Trade Mark Law – Bhutan

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Bhutan is a small country touching the northern frontier of India and adjourning Nepal. It has recently by law made it possible to register trade and service marks in Bhutan. This is Bhutans first experiment in having a statutory trade mark law and therefore the working of the law is still in its infancy. Given below is the text of The Industrial Property Regulation 1997.

MARKS, COLLECTIVE MARKS, TRADE NAMES AND ACTS OF UNFAIR COMPETITION

Definition of “Mark”, of “Collective Mark” and of “Trade Name”

24.For the purposes of these Regulations:

i.”mark” means any visible sign capable of distinguishing the goods (“trademark”) or services (“service mark”) of an enterprise;

ii.”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;

iii.”trade name” means the name or designation identifying and distinguishing an enterprise.

Acquisition of the Exclusive Right to a Mark; Registrability

1.The exclusive right to a mark, as conferred by these Regulations, shall be acquired by registration in accordance with the provisions thereof.

2.Nothing in these 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.

3.A mark cannot be validly registered if it is :

i.incapable of distinguishing the goods or services of one enterprise from those of other enterprises;

ii.contrary to public order or morality;

iii.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;

iv.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 organisation;

v.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 and that the interests of the owner of the well-known mark are likely to be damaged by such use;

vi.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.

Application for Registration

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 a 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.

a.The application may contain a declaration claiming the priority, as provided for in the Paris Convention, on 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.

b.The effect of the said declaration shall be as provided in the Paris Convention; if the Registrar finds that the requirements under this subsection and the Rules pertaining thereto have not been fulfilled, the said declaration shall be considered not to have been made.

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

Examination; Opposition; Registration of Mark

a.The Registrar shall examine whether the application complies with the requirements of Section 26(1) and the Rules pertaining thereto.

b.The Registrar shall examine and determine whether the mark is a mark as defined in Section 24(i) and is registrable under Section 25(3) (i) to (vi).

a.Where the Registrar finds that the conditions referred to in subsection (1) hereof are fulfilled, he shall forthwith cause the application, as accepted, to be published in the prescribed manner.

b.Any interested person may, within the prescribed period and in the prescribed manner, give notice to the Registrar of opposition to the registration of the mark on the ground that one or more of the requirements of Section 24(i) and 25(3) and the Rules pertaining thereto are not fulfilled.

c.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.

d.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.

e.After an application is published and until the registration of the mark, the applicant has the same privileges and rights as he would have if the mark had been 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.

3.Where the Registrar finds that the conditions referred to in subsection (1) are fulfilled, and either:

i.the registration of the mark has not been opposed within the prescribed time limit; or

ii.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 acertificate of registration. Otherwise, he shall refuse the application.

Rights Conferred by Registration; Duration; Renewal

1.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.

2.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.

3.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.

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

b.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.

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

Invalidation; Removal on Grounds of Non-Use

a.Any aggrieved person may request in the prescribed manner the Court or the Registrar to invalidate the registration of a mark.

b.The Court or the Registrar shall invalidate the registration if the person requesting the invalidation proves that any of the requirements of Section 24 (i) and 25 (3) is not fulfilled.

c.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.

2.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.

Collective Marks

Subject to subsections (2) and (3), sections 25 to 29 shall apply to collective marks, except that references therein to section 24 (i) shall be read as reference to Section 24 (ii).

a.An application for registration of a collective mark shall designate the mark as a collective mark and shall be accompanied by a copy of the Rules governing the use of the collective mark.

b.The registered owner of a collective mark shall notify the Registrar of any changes made in respect of the Rules referred to in paragraph (a).

3.In addition to the grounds provided in Section 29 (1), the Court or the Registrar shall invalidate the registration of a collective mark if the person requesting the invalidation proves that only the registered owner uses the mark, or that he uses or permits its use in contravention of the Rules referred to in subsection (2) (a) or that he uses or permits its use in a manner liable to deceive trade circles or the public as to the origin or any other common characteristics of the goods or services concerned.

Licensing of Marks and Collective Marks

Any license contract concerning the registration of a 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 used. 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.

Trade Names

A name or designation may not be used as a trade name if by its nature or the use to which it may be put, it is contrary to public order or morality and if, in particular, it is liable to deceive trade circles or the public as to the nature of the enterprise identified by that name.

Notwithstanding any laws or rules providing for any obligation to register trade names, such names shall be protected, even prior to or without registration, against any unlawful act committed by third parties.

In particular, any subsequent use of the trade name by a third party, whether as a trade name or a mark or collective mark, or any such use of a similar trade name or mark, likely to mislead the public, shall be deemed unlawful.

Acts of Unfair Competition

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

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

i. 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;

ii. 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;

iii. 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.

1 COMMENT

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