Trademark registration in Bhutan

The country of Bhutan is located between China and India – the two largest markets in the world, facilitating trade and economic cooperation. Bhutan has a mild climate and rich biodiversity, making it an ideal destination for ecotourism and scientific research activities. The culture of Bhutan is very unique, the influence of long-standing traditional Buddhist culture, preserved intact, unique traditional festivals, attracting international tourists, friendly and hospitable Bhutanese people always attract many tourists every year. Bhutan’s tourism industry is thriving, attracting high-end visitors from all over the world. The Government of Bhutan always has policies aimed at supporting and striving to develop sustainable tourism, protect the environment and culture. Therefore, the number of investors in Bhutan is increasing, in order to be able to distinguish its brand from other competitors, the first thing when investing in this market is to register a trademark. Viet An Law would like to guide customers preliminarily through the procedures for trademark registration in Bhutan through the article below.

Legal basis

• Industrial Property Law of the Kingdom of Bhutan 2001;
• Bhutan Standards Law 2010.

Definition of “trademark” in Bhutan

A trademark is a mark that an individual uses in business or commerce to distinguish his or her goods or services from those of other traders.

This mark can be any letter, word, name, signature, number, symbol, trademark, label, drawing, symbol, shape, color, packaging aspect or a combination of these elements. The registration of a trademark allows the owner to control the use of that mark.

Although trademark registration is not required for use, trademark registration brings many benefits to businesses. The owner of a registered trademark can exploit his trademark in several ways, such as:

• Have the exclusive legal right to use, license or sell trademarks throughout Bhutan for those goods and services for which the trademark is registered.
• By filing a trademark application, the trademark owner gains ownership and the right to prevent others from using a similar trademark without his or her permission.
• Trademark registration allows the owner to take actions against misuse, infringement, etc.

Trademark registration dossier in Bhutan

• Declaration of application for trademark registration: Request to fill in the applicant’s full name and address. Customers can get the application form via the following link (Form TM 7): http://www.ipbhutan.gov.bt/home/page/43
• Trademark description: A clear description of the brand’s image, logo, or design.
• List of goods/services: List all goods and services the applicant wants to apply for trademark protection.
• Statement of use/intended use: Confirmation that you are using or intend to use the trademark.
• Proof of payment of fees

Trademark registration fees in Bhutan

The trademark registration fee in Bhutan depends on whether you have requested priority rights.

No right-of-way required: BZ$1,500: This is the basic fee for filing a trademark application.

Right-of-way request: BZ$3,000:  Includes a base fee of BZ$1,500 and an additional fee of BZ$1,500 for requesting a right-of-way.

Additional fees:

• BZ$100 per additional class of goods/services: If you want to trademark multiple classes of goods/services, you need to pay an additional BZ$100 for each layer beyond the first layer.
• BZ$50 for certified translations and transcriptions: If your trademark includes non-English words or characters, you’ll need to pay an additional BZ$50 for certified translations and transcriptions.

How to file for trademark registration in Bhutan

To file for trademark protection in Bhutan, you can file using the following filing methods:

• Direct submission: Customers can come directly to the office of the Intellectual Property Office of Bhutan at the Royal Government of Bhutan Thimphu, Bhutan to submit the application and related documents.
• By Post: You can send your application form and all required documents via postal service or courier service to the address of the Intellectual Property Office of Bhutan at Royal Government of Bhutan Thimphu, Bhutan.

Process of Trademark Registration in Bhutan

After submitting the application, the application processing will take from 08 to 12 months (excluding the time for phBhutan to respond due to objections)

Test form

• The registrar will check that the application has all the required information and that the fee has been paid.
• Check that the application is submitted in the prescribed form and that the classification of goods/services is correct.

Search, look up

• Check if the trademark is identical or similar to a registered or pending trademark for the same goods/services.
• Check if the trademark contains geographic names.
• Check whether the trademark contains a protected international generic name (INN) for a pharmaceutical product.
• Check whether the classification of goods/services is correct according to the international classification.

Verification

• Check if the trademark meets the legal requirements for registration.
• Check if the trademark belongs to the list of trademarks that are not allowed to be registered (for example, it is not unique).
• If there is any problem, the registrar will notify the applicant and give time to fix it.
• The applicant may discuss with the registrar or submit written responses to the issues raised.

Proclaim

• If no objections or objections have been resolved, the accepted application will be published in the Trademark Journal.
• Any interested party may object to the registration of a trademark within 3 months after publication.

Except

• Anyone may object to the registration of a trademark if there are reasonable grounds.
• The applicant must respond to the objection in writing with evidence.
• Both parties may present their opinions to the registrar for dispute resolution.
• The registrar will make a decision based on the information and evidence of both parties.

Issue

If no objections or objections are resolved in favor of the applicant, the trademark will be registered and the regulator will issue a Certificate of Registration.

Trademark registration in Bhutan through the Madrid System

Bhutan joined the Madrid System for International Registration of Trademarks in 2000, becoming the 71st member of the system. This accession allows Bhutanese businesses and individuals to submit a single international application for trademark protection in up to a hundred member countries, including major economies such as China, the United States and the European Union. Joining the Madrid System brings a number of benefits to Bhutan, including:

• Reduced costs: Filing an international application is usually cheaper than filing individual applications in each country you want to protect.
• Simplified procedure: The Madrid system offers a simplified registration process, eliminating the need to deal with multiple national trademark offices.
• Centralized Management: Trademark owners can manage their international trademark portfolio more easily through a single system.
• Enhanced protection: International registrations strengthen trademark protection and make it easier to enforce against infringement in multiple jurisdictions.

Trademark registration dossier under the Madrid System

The Madrid Application consists of the Madrid Single of Vietnamese origin and the Madrid Single with the Vietnamese designation.

For the Madrid Application of Vietnamese origin, the applicant must submit through the state management agency for industrial property rights, i.e. the National Office of Intellectual Property of Vietnam. According to Article 25 of Decree 65/2023/ND-CP, a Madrid application of Vietnamese origin includes the following documents:

• Declaration of request for international registration of a trademark of Vietnamese origin (Form No. 01 in Vietnamese in Appendix II of Decree 65/2023/ND-CP);
• 02 MM2 declarations according to the form of the International Office in English or French;
• 02 trademark samples exactly as the trademark in the application filed in Vietnam (establishment application) or trademark registration certificate (establishment registration);
• 02 MM18 declarations in English (if the application has a US designation);
• Written authorization in Vietnamese (According to the form of Viet An Law Firm);
• Documents of payment of fees for international registration of trademarks of Vietnamese origin;
• Other relevant documents (if necessary).

Application fees through the Madrid System

The fees include:

• Basic fee (653 Swiss francs; or 903 Swiss francs for a color mark) (Note! A 90% discount applies if the applicant lodges an application with the Intellectual Property Office of a developing country at least); and
• Additional fees depend on where the claimant wishes to protect his trademark and the number of groups of goods and services he or she wishes to register. In order to expand its geographic reach, or modify or renew its international registration, the applicant will have to pay additional fees.

Trademark registration service in Bhutan of Viet An Law Firm

• Carry out the search and notify customers in writing of the results of trademark search in Bhutan;
• Prepare the dossier and directly file and monitor the status of the trademark application filing in Bhutan;
• Inform, advise and handle deficiencies/refusals of competent State agencies (if any) in the process of monitoring trademark applications in Bhutan;
• Support monitoring, representing the resolution of objections and feedback with intellectual property representatives to carry out procedures in Bhutan.
• Receive dispatches, certificates and hand over to customers (if any).

If you need to apply for trademark registration in Bhutan, please contact Viet An Law Firm for the most effective support.