Trademark in Bhutan

A trademark is a sign used by a person in the course of business or trade to distinguish his/her goods or services from those of other traders. A trademark can be letters, words, names, signatures, numerals, devices, brands, labels, drawings, symbols, shapes, colours, aspects of packaging or any combination of these. For a trademark to be registered it must be distinctive and capable of distinguishing the goods and/or services of the owner from other similar goods and/or services. Registering a trademark gives the owner rights to enable him to control the use of the sign. It is not compulsory to register the Trademark before using in Bhutan. Bhutan follows the International Classification of Goods and Services as prescribed by the Nice Agreement to classify trademark registrations and it is possible to file applications in all 45 classes in Bhutan. Bhutan is member of Madrid and it is possible to file international application designating Bhutan.

What marks are not Registrable in Bhutan

The following types of marks cannot be registered in Bhutan:

1. Descriptive Marks i.e. a trademark that directly describes goods (“Fridge”) and/or services (“Hotel”). It includes Laudatory marks i.e. marks that describe the quality (excellent), quantity (hundreds), value “affordable”), intended purpose (“healthier”), or geographical origin
2. Marks Common to the Trade. It includes Marks that are signs or indications that are or have become customary in the trade. Some marks have become so well accepted that the term is used to describe the type of the goods or services in general, and no longer serves to distinguish the products offered for example “Zerox”
3. Marks Contrary to Public Policy or Morality. It includes Marks that are generally contrary to public policy or morality. For example, a mark that could promote immoral behaviour cannot be registered
4. Deceptive Marks. It means Marks that attempt to deceive the public. For example, marks that misrepresent the nature, quality or geographical origin of the goods or services.
5. Marks that could cause Confusion. A trademark may not be registered if it is identical with an earlier mark and is to be registered for goods or services similar to those for which the earlier mark is protected; or it is similar to an earlier trademark and is to be registered for goods or services identical with those for which the earlier mark is protected; or it is similar to an earlier trademark and is to be registered for goods or services similar to those for which the earlier trademark is protected.
6. Marks that are Identical/Similar to Well Known Marks. A trademark may not be registered if it is identical or similar to an earlier mark that is well known in Bhutan In general, it is also very difficult to register a geographic name or a common surname as a trademark, however, someone who has used one extensively for a considerable period of time may be able to achieve registration. Although, trademarks that do not have a distinctive character cannot be registered, there may be exceptions where the company has built up its trademark/branding to such an extent that the mark is associated with the company, even though the mark in itself was not distinctive. For such cases, the mark may still be registered on the basis of substantial use resulting in the mark acquiring a distinctive character

Trade Mark Search in Bhutan

To avoid objections and/or oppositions, it is desirable to conduct a Trade Mark search to ascertain existence of any prior registrations of identical or similar marks.

Trademark Applications in Bhutan

Trademark Applications in Bhutan can be classified under three categories depending upon their priority claims or office of filing:

1. Ordinary trade mark application without any priority
2. Conventional trade mark application- has to be filed within 6 months from date of filing of conventional application
3. Madrid Application designating Bhutan

Besides collective trademarks are also Registrable in Bhutan

Trademark filing requirements in Bhutan

Specimen of the trademark (12 copies if provided in print form or single copy if provided soft copy vide email); For shape of goods 3-5 different views ( top, bottom, left side, right side and front view). Following are the basic requirements for filing of a trademark application in Bhutan:

1. Name, address, nationality and particulars of the applicant (whether individual, society, trust, partnership firms or company)
2. International Class
3. Description of goods or services
4. User date in Bhutan or proposed to be used
5. Details of priority, if any, including application number, date of filing and country of filing
6. Translation and transliteration (pronunciation) in English, if mark is in Language other than English language

Trademark Registration in Bhutan

Following stages are ordinarily encountered while registering a trademark in Bhutan:

1. Filing of trademark application in Bhutan
2. Formality Examination of the Application to check formal compliance before issuance of Application no. and date
3. Search and Examination and Issuance of first report with objections, if any
4. Replying to first report within 2 months or within additional 2 months extension
5. Acceptance of application if there are no objections or if objections have been overcome
6. Publication of acceptance in the Trademark Journal
7. Opposition, if any, within 3 months from date of publication of the application
8. Registration of Trademark, if no opposition if filed or is set aside
9. Issuance of Registration Certificate.

Transformation of Madrid Application designating Bhutan to National application

In case of central attack to the basic application and basic application becoming unstable, it is possible to transform the madrid application designating bhutan to national application by paying the prescribed fee.

Duration of Registration and Renewal of Trademark

The duration of registration of a trademark is 10 years from the date of filing of application in Bhutan and is further renewable for every 10 years thereafter.