34.

(1) Any change in the ownership of a patent, the registration of an industrial design or the registration of a mark or collective mark, or in the ownership of an application therefor, shall be in writing and shall, at the request of any interested party to the Registrar, be recorded and, except in the case of an application, published by the Registrar.  Such change shall have no effect against third parties until such recording is effected.

(2)  Any change in the ownership of the registration of a collective mark, or in the ownership of an application therefor, shall require previous approval by the Minister.

(3)  Any change in the ownership of a trade name must be made with the transfer of the enterprise or part thereof identified by that name and shall be in writing.

(4)  A change in ownership of the registration of a mark or a collective mark shall, however be invalid if it is likely to deceive or cause confusion, particularly in regard to the nature, origin, manufacturing process, characteristics, or suitability for their purpose, of the goods or services in relation to which the mark or collective mark  is intended to be used or is being used.

(5)  Any license contract concerning a patent, a registered industrial design or a registered mark, or an application therefor, shall be submitted to the Registrar who shall keep its contents confidential but shall record it and publish a reference thereto.  The license contract shall have no effect against third parties until such recording is effected.

Agents

35.  Where an applicant’s ordinary residence or principal place of business is outside Bhutan, he shall be represented by a legal practitioner resident and practicing in Bhutan or a person registered in the prescribed manner as an industrial property agent.

Organization of the Industrial Property Registry

36.

(1) (a) The Industrial Property Registry shall be established within the Ministry of Trade and Industry.

(b)  The Industrial Property Registry shall be entrusted with all functions relating to the procedure for the grant of patents and the registration of industrial designs, marks and collective marks and for the administration of granted patents and registered industrial designs and marks as specified in these Regulations and the rules,

(2)  (a)  The Registrar Shall be appointed by the Minister.

(b)  The Registrar shall be assisted by such number of Deputy Registrars and Assistant Registrars as may be appointed.

(c)  Decisions shall be signed by the Registrar or an official designated by him.

(3)  The Minister shall determine the organizational structure and regulate all questions concerning the financial and budgetary system of the Industrial Property Registry.

Registers; Official Bulletin

37.  (1) (a) The Industrial Property Registry shall maintain separate Registers for patents, industrial designs and marks.  Collective marks shall be registered in a special section of the Register of Mark.  All the recordings provided for in these Regulations shall be effected in the said Registers.

(b)  The Registers may be consulted by any person, and any person may obtain extracts therefrom, under the conditions prescribed in the Rules.

(2)  The Industrial Property Registry shall  publish in the Official Bulletin all the publications provided for in these Regulations.

Correction of Errors; Extension of Time

38.  (1) The Registrar may, subject to any provision in the Rules, correct any error of translation or transcription, clerical error or mistake in any application or document filed with the Industrial Property Registry or in any recording effected pursuant to these Regulations or the Rules.

(2)  If the Registrar is satisfied that the circumstances justify it, he may, upon receiving a written request, extend the time for doing any act or taking any proceeding under these Regulations and the Rules, upon notice to the parties concerned and upon such terms as he may direct.  The extension may be granted through the time for doing the act or taking the proceeding has expired.

Exercise of Discretionary Powers

39.  (1) The Registrar shall give any party to a proceeding before him an opportunity of being heard before exercising adversely to that party any discretionary power vested in him by these Regulations or the Rules.

(2)  Nothing in sub-section (1) shall be deemed to require the Registrar to hear the parties before disposing of an application for extension of time under section 38 (2).

Appeals

40.  Any decision taken by the Registrar under these Regulations, in particular the grant of a patent or the registration of an industrial design or of a mark or collective mark, or the refusal of an application for such a grant or registration, may be the subject of an appeal by any interested party before the court and such appeal shall be filed within two months of the date of the decision.

Infringement; Unlawful Acts; Offences

41.  (1) Subject to sections 13(4), 15, 22(3) and 28(3), an infringement shall consist of the performance of any act referred to in sections 13, 22 and 28 in Bhutan by a person other than the owner of the title of protection and without the agreement of the latter.

(2)  (a) On the request of the owner of the title of protection, or of a licensee if he has requested the owner to institute court proceedings for a specific relief and the owner has refused or failed to do so, the court may grant an injunction to prevent infringement, an imminent infringement, or an unlawful act referred to in Sections 32(2) and 33, award damages and grant any other remedy provided for in the general law.

(b)  On the request of any competent authority or any interested person, association or syndicate, in particular of producers, manufacturers or traders, the Court may grant the same relief in case of an act of unfair competition referred to in Section 33.

(3)  Any person who knowingly performs an act which constitutes an infringement as defined in subsection (1) hereof or a unlawful act as defined in section 32(2) and 33 shall be guilty of an offence punishable by a fine not exceeding Ngultrum one hundred thousand  or by imprisonment for a term not exceeding one year, or by both.

(4)  For the purposes of proceedings, other than criminal proceedings, in respect of the violation of the right of the owner of the patent referred to in subsections(1) and (2), where the subject matter of the patent is a process for obtaining a product, the burden of establishing that a product was not made by the process shall be on the alleged infringer if either of the following condition is fulfilled:

(i)  the product is new, or

(ii)  a substantial likelihood exists that the product was made by the process and the owner of patent has been unable through reasonable efforts to determine the process actually used.

(5)  In requiring the production of evidence, the Court before which the proceedings referred to in subsection(4) take place shall take into account the legitimate interests of the alleged infringer in not disclosing his manufacturing and business secrets.

Application of International Treaties

42.  The provisions of any international treaties in respect of industrial property to which Bhutan is a party shall apply to matters dealt with by these Regulations and, in case of conflict with provisions of these Regulations and, in case of conflict with provisions of these Regulations, shall prevail over the latter.

Rules; Administrative Instructions 

43.  (1) The Minister shall issue Rules prescribing details, for the implementation of these Regulations. The Rules may, in particular, provide for the payment of fees in connection with applications for the grant of  patents and for the registration of industrial designs, marks and collective  marks and matters related thereto.

(2)  The Registrar may issue Administrative Instructions relating to the procedures under the Regulations and the Rules as well as to the other functions of the Industrial Property Registry.

Interpretation

44.  In these Regulations, unless the context otherwise requires:

“Court” means a Court of competent jurisdiction;

“International Classification” means, as regards industrial designs the classification according to the Locarno Agreement Establishing an International Classification for Industrial Designs of October 8, 1968, as last revised, and as regards marks, the classification according to the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Mark, of June 15, 1957, as last revised;

“ Minister” means the Minister of the Trade and Industry;

“Paris Convention” means the Paris Convention for the Protection of Industrial Property of March, 20, 1883, as last revised;

“Priority date” means the Registers referred to in section 37 (1);

“Registers” means the Registers referred to in section 37(1);

“Registrar” means the Registrar of Industrial Property;

“Rules” means the Rules referred to in section 43 (1) 

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