WHO CAN FILE A TRADEMARK
Any natural person or a Legal entity can file a trademark application in selected specification of goods or services. The Applicant for trademark under Trademark law of Bhutan can also foreign national and/or Legal entity as well.
SELECTING A TRADEMARK
While selecting a trademark, the two factors to be kept in mind are the mark itself and the specification of goods and services the marks intends to cover.
An ideal mark should be distinctive and unique in nature, and should be not similar to an already registered mark. For selecting goods and services, it is important to understand the class under which the trademark would fall; At the moment, under NICE classification goods and services can be classified as 45 different types of goods and services. Classifications 1–34 are for products, and 35–45 are for services. It is to be noted that in Bhutan, Multiclass Applications are allowed.
Once you have successfully chosen a suitable mark for your company, a trademark search at the Intellectual Property Division, Bhutan should be conducted to assess the feasibility of the selected mark being registered. A Trademark search is not mandatory, but is highly advised. There is no option of conducting an Official Trademark Search in the jurisdiction of Bhutan.
FILING OF TRADEMARK
trademark registration in bhutan can be obtained typically within 12-15 months (In case no objections are received). Following are the particulars to be kept in mind:
- Name and Address of Applicant;
- Name of Trademark, (if it is a stylized mark, logo or device, the actual stylized mark, logo or device);
- Complete and Concise Description of the Mark;
- International Classification (Nice Classification) of the Goods and/or Services;
- Enumeration of the Goods and/or Services;
- Translation and Transliteration of Characters (if not in English), certified as correct by Sworn Translator;
- If Claiming Convention Priority, a Certified Copy of the Home Trademark Application;
- Specification of Colors, if any;
- Power of Attorney, Signed and Sealed;
- Usage Date of the Mark (whether the mark is in use or proposed to be used in Bhutan);
Certified Copy Claiming Convention Priority is to be submitted within 6 months. Hard Copy of Power of Attorney, and document of Usage can be submitted within 1 months from filing date.
EXAMINATION OF TRADERMARK
After an application is filed the same is then examined by the Registrar with regard to the distinctiveness, possibility of deceptiveness and conflicting trademarks. The Registrar may accept or refuse the application subject to the provisions of the act. A trademark application in Bhutan can be refused / objected by the Registrar.
- Publication of Trademark: After examination and upon acceptance of the response by the Registrar, the application is ordered for publication in the Trademarks Journal. An application is advertised in the Trademarks Journal so as to invite the public for filing opposition against the registration of a mark. The time period for filing opposition since the day of publication is 3 months.
- Objection of Trademark: If trademark application does not satisfy all requirements, then the examiner will issue objection. If objections are raised, the Applicant has to reply within 2 months. Even after the reply of the objection the Bhutanese Trademark Office may refuse to provide the trademark or may go into hearing.
It is to be noted that the timeline may vary depending on the backlog at the registry.
REGISTRATION OF TRADEMARK
The application shall proceed to registration where there is no opposition or where the opposition was filed and was decided in favor of the applicant. The mark is then registered for a period of 10 years from the date of filing of the application and the registration certificate is issued. The trademark can be renewed from time to time for an unlimited period by payment of renewal fees, failing which the mark becomes liable to be removed from the registry on account of non-renewal. Each renewal term is for a period of 10 years.