Cigarette Packaging Spat Reveals Trademark Confusion } } ‘

The Ministry of Commerce has ordered a Cambodian company to stop producing a line of its cigarettes because the packaging is similar to a brand belonging to tobacco giant British American Tobacco Cambodia.

The case is one of the first trademark infringement disputes involving a multinational firm in Cambodia, Commerce officials said Monday. But the dispute appears to stem more from confusion in the government over who is ultimately responsible for issuing trademarks.

Hong International Co introduced its Elephant brand in May. Its red and gold stripe design with a white elephant bears a strong resemblance to that of ARA, a brand relaunched with much pomp and fanfare by Brit­ish American Tobacco at the end of 1997. The only obvious difference is that ARA features a white bird.

In June, after a complaint from British American Tobacco, Com­merce Minister Cham Prasidh ordered Hong International to stop production by the end of August, Var Roth San, the deputy chief of international relations and trademark office, said Mon­day.

The ARA brand was registered as a trademark in November, according to the Commerce Min­i­stry. But Hong International has insisted that it has permission to use the design as well—from the Ministry of Industry.

While the Industry Ministry should have given the company only the go-ahead to produce cigarettes, Var Roth San said, the certificate appears to register the package design as well.

Although this appears to be the first time a dispute has arisen be­cause two companies have been granted use of a trademark by two ministries, another was averted Monday, Var Roth San said.

Cambodian firm Cheng Seng Import contacted the Commerce Ministry after Industry gave it permission to produce cigarettes called “Peace.”

Var Roth San said he recognized the name as one used by a Japanese tobacco firm, and asked the company to use a different name. The company agreed.

Intellectual property rights are still a relatively new concept in Cambodia, where pirated videos and compact discs are widely available. The country belongs to the World Intellectual Property Organization and more than 10,000 trademarks have been registered in Cambodia. An intellectual property rights law is still at the draft stage.

The job of issuing trademarks rests with the Commerce Mini­stry, but patents and design are the responsibility of Industry. Var Roth San pinned much of the blame for the tobacco pack disputes on the division of patent and trademark responsibilities and expressed hope that the next government will move to end the confusion by consolidating the process of registering trademarks.

“Now Commerce is responsible for trademarks and Industry for patents and design, but only in Cambodia is it like this,” Var Roth San said. “Trademarks, patents should be under one roof.”

Industry Ministry officials could not be reached for comment Monday.

Meanwhile, it remains unclear how the controversy over Hong International’s package design will be resolved.

Cham Prasidh has asked the Industry Ministry not to renew the trademark when it expires.

British American Tobacco Cambodia has been running newspaper advertisements in both Khmer and English papers warning customers to beware because “unscrupulous individuals have attempted to unlawfully imitate the ARA trademark in order to confuse the public when purchasing cigarettes.”

The multinational firm on Monday declined to comment further on the matter, other than to say it wished to work with the government to strengthen the protection of intellectual property rights.

Hong International has agreed to a slight redesign, but is still using the same red and gold color scheme, Var Roth San said, and management has also written to say they would be willing to go to court over the issue.

A representative for Hong International said Monday the company’s owner is in Australia, and a decision would be made when she returns.

Without a property rights law, Var Roth San acknowledged, the Commerce Ministry has little power to stop Hong International from producing its cigarettes. “I hope [the two companies] will find a compromise.”

 

 

 

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