Summary: The article explains the trademark filing and prosecution process in Bhutan under the Industrial Property Act, 2001. A trademark may consist of a name, logo, word, symbol, design, image or other distinctive sign used to identify goods or services. While trademark registration is not mandatory, registered proprietors can initiate infringement proceedings, whereas unregistered marks may be protected through passing off. Bhutan permits both ordinary and convention (priority) trademark applications, with priority claims required within six months of the first filing in a convention country. Applications may cover single or multiple classes under the Nice Classification and are examined for registrability and conflicts with earlier marks. Applicants must respond to examination objections within two months. Accepted applications are published in the Trademarks Journal for a three-month opposition period before registration. If unopposed or successful in opposition proceedings, registration is granted for ten years from the application date and is renewable for successive ten-year periods. A registered trademark may be removed if unused continuously for three years.
TRADEMARKS FILING AND PROSECUTION IN BHUTAN
A trademark is a distinctive sign or indicator used by an individual, business organization, or other legal entity to identify that the goods or services originate from a particular source and distinguish them from those of others, and to distinguish its products or services from those of other entities.
A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements. There is also a range of non-conventional trademarks comprising marks which do not fall into these standard categories, such as those based on color, smell, or sound.
Trademarks in Bhutan are commonly indicated by the following symbols
- ™ (for an unregistered trademark, that is, a mark used to promote or brand goods)
- ℠ (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 Industrial Property Act, 2001 of Bhutan, Although trademark registration is not mandatory in Bhutan, owners of unregistered trademarks may, in appropriate cases, seek protection through an action for passing off.
Trademark Applications in Bhutan
Filing a Trademark Application in Bhutan
Trademark 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
Is proof of use necessary for filing a trademark in Bhutan?
No, use of mark prior to registration is not mandatory in Bhutan. Trademarks that are proposed to be used can also be registered Bhutan.
Can a trade mark be removed from the Bhutan trademark register because of it not being in use after registration?
Yes, if a registered trademark in Bhutan has not been used for a continuous period of 3 years, it can be removed on an application made in prescribed manner by filing request before trademark Office in Bhutan.
Ordinary Trademark Applications In Bhutan
Ordinary trademark applications filed in Bhutan are applications which are filed without claiming any priority. Multi class trademark applications can be filed in Bhutan.
Priority Trademark Applications in Bhutan / Convention Trademark Applications 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.
Trademark Classes for Goods and Services in Bhutan
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. The Nice Classification comprises 34 classes of goods (Classes 1–34) and 11 classes of services (Classes 35–45).
Trademark filing in Bhutan
An application for registration of trademark in Bhutan is to be filed with the Intellectual Property Division, Bhutan in the prescribed form along with payment of requisite fees.
Further details regarding filing of trademark applications can be accessed on the Trademark Registry’s Website, Bhutan at the following link: Bhutan Trademark Registry
Who Can File a Trademark Application in Bhutan?
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, where applicable.
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 trademarks office) to obtain registration in case no opposition has been filed by a third party. The timeline is approximate and may vary depending on examination, oppositions, and registry workload.
Trademark Registration Duration in Bhutan
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.
Trademark Filing Procedure in Bhutan
The procedure for filing a Trademark in Bhutan is as follows:
Filling a Trademark in Bhutan – A trademark application in Bhutan can be filed for a single as well as multi class. Application for a trademark or a Priority trademark application claiming priority from a convention country can also be filed in Bhutan within 6 months from the date on which trademark application was filed in the convention country.
Official Examination of a Trademark in Bhutan/ Issuance of Office Action
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.
- lack of distinctiveness
- descriptive marks
- deceptive marks
- prohibited marks
- conflict with earlier marks
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.
Publication / Advertisement of a Trademark in Bhutan
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.
Opposition of Published Trademark in Bhutan
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.
Registration & Renewal of a Trademark in Bhutan – 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.
FAQs
Is trademark registration mandatory in Bhutan?
No. Trademark registration is not mandatory in Bhutan. However, registration gives the proprietor statutory rights to enforce the trademark against infringement, while unregistered marks may be protected through passing-off actions.
Can a foreign company file a trademark application in Bhutan?
Yes. Foreign individuals and companies may file trademark applications in Bhutan, including convention applications claiming priority from an earlier filing made in a convention country within six months.
How long is a trademark valid in Bhutan?
A registered trademark is valid for 10 years from the application date and may be renewed indefinitely for successive 10-year periods upon payment of the prescribed renewal fee.
Can one trademark application cover multiple classes in Bhutan?
Yes. Bhutan permits multi-class trademark applications, allowing applicants to seek protection for goods and services in multiple Nice Classification classes through a single application.
Can a registered trademark be cancelled for non-use in Bhutan?
Yes. A registered trademark may be removed from the Bhutan Trademark Register if it has not been used continuously for three years, upon an application made in the prescribed manner before the Trademark Office.
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