1. What is a trademark?
The term “trademark” is often used to refer to
both trademarks and service marks. Trademark means any visible sign capable of
distinguishing the goods or services of an enterprise;
A trademark can be a word, phrase, symbol or design,
or a combination thereof, that identifies and distinguishes the source of the
goods/services of one party from those of others.
2. What is a collective mark?
A “collective mark” is a mark used by members of
a cooperative, an association, or other collective group or organization. There
are two basic types of collective marks:
1. A collective trademark, which is a mark
adopted by a collective group for use by its members who use the mark to
identify their goods or services and to distinguish such members’ good or
services from the goods or services of nonmembers; and
2. A collective membership mark, which only
serves to indicate membership in the collective group.
3. What do symbols TM and ® stand for?
The symbol TM is used as a cautionary notice to
claim an unregistered/pending trademark. The symbol ® is used to provide notice
that the trademark has been registered with a national trademark office. The
proper manner to display these symbols is immediately following the mark, and
is commonly in superscript style but is not legally required.
4. What are the functions of trademark?
• Identifies source of goods/services.
• Signifies that the goods bearing a particular
trademark come from one source.
• Indicate a particular standard of quality.
• Facilitate marketing of goods through
advertising and sales.
• Symbolizes the goodwill of the owner of the
mark.
• Protects the public from confusion and
deception.
• Adds value to business.
5. Why should a trademark be registered?
Although registration of trademark is voluntary,
regisration would provide trademark owner(s) the following advantages:
• Certificate of registration can be used as a
prima facie evidence in the event of litigation.
• Registered trademark will appear in search
reports of the office, discouraging others from proceeding with the
registration of the same or similar trademark.
• Public notice of your claim of ownership of
the trademark.
• Provide basis for registering in other
countries.
• Owner(s) obtains the right to put symbol ®, after
the trademark, alerting others to the registration and preventing the defence
of innocent infringement.
• Provides official notice to others that a
trademark is already taken; consequently, a company that later adopts a
confusingly similar trademark cannot claim ignorance of it
6. What kinds of trademarks cannot be registered?
• Words that are clearly descriptive (e.g.
"delicious" ice cream)
• Terms or symbols that are confusingly similar
to an existing trademark,
• Terms or symbols that are prohibited under the
Industrial Property Act of Kingdom of Bhutan.
7. How do I register a trademark?
An application must be filed with the
Intellectual Property Division either in person and/or through the Industrial
Property Agents.
• When an applicant’s ordinary residence or
principal place of business is outside Bhutan, the application must be filed
through an Industrial Property Agent practicing in Bhutan.
• When an applicant’s ordinary residence or
principal place of business is within Bhutan, an application can be filed
directly in person, or may be represented by an Industrial Property Agent
practicing in Bhutan. An agent may help to avoid many potential pitfalls in
filing your trademarks
8. Do I have to search for similar trademarks before filing an application?
It is recommended to conduct a search before
filing your application. The Intellectual Property Division allows you to
search your trademark prior to filing; you or your representative can come to
our office and search after paying the prescribed fee.
However, it must be noted that the search does
not guarantee the mark to be registered as there can be objections on similar
or other grounds. It may also happen that a similar mark could have been filed
after you have done your search.
9. Does registration in one country protect my rights in other countries?
• No, the effects of registration are limited to
the country concerned only. You will have to register your trademark separately
in every country that you wish to seek protection. The registration process and
fees vary from one country to another.
• However, international registrations can be
acquired through the Madrid system to which Bhutan is a member. An applicant
can file for international registration having effect in some or all of the
other countries of the Madrid Union with a single application to Intellectual
Property Division.
10. Where can I find trademark forms and fee schedules?
Trademarks Forms and Schedule of Fees can be
downloaded from www.ipbhutan.gov.bt. The printed forms can also be obtained
from the Trademark Registry, Intellectual Property Division.
12. How long will it take to process a trademark application?
The length of processing time depends on whether
the application is procedurally in order and whether the trademark faces
objections and oppositions. In the absence of any such, the application will be
registered within 4-6 months from the date of filing. However, it should be
noted that rights for registration of a trademark accrue from the date of
filing.
13. What is the validity of trademark registration?
The trademark registration is valid up to ten
years and can be renewed after every ten years.
14. When should I renew a trademark registration?
• An applicant should renew during six months
prior to the expiry of the registration.
• A grace period of six months after the expiry
of the registration is provided to renew along with a late fee.
Non-renewal within the stipulated time shall
lead to expiration of the registration.
15. Will there be any invalidation or removal of a registered trademark?
• A registered trademark may be invalidated with
a request from any aggrieved person for not fulfilling the provisions of the
Industrial Property Act of Kingdom of Bhutan.
• A registered trademark may also be removed
with a request from any aggrieved person on the grounds of non-use for three
consecutive years.
