution, including reviewing appeals and franchising agreements. With a master’s in commercial law, Tok is also well versed in corporate and commercial matters.

Bun & Associates

Recognised by peers as “one of the best general law firms in Cambodia”, Bun & Associates is set up to meet any business need. When it comes to intellectual property, among the full gamut of services on offer, it also pledges to take the time to educate clients on local IP laws. A team of five registered trademark agents – most of whom were educated overseas – is on hand to tackle complex matters in the trademark prosecution space, especially appeals against office actions. The set also works closely with four lawyers in the litigation group on contentious matters, including providing strategic advice on anti-counterfeiting efforts. The firm has recently seen an uptick in instructions from the food and beverage and real estate industries, where companies are looking to register more trademarks and develop branding strategies. After studying to obtain a doctor of laws (comparative law) in Japan, where he spent six years researching the patent systems of various countries, Sovath Phin discovered his passion for intellectual property. An “impressive” lawyer with a broad legal practice ranging from intellectual property to corporate, M&A, investments and commercial arbitration, Phin has assisted the government in drafting local IP laws and regulations.

HBS LAW

Since 2005 HBS Law has been tending to the legal needs of an extensive client base with fast and reliable services central to their offering. With a specialty in complex IP matters, the general law firm goes beyond simple trademark filing by digging deep and analysing issues for foreign associates and large domestic companies. The outfit shines brightest in the IP enforcement space, although the overseas-educated team is also fluent in local patent procedures and helps foreign entities to file patents in Cambodia – all amid creating an in-house trademark portfolio management system to boost its services. With six years of IP experience under her belt, Sophorn Pouvchannita is the “patient” captain at the helm of the IP department, who is laser focused on enforcement matters. She coordinates the IP administrative and enforcement functions, including three registered trademark agents. Recognised by peers as “a senior professional in the local IP space”, French-speaking business lawyer Tayseng Ly is another name for the address book.

Kimly IP Service

Established in 1994 – three years after the IP department was founded – Kimly IP Service is one of the oldest trademark filing agencies in the country and is historically popular among foreign law firms and companies alike for its extremely competitive fees. “Well connected in the local IP community,” the firm boasts a team that includes two Cambodian IP lawyers. It focuses exclusively on filing trademarks and claims to handle 60% of all local trademark registrations. Som Veasna is a name to remember.

Rouse

For over 15 years global IP consultancy Rouse Legal had been working on IP matters in Cambodia via its Vietnam office, until Cambodia-qualified attorney Sokunvannary Tep opened the firm’s local outpost in 2017 with Hong Kong-based director Chris Vale. Since then, the team on the ground has blossomed into a six-strong outfit, including three IP specialists and two new recruits from a local leading law firm. A testament to the group’s expertise is its illustrious clientele; the Cambodian ensemble assists household brands such as Mars, Google LLC and Airbnb with their multi-jurisdictional trademark portfolios. It also advises three of the largest US tech companies on trademark strategy in Cambodia and has aided one of China’s largest tech unicorns in entering the local market. Although much of the team’s IP practice centres on trademark filing and prosecution, it is not to be underestimated on the enforcement front either. Not only does the outfit file oppositions and cancellations to protect clients’ IP rights, it is also taking enforcement action against counterfeiters in Cambodia and across jurisdictions under Tep’s supervision. With a JD from South Korea and US bar qualifications, she is well poised to handle trademark mandates of all shapes and sizes.

Schmitt & Orlov

Aware of the increasing flow of counterfeit goods between Cambodia and Vietnam, Schmitt & Orlov quickly positioned itself in the region as early as 2013 with an outpost in Phnom Penh, adding to its growing portfolio of offices in Russia, Hong Kong, China and Southeast Asia. Whether it is trademark prosecution, enforcement or customs training, the full-service IP firm can cater to the local IP needs of any multinational. It recently assisted Jean Cassegrain SAS in a multi-jurisdictional anti-counterfeiting programme against trademark infringement occurring in Cambodia, Laos, Myanmar, Thailand and Vietnam. Deputy director for Southeast Asia Hau Nguyen oversees both the Vietnamese and Cambodian outposts from her home base in Vietnam, while Pawarisa (Fon) Suwannachote has been tending to client needs on the ground since 2019. Besides having over seven years’ IP experience in Thailand and neighbouring countries, Suwannachote is also a registered patent agent and a moderator for domestic and international anti-counterfeiting training events.

Tilleke & Gibbins

Multinationals struggling against counterfeit issues in Cambodia can depend on regional law firm Tilleke & Gibbins. “Quick responses and diligent work” are the hallmarks of one of the largest local IP teams, which includes five lawyers, three paralegals and two support staff, who are supported by a regional network numbering more than 270 professionals across Southeast Asia. Since the outfit set up shop in 2015, it has been at the forefront of local IP developments – including being the first professional services firm in the country to sign an anti-corruption memorandum with the Cambodian government. It also carried out the country’s first enforcement raid against a design patent infringer. An enviable list of clients, including Wynn Casinos, cannot help but enthuse about the group. “The proactive lawyers have good experience with local practices and provide regular feedback on the case status. Through their goal-oriented solution, the infringer cooperated too.” For trademark enforcement cases, David Mol takes the lead, having established close relationships with local authorities and the CCCC over the past five years. A graduate from the Royal University of Phnom Penh, Sokmean Chea governs all IP cases and trademark registration matters.

VNP iNTERPRO Law Office

Founded by experienced IP specialist Vichet Ny in 2018, VNP iNTERPRO Law Office is one of few IP boutiques in the country to offer the full spectrum of IP services, as well as legal advice in real estate, employment and banking, to local and international clients. This includes assisting foreign law firms and domestic companies with all their trademark registration needs. “A valuable and reliable partner, the firm is very responsive to our queries and provides very useful advice. Fees are also reasonable.” Fluent in French, Ny is well versed in IP legislation, having studied intellectual property in France and received IP training at the Japan Patent Office. He is famous among peers for his expertise in enforcement matters and a high-profile figure in the local IP space. The current president of the Asian Patent Attorneys Association’s Cambodia group helped to establish IPAC and continues to provide IP training to local lawyers. He is assisted by Chinese-speaking Sopheary Kou.

ZICO Law

From its headquarters in Phnom Penh and a newly established branch in Siem Reap, SokSiphana & Associates tackles the full range of IP matters with verve. Since joining the ZICO Law network in 2012, the general law firm has had access to extensive legal expertise, resources and market insight in the Association of Southeast Asian Nations (ASEAN) region, while keeping abreast of the latest changes in IP legislation around the world. Among the first to become a locally qualified trademark agent, Mealy Khieu has witnessed the development of Cambodian IP law over the years and helped to set up IPAC. Besides taking charge of the all-female team of four to assist foreign brand owners as well as foreign associates with local IP rights protection, Khieu also advises on corporate banking and real estate matters. The head of the Cambodia group at the ASEAN Intellectual Property Association often represents the country at international IP events too. She is supported by her right-hand woman, IP specialist Chhim Leakena.

Individuals

  • Sokmean Chea - Tilleke & Gibbins
  • David Haskel - Abacus IP
  • Darwin Hem - BNG Legal
  • Mealy Khieu - ZICO Law
  • David Mol - Tilleke & Gibbins
  • Vichet Ny - VNP iNTERPRO Law Office
  • Thea Pheng - Abacus IP
  • Sovath Phin - Bun & Associates
  • Sophorn Pouvchannita - HBS LAW
  • Pawarisa (Fon) Suwannachote - Schmitt & Orlov
  • Sokunvannary Tep - Rouse
  • Thavsothaly Tok - BNG Legal