The term “trademark” is often used to refer to both trademarks and service marks. Trademark means any visible sign capable of distinguishing the goods or services of an enterprise; A trademark can be a word, phrase, symbol or design, or a combination thereof, that identifies and distinguishes the source of the goods/services of one party from those of others.
A “collective mark” is a mark used by members of a cooperative, an association, or other collective group or organization. There are two basic types of collective marks: 1. A collective trademark, which is a mark adopted by a collective group for use by its members who use the mark to identify their goods or services and to distinguish such members’ good or services from the goods or services of nonmembers; and 2. A collective membership mark, which only serves to indicate membership in the collective group.
The symbol TM is used as a cautionary notice to claim an unregistered/pending trademark. The symbol ® is used to provide notice that the trademark has been registered with a national trademark office. The proper manner to display these symbols is immediately following the mark, and is commonly in superscript style but is not legally required.
1. Identifies source of goods/services. 2. Signifies that the goods bearing a particular trademark come from one source. 3. Indicate a particular standard of quality. 4. Facilitate marketing of goods through advertising and sales. 5. Symbolizes the goodwill of the owner of the mark. 6. Protects the public from confusion and deception. 7. Adds value to business.
Although registration of trademark is voluntary, registration would provide trademark owner(s) the following advantages: 1. Certificate of registration can be used as a prima facie evidence in the event of litigation. 2. Registered trademark will appear in search reports of the office, discouraging others from proceeding with the registration of the same or similar trademark. 3. Public notice of your claim of ownership of the trademark. 4. Provide basis for registering in other countries. 5. Owner(s) obtains the right to put symbol ®, after the trademark, alerting others to the registration and preventing the defence of innocent infringement. 6. Provides official notice to others that a trademark is already taken; consequently, a company that later adopts a confusingly similar trademark cannot claim ignorance of it
1. Words that are clearly descriptive (e.g. "delicious" ice cream) 2. Terms or symbols that are confusingly similar to an existing trademark, 3. Terms or symbols that are prohibited under the Industrial Property Act of Kingdom of Bhutan.
An application must be filed with the Intellectual Property Division either in person and/or through the Industrial Property Agents. 1. When an applicant’s ordinary residence or principal place of business is outside Bhutan, the application must be filed through an Industrial Property Agent practicing in Bhutan. 2. When an applicant’s ordinary residence or principal place of business is within Bhutan, an application can be filed directly in person, or may be represented by an Industrial Property Agent practicing in Bhutan. An agent may help to avoid many potential pitfalls in filing your trademarks.
It is recommended to conduct a search before filing your application. The Intellectual Property Division allows you to search your trademark prior to filing; you or your representative can come to our office and search after paying the prescribed fee. However, it must be noted that the search does not guarantee the mark to be registered as there can be objections on similar or other grounds. It may also happen that a similar mark could have been filed after you have done your search.
No, the effects of registration are limited to the country concerned only. You will have to register your trademark separately in every country that you wish to seek protection. The registration process and fees vary from one country to another. However, international registrations can be acquired through the Madrid system to which Bhutan is a member. An applicant can file for international registration having effect in some or all of the other countries of the Madrid Union with a single application to Intellectual Property Division.
Trademarks Forms and Schedule of Fees can be downloaded from www.ipbhutan.gov.bt. The printed forms can also be obtained from the Trademark Registry, Intellectual Property Division.
Trademarks are classified according to NICE classification for International Classification of goods and services initiated by WIPO.
The length of processing time depends on whether the application is procedurally in order and whether the trademark faces objections and oppositions. In the absence of any such, the application will be registered within 4-6 months from the date of filing. However, it should be noted that rights for registration of a trademark accrue from the date of filing.
The trademark registration is valid up to ten years and can be renewed after every ten years.
1. An applicant should renew during six months prior to the expiry of the registration. 2. A grace period of six months after the expiry of the registration is provided to renew along with a late fee. 3. Non-renewal within the stipulated time shall lead to expiration of the registration.
1. A registered trademark may be invalidated with a request from any aggrieved person for not fulfilling the provisions of the Industrial Property Act of Kingdom of Bhutan. 2. A registered trademark may also be removed with a request from any aggrieved person on the grounds of non-use for three consecutive years.
The role of IPD is to grant the legal right to the owner of trademark by providing Certificate of Registration. The Division also publicizes the trademarks with the objective to promote and sensitize the general public on the ownership to prevent infringement/violation. In the event of litigation the Certification of Registration should be used as a proof of ownership. However, the enforcement of the rights does not fall under the purview of the Division, hence, the matter should be dealt before the Court of Law by the owner of the trademarks.