Industrial Property Regulations, 1997, PART III

Salient Features

"Mark," of "Collective Mark" and of "Trade Name" means any visible sign capable of distinguishing the goods ("trademark") or services ("service mark") of an enterprise; 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; "trade name" means the name or designation identifying and distinguishing an enterprise.

A mark cannot be validly registered if

It is incapable of distinguishing the goods or services of one enterprise from those of other enterprises.

Contrary to public order or morality.

Likely to mislead the public or trade circles, in particular as regards the geographical origin of the goods or services concerned or their nature or characteristics.

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 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 organisation;

Identical with, or confusingly similar to, or, constitutes a translation of, a mark or trade name which is well known in Bhutan for identical or 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, provided, in the latter case, that use of the mark in relation to those goods or services would indicate a connection between those goods or services and the owner of the well-known mark are likely to be damaged by such use;

Identical with a mark belonging to a different proprietor and already on the Register, or with an earlier filing or priority date, in respect of the same goods or services or closely related goods or services, or if it so nearly resembles such a mark as to be likely to deceive or cause confusion.

Registration confers upon the proprietor the Exclusive Right to a Marks. However, nothing in the Regulations shall be deemed to affect rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof.

The rights conferred by registration of a mark shall not extend to acts in respect of articles which have been put on the market in Bhutan by the registered owner or with his consent.

Any license contract concerning the registration of mark, or an application therefor, shall provide for effective control by the licensor of the quality of the goods or services of the licensee in connection with which the mark is use. If the license contract does not provide for such quality control or if such quality control is not effectively carried out, the license contract shall not be valid.

The Registration of a collective mark, or an application therefor, may not be the subject of a license contract.

The application for registration of a mark shall be filed in the prescribed manner with the Registrar and shall contain a request, a reproduction of the mark and list of the goods or services for which registration of the mark is requested, listed under the applicable class or classes of the International Classification. It shall be subject to the payment of the prescribed application fee.

The application may contain a declaration claiming the priority, as provided for in the Paris Convention, of an earlier national or regional application filed by the applicant or his predecessor in title, in which case, the Registrar may require that the applicant furnish, within the prescribed time limit, a copy of the earlier application, certified as correct by the Registry with which it was filed.

The effect of the said declaration shall be as provided in the Paris Convention; if the Registrar finds that the requirements under the Regulations have not been fulfilled, the said declaration shall be considered not to have been made.

The applicant may withdraw the application at any time during its pendency.

Simply signed power of attorney (Power Form).

Twenty four specimens of the mark.

List of goods/services and classification. Bhutan follows the International Classification of goods and services

Details of the applicant including the name, address, state of incorporation and trade description of the Applicant

Details of the mark. Both Trademarks and service marks are protected in Bhutan.

Claiming priority under Paris Convention is possible.

The Registrar shall examine whether the application complies with the requirements of the regulations.

Where the Registrar finds that the application fulfills all conditions of the Regulations, he shall forthwith cause the application, as accepted, to be published in the prescribed manner.

Once the Application is accepted, it is published. Post publication, any interested person may, within the prescribed period and in the prescribed manner, give notice to the Registrar of the opposition to the registration of the mark on the ground that one or more of the requirements of the Regulations are not fulfilled.

The Registrar shall send forthwith a copy of such a notice to the applicant, and, within the prescribed period and in the prescribed manner, the applicant shall send to the Registrar a counter-statement of the grounds on which he relies for his application; if he does not do so, he shall be deemed to have abandoned the application.

If the applicant sends a counter-statement, the Registrar shall furnish a copy thereof to the person giving notice of opposition and, after hearing the parties, if either or both wish to be heard, and considering the merits of the case, shall decide whether the mark should be registered.

After an application is published an until the registration of the mark, the applicant has the same registered; however, it shall be a valid defence to an action brought hereunder in respect of an act done after the application was published, if the defendant establishes that the mark could not validly have been registered at the time the act was done.

Where the Registrar finds that all conditions have been fulfilled, and either the registration of the mark has not been opposed within the prescribed time limit; or the registration of the mark has been opposed and the opposition has been decided in the applicant’s favour, he shall register the mark, publish a reference to the registration and issue to the applicant a certificate of registration.

Otherwise, he shall refuse the application.

The registration of a mark shall be for a period of ten years from the filing date of the application for registration.

The registration of a mark may, upon request, be renewed for consecutive periods of ten years, provided that the registered owner pays the prescribed renewal fee.

A period of grace of six months shall be allowed for the late payment of the renewal fee on payment of the prescribed surcharge.

Any aggrieved person may request in the prescribed manner the Court or the Registrar to invalidate the registration of a mark. The Court or the Registrar shall invalidate the registration if the person requesting the invalidation proves that any of the requirements of the Regulations is not fulfilled.

Any invalidation of a registration of a mark shall be deemed to have been effective as of the date of registration, and it shall be recorded and a reference thereto published as soon as possible.

Any aggrieved person may request the Court or the Registrar to order the removal of a mark from the Register, in respect of any of the goods or services for which it is registered, on the ground that up to one month prior to filing the request the mark had, after its registration, not been used by the registered owner or a licensee during a continuous period of three years or longer, provided that a mark shall not be removed if it is shown that special circumstances prevented the use of the mark and that there was no intention not to use or to abandon the same in respect of those goods or services.

The use of a registered mark, in relation to any goods or services for which it has been registered, by any person other than the registered owner shall require the agreement of the latter.

Any act of competition contrary to honest practices in industrial or commercial matters shall be unlawful.

The following acts, in particular, shall be deemed to constitute acts of unfair competition:

All acts of such a nature as to create confusion by any means whatever with the establishment, the goods, or the industrial or commercial activities of a competitor.

False allegations in the course of trade of such a nature as to discredit the establishment, the goods, or the industrial or commercial activities of a competitor ;

Indications or allegations the use of which in the course of trade is liable to mislead the public as to the nature, the manufacturing process, the characteristics, the suitability for their purpose, or the quantity of the goods

The registered owner of a mark shall, in addition to any other rights, remedies or actions available to him, have the right to institute court proceedings against any person who infringes the mark by using, without his agreement, the mark as aforesaid or who performs acts which make it likely that infringement will occur. The right shall extend to the use of a sign similar to the registered mark and use in relation to goods and services similar to those, for which the mark has been registered, where confusion may arise in the public.

Industrial Property Regulations, 1997, PART I

Salient Features

For the purpose of the Regulations, a “patent” is defined as the title granted to protect an invention.

For the purpose of the Regulations, an invention is defined as an idea of an inventor which permits in practice the solution to a specific problem in the field of technology.

An invention may be, or may relate to, a product or a process.

An invention is patentable if it is new, involves an inventive step and is industrially applicable.

An invention is new if it is not anticipated by prior art. Prior art shall consist of everything disclosed to the public, anywhere in the world, by publication in tangible form or by oral disclosure, by use or in any other way, prior to the filing or, where appropriate, the priority date, of the application claiming the invention. For the purposes of these Regulations, disclosure to the public of the invention shall not be taken into consideration if it occurred within twelve months preceding the filing date or, where applicable, the priority date of the application, and if it was by reason or in consequence of acts committed by the applicant or his predecessor in title or of an abuse committed by a third party with regard to the applicant or his predecessor in title.

An invention shall be considered as involving an inventive step if, having regard to the prior art relevant to the application claiming the invention, it would not have been obvious to a person having ordinary skill in the art.

An invention shall be considered industrially applicable if it can be made or used in any kind of industry. "Industry" shall be understood in its broadest sense; it shall cover, in particular, handicraft, agriculture, fishery and services.

Not all inventions are patentable under the Regulations. The following are Non-Patentable inventions within the meaning of the Regulations: -

Invention, the commercial exploitation of which would be contrary to public order or morality, shall not be patentable.

Discoveries, scientific theories and mathematical methods; schemes, rules or methods for doing business, performing purely mental acts or playing games; methods for treatment of the human or animal body by surgery or therapy, as well as diagnostic methods practiced on the human or animal body; this provision shall not apply to products for use in any of those methods are considered non patentable.

The exploitation of the patented invention in Bhutan by persons other that the owner of the patent shall require the latter’s agreement.

For the purposes of the Regulations, "exploitation" of a patented invention means any of the following acts :

when a patent has been granted in respect of a product:

Making, using, offering for sale, selling or importing for these purposes that product ;

Stocking such product for the purposes of offering for sale, selling or using;

when the patent has been granted in respect of a process :

using the process

Doing any of the acts referred to in paragraph (a) in respect of a product obtained directly by means of the process.

The rights under the patent shall not extend :

To acts in respect of articles which have been put on the market in Bhutan by the owner of the patent or with his consent ; or

To the use of articles on aircraft, land vehicles or vessels of other countries which temporarily or accidentally enter the airspace, territory or waters of Bhutan ; or

To acts done only for experimental purposes relating to a patented invention ; or

To acts performed by any person who in good faith, before the filing or, where priority is claimed, the priority date of the application on which the patent is granted, was using the invention or was making effective and serious preparations for such use in Bhutan.

The right of prior user referred to in the Regulations may be transferred or devolve only together with the enterprise or business, or with that part of the enterprise or business, in which the use or preparations for use have been made.

The right to a patent may be assigned, or may be transferred by succession.

The right to a patent shall belong to the inventor. If two or more persons have jointly made an invention, the right to the patent shall belong to them jointly. If and to the extent to which two or more persons have made the same invention independently of each other, the persons whose application has the earliest filing date or, if priority is claimed, the earliest validly claimed priority date shall have the right to the patent as long as the said application is not withdrawn, abandoned or rejected.

Where an invention is made in execution of an employment contract, the right to the patent shall belong, in the absence of contractual provisions to the contrary, to the employer.

The inventor shall be named as such in the patent , unless in a special written declaration signed by him and addressed to the Registrar he indicated that he wishes not to be named. Any promise or undertaking by the inventor made to any person to the effect that he will make such a declaration shall be without legal effect.

The application for a patent shall be filed in the prescribed manner with the Registrar and shall contain a request, a description, one or more claims, one or more drawings (where required), and an abstract. It shall be subject to the payment of the prescribed application fee.

The request shall contain a petition to the effect that a patent be granted, the name of and other prescribed date concerning the applicant, the inventor and the agent, if any, and the title of the invention.

Where the applicant is not the inventor, the request shall be accompanied by a statement justifying the applicant’s right to the patent .

The description shall disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person having ordinary skill in the art, and shall, in particular, indicate at least one mode known to the applicant for carrying out the invention.

The claim or claims shall define the matter for which protection is sought. The description and the drawing way are used to interpret the claims.

Claims shall be clear and concise. They shall be fully supported by the description.

Drawings shall be required when they are necessary for the understanding of the invention.

The abstract shall merely serve the purpose of technical information; in particular, it shall not be taken into account for the purpose of interpreting the scope of the protection.

The applicant may withdraw the application at any time during its pendency.

The application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept. The applicant may, up to the time when the application is in order for grant, amend the application, provided that the amendment shall not go beyond the disclosure in the initial application.

The applicant may, up to the time when the application is in order for grant, divide the application into two or more applications ("divisional applications"), provided that each divisional application shall not go beyond the disclosure in the initial application.

Each divisional application shall be entitled to the filing date and, where applicable, the priority date of the initial application.

The application may contain a declaration claiming the priority, as provided for in the Paris Convention, of one or more earlier national, regional or international applications filed by the applicant or his predecessor in title in or for any State party to the said Convention. Where the application contains such a declaration, the Registrar may request that the applicant furnish, within the prescribed time limit, a copy of the earlier application certified as correct by the Registry with which it was filed. The effect of the said declaration shall be as provided in the Paris Convention. If the Registrar finds that the requirements under this Regulation have not been fulfilled, the said declaration shall be considered not to have been made.

The applicant shall, at the request of the Registrar, furnish him with the date and number of any application for a patent filed by him abroad ("foreign application") relating to the same or essentially the same invention as that claimed in the application filed with the Industrial Property Registry.

The applicant shall, at the request of the Registrar, furnish him with the following documents relating to one of the foreign applications referred hereinabove, a copy of any communication received by the applicant concerning the results of any search or examination carried out in respect of the foreign application ;a copy of the patent granted on the basis of the foreign application ; a copy of any final decision rejecting the foreign application or refusing the grant requested in the foreign application.

The applicant shall, at the request of the Registrar, furnish him with a copy of any final decision invalidating the patent granted on the basis of the foreign application referred to hereinabove.

Once the Application has been filed, the Registrar shall accord as the filing date the date of receipt of the application, provided that, at the time of receipt, the application contains: an express or implicit indication that the elements are intended to be an application for a patent ; indications allowing the identity of the applicant to be established; a description.

If the Registrar finds that the application did not, at the time of receipt, fulfill the requirements referred to hereinabove, he shall invite the applicant to file the required correction and shall accord as the filing date the date of receipt of the required correction, but if no correction is made, the application shall be treated as if it had not been filed.

Where the application refers to drawings which in fact are not included in the application, the Registrar shall invite the applicant to furnish the missing drawings. If the applicant complies with the said invitation, the Registrar shall accord as the filing date the date of receipt of the missing drawings. Otherwise, the Registrar shall accord as the filing date the date of receipt of the application and shall treat any reference to the said drawings as non-existent.

After according a filing date, the Registrar shall examine whether the application compiles with the requirements of the Regulations and those requirements of these Regulations and the Rules which are designated by the Rules as formal requirements for the purposes of these Regulations and whether information required under the Regulations, if any, has been provided.

Where the Registrar finds that the conditions of the Regulations are fulfilled, he shall grant the patent . Otherwise, he shall refuse the application and notify the applicant of that decision.

When he grants a patent , the Registrar shall :

Publish a reference to the grant of the patent ;

Issue to the applicant a certificate of the grant of the patent and a copy of the patent ;

Record the patent ;

Make available copies of the patent to the public, on payment of the prescribed fee.

The Registrar shall, upon request of the owner of the patent , make changes in the text or drawings of the patent in order to limit the extent of the protection conferred thereby, provided that the change would not result in the disclosure contained in the patent going beyond the disclosure contained in the initial application on the basis of which the patent was granted.

Subject to certain provisions of the Regulations, a patent shall expire 20 years after the filing date of the application for the patent. In order to maintain the patent or patent application, an annual fee shall be paid in the prescribed manner in advance to the registrar for each year, starting one year after the filing date of the application for grant of the patent. A period of grace of six months shall be allowed for the late payment of the annual fee is not paid in accordance with the provisions of the Regulations, the patent application shall be deemed to have been withdrawn or the patent shall lapse.

Any interested person may request the Court or the Registrar to invalidate a patent.

The Court or the Registrar shall invalidate the patent if the person requesting the invalidation proves that any of the requirements of the Regulations are not fulfilled or if the owner of the patent is not the inventor or his successor in title. Any invalidation patent, or claim or part of a claim, shall be regarded as null and void from the date of the grant of the patent.

The final decision of the Court shall be notified to the Registrar who shall record it and publish a reference thereto as soon as possible.

However, the fact that a patent has been granted on an application that did not comply with the requirement of unity of invention under the Regulations shall not be a ground for the invalidation of the patent .

The owner of the patent shall, in addition to any other rights, remedies or actions available to him, have the right, subject to the provisions of the Regulations, to institute Court proceedings against any person who infringes the patent by performing, without his agreement, any of the acts referred to in the Regulations or who performs acts which make it likely that infringement will occur.

Industrial Property Regulations, 1997, PART II

Salient Features

For the purposes of the Regulations, any composition of lines or colours or any three – dimensional form, or any material, whether or not associated with lines or colours, is deemed to be an industrial design, provided that such composition, form or material gives a special appearance to a product of industry or handicraft and can serve as a pattern for a product of industry or handicraft, and appeals to and is judged by the eye.

The protection under these Regulations does not extend to anything in an industrial design which serves solely to obtain a technical result and to the extent that it leaves no freedom as regards arbitrary features of appearance.

An industrial design is registrable if it is new.

An industrial design shall be new if it has not been disclosed to the public in Bhutan by publication in tangible form or by use or in any other way, prior to the filing date or, where applicable, the priority date of the application for registration.

Industrial designs that are contrary to public order or morality shall not be registrable.

The exploitation of a registered industrial design in Bhutan by persons other than the registered owner shall require the agreement of the latter.

For the purposes of these Regulations, "exploitation" of a registered industrial design means the making, selling or importation of articles incorporating the industrial design.

The application for registration of an industrial design shall be filed in the prescribed manner with the Registrar and shall contain a request, drawings, photographs or other adequate graphic representations of the article embodying the industrial design and an indication of the kind of products for which the industrial design is to be used. It may be accompanied by a specimen of the article embodying the industrial design, where the industrial design is two - dimensional. The application shall be subject to the payment of the prescribed application fee.

Where the applicant is not the creator, the request shall be accompanied by a statement justifying the applicant’s right to the registration of the industrial design.

Two or more industrial designs may be the subject of the same application, provided they relate to the same class of the International Classification or to the same set or composition of articles.

The application, at the time of filing, may contain a request that the publication of the industrial design, upon registration, be deferred for a period not exceeding 12 months from the date of filing or, if priority is claimed, from the date of priority, of the application.

The applicant may withdraw the application at any time during its pendency.

Pursuant to the filing of the Application, the Registrar shall accord as the filing date the date of receipt of the application, provided that, at the time of receipt, the application contains indications allowing the identity of the applicant to be established and the required graphic representation of the article embodying the industrial design.

After according a filing date, the Registrar shall examine whether the application compiles with the requirements of the Regulations, whether the application fees has been paid and whether the industrial design complies with the requirements of the Regulations and the Rules pertaining thereto.

Where the Registrar finds that the conditions of the Regulations are fulfilled, he shall register the industrial design, publish a reference to the registration and issue to the applicant a certificate of registration of the industrial design;

otherwise, he shall refuse the application.

However, it may be possible to make a request for deferment of publication, upon registration of the industrial design, neither the representation of the industrial design, neither the representation of the design nor any file relating to the application shall be open to public inspection. In this case, the Registrar shall publish a mention of the deferment of the publication of the industrial design and information identifying the registered owner, and indicating the filing date of the application, the length of the period for which deferment has been requested and any other prescribed particulars. At the expiry of the period of deferment, the Registrar shall publish the registered industrial design.

The registration of an industrial design shall be for a period of five years from the filing date of application for registration. The registration may be renewed for two further consecutive periods of five years through the payment of the prescribed fee. A period of grace of six months shall be allowed for the late payment of the renewal fee on payment of the prescribed surcharge.

Any interested person may request the Court or the Registrar to invalidate the registration of an industrial design.

The Court or the Registrar shall invalidate the registration if the person requesting the invalidation proves that any of the requirements of the Regulations is not fulfilled or if the registered owner of the industrial design is not the creator or his successor in title.

The registered owner of an industrial design shall, in addition to any other rights, remedies or actions available to him, have the rights to institute Court proceedings against any person who infringes the industrial design by performing, without his agreement, any of the acts referred to in the Regulations or who performs acts which make it likely that infringement will occur.

The institution of legal proceedings on the basis of a registered industrial design during the period of deferment of publication shall be subject to the condition that the information contained in the Register and in the file relating to the application has been communicated to the person against whom the action is brought.