Trademark

Filing an application

Applicants need to furnish the following information to obtain a filing date (1) Request for registration, (2) Name and address of the applicant, (3) A clear representation of the mark, (4) A list of goods and services sought for registration, (5) A declaration of use/intent to use the trademark, and (6) Required fee. The application will be processed when the above particulars are furnished in the prescribed form 7. For marks with colours, whether in coloured marks or marks consisting of colours only, marks comprising shapes or aspects of packaging containing colours, the marks must be filed in the actual colours.For marks with non-English words/characters, a certified translation and transliteration (i.e. pronunciation) must be included in the application

Priority Claim
Priority Claim If the applicant wishes to claim priority, the claim has to be made at the point of filing the application.

Address for Service
Address for Service An address for service in Bhutan must be provided in all trademark applications. This is the address to which all correspondences from the Registry of trademarks will be sent. Where there is a change in the address for service, the applicant has to notify the Registry of trademarks.

How long will it take?
The length of processing time depends on whether the application is procedurally in order and whether the mark faces objections. In the absence of any such objection, the applicant should hear from the Registrar concerning the acceptance of his application within 4 to 6 months of his application. However, it should be noted that rights for registration of a trademark accrue from the date of filing.

Forms and Fees
The TM forms and fees schedules are available in the website or from the Registry of TradeMarks.

Process after submission

Formalities Examination trademarks Registry would conduct a formalities examination upon receipt of the application and fees. This entails a check that the application contains the minimum required information and the fee paid, whereupon a trademark number and a filing date will be allocated. The application is also checked if it is made in the prescribed form and that the classification of goods and services has been indicated

Search
After the application has passed the formalities examination, the trademark Examiners will conduct a search to see if the mark applied for looks or sounds the same as any other trademark which is already registered or has already been applied for by someone else for the same or similar goods or services. The examiners will also search to see if the mark consists of or contains a geographical name. In the case of pharmaceutical products, the Registry of trademarks will also need to check whether the mark consists of a protected International Non-Proprietary Name (INN). The INNs, furnished by the World Health Organisation, are generic names for specific pharmaceutical substances. All of the above may give rise to grounds for objections raised against the trademark application. In addition, the specification of goods or services will be checked to ensure that it conforms to the International Classification of Goods and Services. A wrong classification will result in the application being rejected by the examiners and a fresh application will have to be filed.
Examination
After the searches have been conducted, the application will be examined to determine whether the mark is registrable in accordance with the law. The examiner will check to ensure that the mark does not fall into the areas not allowed by law, for example, marks that are devoid of any distinctive character. If the examiners have any objections to the mark, they will inform the applicant of their objections, and grant the applicant a specified period of time in which to overcome the objection. You may ring the examiner to discuss your application and how you might proceed with it or submit in writing the issues raised by the examiner. The applicant may also request for an extension of time in which to answer such objections.

Extensions of Time
You have 2 months from the date of the examiner's first report to meet any requirements identified by the examiner and to have your application accepted by the Examiners. If you need more time, you may request and pay for up to another 2 months, providing the request is made before the date specified in the examiner's report.

Publication
Once the objections have been overcome, or if there are no objections, the applicant will be informed of the acceptance of the application for registration and the acceptance will be published for public information in the trademarks Journal. Any interested party may oppose the registration of the mark within 3 months of the publication. Journals can be bought from the Registry of Trademarks and will also be posted in the website.

Opposition
Opposition is the process whereby members of the public, or any interested third party may object to the grant of a trademark registration if they have valid grounds for doing so. The grounds of opposition may include issues such as the application is similar to a registered or pending mark, and so forth. The opposition should be filed in the prescribed form with the payment of a fee to the registry which will then notify the applicant. Once a notice of objection is received, the applicant must respond with a counter-statement to resolve the objection. Both the applicant and opponent must supply evidence to support their respective statements. The parties would then appear before the Registrar or the appointed representative from the Registry of trademarks, whereupon a decision on the application will be made after hearing both parties. After the hearing, the Registrar will give the grounds of decision based on the information and evidence presented by both parties

Registration
Upon completion of the opposition to the registration is resolved in favour of the applicant, or if there are no opposition, the trademark will be registered and a registration certificate will be issued.

Renewal
Renewal of Certificate after 10 years.
- Once the Registration certificate is Issued, it is renewed after 10 years.