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.

This sign can be any letter, word, name, signature, numeral, device, brand, label, drawing, symbols, shape, colour, aspect of packaging or a combination of these. Registering a trademark gives the owner rights to enable him to control the use of the sign.

It is not compulsory to register your trademark to use it

However, A trademark registration adds great value to a business, owner of the registered trademark can exploit his mark in many ways, he can have the exclusive legal right to use, license or sell it within Bhutan for the goods and services for which it is registered. By filing for trademark registration, the trademark owner obtains a right to ownership and the right to prevent others from using a similar mark without his permission. Actions against misinterpretation, infringement etc can be possible through registration.

Before you apply

- Rights conferred by a registered trademark
- Other marks
- Legislation governing trademarks
- Benefits of trademark registration
- When to file
- Priority claim
- Registrable marks
- Classification of goods and services
- Unregistrable marks
- Identifying a registered trademarks
- Not registering a trademark

Rights conferred by a registered trademark

The rights conferred by a registered trademark extend throughout Bhutan. It confers on the owner the right to prevent others from using in Bhutan as a trademark, a mark similar to the mark registered, in relation to the same or similar goods or services in Bhutan, without the owner's permission. The registered trademark can last indefinitely, subject to renewal every 10 years. A registered trademark is a form of property; it can be licensed or assigned.

Other marks

Collective Mark

A collective mark is a sign used to distinguish the goods or services offered by members of an association or group of traders from goods or services of those who are non-members of the association. An association can file for the registration of a collective mark. Once registered, members of the association are allowed to use the collective mark. A collective mark represents membership of the provider of goods or services to a particular association and does not certify the characteristics of goods or services as does a certification mark.

Benefits of trademark registration

A trademark registration adds great value to a business, owner of the registered trademark can exploit his mark in many ways, he can have the exclusive legal right to use, license or sell it within Bhutan for the goods and services for which it is registered. By filing for trademark registration, the trademark owner obtains a right to ownership and the right to prevent others from using a similar mark without his permission. Suit against misinterpretation, infringement etc can be possible through registration

When to file

Unlike patents or registered designs, trademarks that are already in use may still be registered. There is no time limit as to when the owner may apply for a registration. Although there is no time limit for filing, it should be noted that a suit for an infringement of a registered trademark is only possible if the trademark is registered. A trademark registration takes effect from the date of filing.

Claiming priority

Bhutan allows priority claims in trademark applications. If an applicant has a corresponding application filed earlier in a Paris Convention country or World Trade Organization member country (Convention Country), he may claim priority for those goods or services from the first filing made in any Convention Country in his application in Bhutan, provided the registration in Bhutan is filed within 6 months from the date of the first filing. He can similarly use a first-filed application in Bhutan as a priority claim for subsequent applications in Convention Countries within 6 months.

Registrable marks

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

Classification of goods and services

For the purpose of trademark registration, Bhutan uses the International Classification of Goods and Services as prescribed by the Nice Agreement to classify trademark registrations. This classification sets out the list of goods and services for which the applicant may wish to register for in relation to his trademark. Goods and services are divided into different classes according to the NICE classification system. There are presently 34 classes of goods and 11 classes of services. When applying to register a trademark, you need to decide in which class(es) you wish to protect your trademark. The NICE classification is available in www.wipo.int / intellectual Property office/ Intellectual Property Agents.

Unregistrable marks

The following are some common examples of the marks that cannot be registered under the trademark law in Bhutan:

Descriptive Marks:

means you can't register a trademark that directly describes your goods (e.g. radios) and services (e.g. electrician). Marks that describe the goods and services of the business. For instance, marks that describe the quality (excellent), quantity (hundreds), value ('affordable'), intended purpose ('healthier'), or geographical origin.

Marks 'Common to the Trade:

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.

Marks Contrary to Public Policy or Morality:

Marks that are generally contrary to public policy or morality. For example, a mark that could promote immoral behaviour cannot be registered.

Deceptive Marks:

Marks that attempt to deceive the public. For example, marks that misrepresent the nature, quality or geographical origin of the goods or services.

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; 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

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.

Marks that are identical with official signs:

A trademark may not be registered if it is 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 organization.

Identifying a registered trademark

® and ™ are common symbols associated with trademarks. ® indicates that the mark is a registered trademark and hence protected under the trademark law. ™ is just a symbol used to indicate that the mark is used by the company as a trademark. It does not denote that the mark is registered nor protected under the trademark laws.

Not registering a trademark

Trademark registration is not compulsory in Bhutan. An individual, firm or company, who owns a trademark and uses it in connection with his goods or services, acquires common law rights in that mark by virtue of the use and reputation of the mark. For a mark that is not registered, the owner can only rely on the common law action of "passing off" to protect his mark against imitation or infringement. This remedy, however, requires the owner of the mark to prove his reputation and goodwill. The requirement of proving reputation and goodwill may pose some problems where the business, or the use of the trademark, has not been established for a substantial period of time. A registered trademark, on the other hand, grants the owner of the trademark a statutory monopoly. If someone else uses the same or a similar mark on the same or similar goods or services in respect of which the mark is registered, the registered trademark owner can rely on his registration as proof of his right to the mark and sue for infringement.