Trade and Service Marks

– Industrial Property Act, 2001.
– Industrial Property Rules, 2001 (no information as to the date of entry into force is available).

Membership in International Conventions

– Convention Establishing the World Intellectual Property Organization (WIPO), with effect from March 16, 1994.
– Paris Convention for the Protection of Industrial Property, Stockholm Act, since August 4, 2000.
– Madrid Agreement Concerning the International Registration of Marks, since August 4, 2000.
– Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, since August 4, 2000.

Filing

Applicant: nationals or foreigners. 

Foreign applicant: must be represented by a legal practitioner in Bhutan. 

Definitions: (a) mark means any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise; (b) collective mark means any visible sign designated as such in the application for registration and capable of distinguishing the origin or any other common characteristic, including the quality of goods or services of different enterprises which use the sign under the control of the registered owner of the collective mark; (c) trade name means the name or designation identifying and distinguishing an enterprise.

Not registrable: if (1) incapable of distinguishing the goods or services of one enterprise from those of other enterprises; (2) contrary to public order or morality; (3) likely to mislead the public or trade circles; (4) armorial bearing, flag and other emblem; (5) confusingly similar to a mark which is well-known in Bhutan for 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; (6) identical with a mark belonging to a different proprietor and already on the Register.

Multi-class applications: are accepted. 

Classification: international. 

Priority: may be claimed.

Filing requirements for an application (to be sent to resident agent):
1. Name, address, nationality and residence of the applicant(s);
2. Power of attorney;
3. Specification of goods and services and classification;
4. Clear prints; 4 copies for word mark/device mark/mark in color (max. A4 size);
5. If priority is claimed: certified copy of home application.

Registration

Examination: as to form and registrability. If the application is accepted by the Registrar, it is then published in the Official Bulletin.

Opposition: possible by any person interested within three months from the date of publication of the application on grounds of non-registrability.

Granting: if the opposition to the application is resolved or if there is no opposition, the trademark is registered and a registration certificate issued.

Protection

Exclusive right to a mark is acquired by registration. 

Duration: ten years from the filing date.

Renewals: for same period.  Grace period: six months, with surcharge.

Use: compulsory. Non-use during a period of three years renders the registration vulnerable to a cancellation action requested by any aggrieved person.

Change of ownership: must be registered. Necessary documents: certified copies of the contract, power of attorney. 

Licensing: only possible if the control of the quality of the goods by the licensee is provided. A certified copy of the contract must be registered.

Invalidation: any aggrieved person may request the court or the Registrar to invalidate a mark.

Infringement: on request of the owner, infringement cases are dealt with in a civil court.