Trademarks in Bhutan

A trademark is a distinctive sign or indicator used by an individual, business organization, or other legal entity to identify that the products or services to consumers with which the

Trademark appears originate from a unique source, and to distinguish its products or services from those of other entities.

Trademarks in Bhutan are designated by the following symbols:

Ôäó (for an unregistered trademark, that is, a mark used to promote or brand goods)

Ôäá (for an unregistered service mark, that is, a mark used to promote or brand services)

® (for a registered trademark)

The owner of a registered trademark may commence legal proceedings against trademark infringement of its mark.

Under the Intellectual Property Law of Bhutan, it is not mandatory to register a trademark. Unregistered trademarks can be protected against unauthorized use under the common law action for passing off.

A trademark search in Bhutan can be conducted for word marks as well as device marks. Prior to filing of a trademark application, it is advisable to conduct a trademark search to ascertain                   the availability of deceptively similar trademarks, existence of prior identical/similar marks on the register etc.

Trademark search is conducted to avoid any objection and opposition in future on the grounds of prior similar marks.

Trademark searches can be classified into following categories:

1. Word Search
2. Device Search

Word mark search edition of Bhutan follows the Nice Classification and trademark can be filed for goods falling under classes 1-34 and services falling under classes 35-45. Trademark searches in Bhutan can be conducted for the desired classes and associated classes.

Along with trademark search, it is also advisable to conduct a comprehensive company search and domain search of the proposed trademark in Bhutan.

Device mark or figuration trademark includes marks such as stylized letters, numerals, shapes, plants, celestial bodies, living creatures etc. A device mark search can be conducted in respect of desired goods and services falling under classes 1-45.

A device mark can be searched with the help of International Classification of Figurative Elements of Marks which prescribes Vienna Codes for different figures

Trademark filing and applications in Bhutan is regulated under the Industrial Property Act of 2001. Trademark applications in Bhutan can be filed in two categories:

• Ordinary Applications
• Convention Application (claiming priority from a convention country)

Ordinary trademark applications filed in Bhutan are applications which are filed without claiming any priority. Multi class trademark applications can be filed in Bhutan.

A priority trademark application should be filed in Bhutan within 6 months after the date on which the application was made in the convention country.

The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on March 20, 1883, established a Union for the protection of industrial property. It offers national treatment to the applicant residing in the member country of the union, in other words. National treatment is a very important concept and is essential for successfully achieving the fundamental aim of the Paris Convention. The idea is to provide equal treatment to applications from member countries, in a given member country and not to differentiate between the nationals of member countries for the purpose of grant, and protection of industrial property. Priority application can be filed in Bhutan within 6 months of after the date on which the application was made in the Convention Countries. The trademark shall, if registered under the Act, will be registered as of the date as which the application was made in the Convention Country and that date shall be deemed for the purpose of the Act to be the date of registration.

Bhutan follows the International Classification of Goods and Services. The Nice Classification consists of a list of classes and an alphabetical list of goods and services. There are 34 classes of goods and 11 classes of services form classes 1 to 45.

An application for registration of trademark in Bhutan is to be filed with the Intellectual Property Division, Bhutan in the prescribed form alongwith payment of requisite fees.

Any person who claims to be the proprietor of the trademark can file an application for its mark in respect of desired goods/services. The trademark application is required to be filed at the Trademark Registry, Thimphu.

After filing the trademark application, the same is examined by the Trademarks Registry so as to ascertain its inherent registrability and/or any similarity with existing marks. If any objection is raised, an official examination report will be issued by Trademarks Registry. To overcome the objection, it is necessary to file a response to examination report along with the supporting documents showing the marks as used.

If, following examination, the trademark application is considered allowable, acceptance order is issued, and thereafter the trademark is published in the Trademarks Journal. If there are no oppositions filed within 3 months from the date of advertisement in the Trademarks Journal, then the trademark registration certificate is issued.

Trademark registration is a long process and it takes around 12-18 months (depending on the backlog at the trade marks office) to obtain registration in case no opposition has been filed by a third party.

Once a trademark is registered in Bhutan, it is valid for a period of 10 years from the date of application. The trademark registration can then be renewed for a further period of 10 years from the date of expiration of registration or of the last renewal of the registration.

After an application is filed the same is then examined by the Registrar with regard to the distinctiveness, possibility of deceptiveness and conflicting trademarks. If an objection to registration is raised, an official examination report will be issued by the Registrar depending on the back log at the registry.

The Registrar may accept or refuse the application subject to the provisions of the ordinance. A trademark application in Bhutan can be refused/ objected by the Registrar on following grounds:

• A mark is similar/ identical to an earlier trademark for the same or similar goods/ services.

• A mark which is similar/identical to an earlier trademark in respect of different goods/services.

The above categories of marks may however be registered if the proprietor of the earlier trademark consents or there has been an honest concurrent use of the later mark.

Further the objections raised by the Registrar with regard to an application, is forwarded to the applicant and the applicant has to file an appropriate reply with the supporting documents to the official objections within 2 months. The Registrar may accept the application on the basis of the reply and documents filed or may list the application for hearing. When an application for registration of a trademark is accepted, the Registrar advertises it in the official Trademarks Journal.

After examination and upon acceptance of the response by the Registrar, the application is ordered for advertisement /publication in the Trademarks Journal. An application is advertised in the Trademarks Journal for a period of 3 months from the date of publication, so as to invite the public for filing opposition against the registration of the mark.

On publication of the trademark in the Trademarks Journal, any person can oppose as to the registration of the said trademark by filing a notice of opposition within the prescribed period of 3 months from the date of publication of the mark.

If no opposition is filed against the mark or where the opposition was filed and decided in favor of the applicant, then the same shall proceed towards registration. . The mark is then registered for a period of 10 years from the date of filing of the application and registration certificate is issued. The trademark can be renewed from time to time for a period of ten years on payment of prescribed renewal fees. Each renewal term is for a period of 10 years.

On publication of a trademark in the Trademarks Journal, any person can file an opposition against registration of the said trademark by filing a notice of opposition within the prescribed period of 3 months from the date on which the mark was published in the Journal.

A trademark application can be opposed in Bhutan on grounds given under Section 24(1) and 25(3) of the Industrial Property Act of 2001. Once an opposition is filed against a trademark a copy of notice of opposition so filed is served to the applicant by the Trademark Registry and the applicant is then required to present his observations on the grounds of opposition within 2 months, failing which the application shall be treated as abandoned.

Thereafter the Registrar will request evidence in writing from both parties. If the dispute is not settled by the parties, then hearing is fixed in the matter. After hearing the parties, the Registrar shall decide whether the trademark shall be registered or not. If the Registrar decides to register the mark, then if-

• no appeal is preferred against his decision, upon the expiry of the period within which an appeal may be preferred against his decision ;
• an appeal is preferred against his decision, upon the determination of such appeal; the Registrar shall accordingly register the mark.

A trademark is registered for a period of 10 years from the date of application. To register a trademark in Bhutan, after filing the application in the prescribed form and payment of relevant fee, the mark will then be examined, published and eventually shall proceed to registration where there is no opposition against the said trademark or where the opposition against the said trademark was filed but was decided in favor of the applicant. The trademark will then be registered for a period of 10 years from the date of filing of the application in Bhutan and the registration certificate will be issued.

The insignia ® can be used for a registered trademark in Bhutan.

A trademark can be renewed in Bhutan from time to time for an unlimited period upon payment of the renewal fees, failing which the mark becomes liable to be removed from the Register on account of non-renewal. Each renewal term is for a period of 10 years.

The procedure for filing a renewal for a trademark in Bhutan is as follows:

Request to renew a trademark in Bhutan can be filed within 6 months before the expiry of the registration/ renewal term if accompanied by the requisite renewal fees on the prescribed form.

Request to renew a trademark in Bhutan can be filed within 6 months after the expiry of the registration/ renewal term if accompanied by the requisite renewal fees on the prescribed form.

Trademark Registry was established in the year 1997 under the Industrial Property Regulations to facilitate registration of marks. There are two acts that constitute BhutanÔÇÖs current  principal  IP  legislation.  These  are  the  Industrial  Property  Act  of  2001  (which
superseded the Trademark Act of 1997) and the Copyright Act of 2001. As implementing regulations, there is the Industrial Property Rules of 2001.

The Trademarks Registry recognizes well-known trademarks in Bhutan on the basis of their international, national and cross border reputation.

The Act provides protection to well-known trademarks at 2 levels:-

1. Against registration of similar marks; and
2. Against misuse of well-known trademarks.

The trademarks which are not registrable in Bhutan are the following:

• which, is incapable of distinguishing the goods or services of one enterprise from those of another enterprise ;

• contrary to public order or morality;

• likely to mislead the public or trade circles, in particular as regards the geographical origin of the goods or services concerned or their nature or characteristics;

• identical with, or is an imitation of or contains as an element, an armorial bearing, flag and other emblem, a name or abbreviation or initials of the name of, or, official sign  or  hallmark  adopted  by,  any  State,  intergovernmental  organisation  or

organisation  created  by  an  international  convention,  unless  authorised  by  the competent authority of that State or organisation;

• identical with, or confusingly similar to, or, constitutes a translation of, a mark or trade name which is well known in Bhutan for identical or similar goods or services of another enterprise, or if it is well-known and registered in Bhutan for goods or services which are not identical or similar to those in respect of which registration is applied for, provided, in the latter case, that use of the mark in relation to those goods or services would indicate a connection between those goods or services and the owner of the well-known mark and that the interests of the owner of the well- known mark are likely to be damaged by such use;
• identical with a mark belonging to a different proprietor and already on the Register, or with an earlier filing or priority date, in respect of the same goods or services or closely related goods or services, or if it so nearly resembles such a mark as to be likely to deceive or cause confusion.

Remedies available for protection of trademarks in Bhutan are:

Civil Action- The competent Courts can be moved for grant of relief of injunction against infringement and/or passing off.

Administrative Remedies- Notice of opposition can be filed against trademark applications published in the Trademarks Journal in Bhutan. Proceedings can be initiated for rectification/cancellation of registered trademarks before the Registrar of Trademarks.

A good trademark should possess the following qualities-

Easy to pronounce, spell, remember.

Should be distinctive and should not have deceptive similarity.

Should not be descriptive. Laudatory word/words such as best, perfect etc to be avoided.

No, registration of a Trademark is not mandatory in Bhutan but it is advisable to do so.

Identifies the origin of goods & services.

Advertises goods & services.

Enhances brand value.

Guards the commercial goodwill of a trader. Protects the innocent public from buying goods of second-rate quality.

Only the proprietor of a registered trademark can use the symbol ® in Bhutan. Using the symbol ® unless the mark has been registered is unlawful in Bhutan. Using symbol TM with trademark simply means that one claims to be the proprietor of the trademark. There is no prohibition on the use of the symbol TM in Bhutan.

No, it is not possible to register a trademark which is descriptive in nature.

A collective trademark or collective mark is a trademark owned by an organization (such as an association), whose members use it to identify themselves with a level of quality or accuracy, geographical origin, or other characteristics set by the organization. Example-the “CA” device used by the Institute of Chartered Accountants.

Section 30 of the Industrial Property Act of 2001 defines ÔÇ£collective markÔÇØ as any visible sign designated as such and serving to distinguish the origin or any other common characteristic of goods or services of different enterprises which use the mark under the control of the registered owner.

Yes, foreign proprietors can apply for registration of a trademark in Bhutan. BhutanÔÇÿs Trademark Law is TRIPS obedient and provides for protection of well-known trademarks and recognizes trans-border reputation.

Yes, a statement of use including whether the mark has been in use or is proposed to be used is required to be filed at the time of filing a trademark in Bhutan.

A mark shall not be registered as a trademark if-

the mark is likely to deceive the public or cause confusion.

the matter contained or comprised in the mark is likely to hurt religious susceptibilities of any class or section of the citizens of Bhutan.

it contains or comprises of scandalous or obscene matter.

Yes, the examination includes whether the application has been filed in time and whether the same has been filed by the proprietor of the mark on record.

An action for passing off lies for infringement of an unregistered trademark.

Generally it takes 12 months to 18 months, however it also depends on the basis for filing and the legal issues that may arise in the examination of the application.