Industrial Property Act, 2001

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Industrial Property Act

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THE INDUSTRIAL PROPERTY ACT

OF THE KINGDOM OF BHUTAN, 2001

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Preamble

Whereas it is expedient to extend recognition and legal protection to industrial property rights
in order to stimulate innovative activity and promote technological advancement;

Whereas protection against certain acts of unfair competition is necessary to create a sound
environment for the development of industry and commerce;

Now, therefore, be it enacted by the Gyalyong Tshogdu Chhenmo as follows:

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The Industrial Property Act
of the Kingdom of Bhutan, 2001

PART I

PRELIMINARY

Title

1. This Act may be cited as “The Industrial Property Act of the Kingdom of Bhutan, 2001”.

Commencement

2. This Act shall come into effect from such date as the Minister may appoint and notify in

the national newspaper.

Provided that different dates may be appointed for different provisions of the Act.

Territorial Extent

3. This Act shall extend to the whole of the Kingdom f Bhutan.

PART II

PATENTS

Definitions

4. (1) For the purposes of this Act, a "patent" means the title granted to protect an

invention.

(2) (a) For the purposes of this Act, "invention" means an idea of an inventor
which permits in practice the solution to a specific problem in the field of
technology.

(b) An invention may be, or may relate to, a product or a process.

(3) The following, even if they are inventions within the meaning of subsection (2),

shall be excluded from patent protection:

(i) discoveries, scientific theories and mathematical methods;

(ii) schemes, rules or methods for doing business, performing purely
mental acts or playing games;

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(iii) methods for treatment of the human or animal body by surgery or
therapy, as well as diagnostic methods practised on the human or
animal body; this provision shall not apply to products for use in
any of those methods.

Patentable Invention

5. (1) An invention is patentable if it is new, involves an inventive step and is
industrially applicable.

(2) (a) An invention is new if it is not anticipated by prior art.

(b) Prior art shall consist of everything disclosed to the public, anywhere in

the world, by publication in tangible form or by oral disclosure, by use or
in any other way, prior to the filing or, where appro riate, the priority
date, of the application claiming the invention.

(c) For the purposes of paragraph (b), disclosure to the public of the invention

shall not be taken into consideration if it occurred within twelve months
preceding the filing date or, where applicable, the priority date of the
application, and if it was by reason or in consequence of acts committed
by the applicant or his predecessor in title or of an abuse committed by a
third party with regard to the applicant or his predecessor in title.

(3) An invention shall be considered as involving a inventive step if, having regard

to the prior art relevant to the application claiming the invention and as defined in
subsection (2)(b), it would not have been obvious to a person having ordinary
skill in the art.

(4) An invention shall be considered industrially applicable if it can be made or used

in any kind of industry. "Industry" shall be understood in its broadest sense; it
shall cover, in particular, handicraft, agriculture, fishery and services.

(5) Inventions, the commercial exploitation of whic would be contrary to public

order or morality, shall not be patentable.

Right to Patent; Naming of Inventor

6. (1) The right to a patent shall belong to the inventor.

(2) If two or more persons have jointly made an inve tion, the right to the patent shall
belong to them jointly.

(3) If and to the extent to which two or more persons have made the same invention

independently of each other, the person whose application has the earliest filing
date or, if priority is claimed, the earliest validly claimed priority date shall have

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the right to the patent, as long as the said application is not withdrawn, abandoned
or rejected.

(4) The right to a patent may be assigned, or may be transferred by succession.

(5) Where an invention is made in execution of an employment contract, the right to

the patent shall belong, in the absence of contractual provisions to the contrary, to
the employer.

(6) The inventor shall be named as such in the patnt, unless in a special written

declaration signed by him and addressed to the Registrar he indicates that he
wishes not to be named. Any promise or undertaking by the inventor made to any
person to the effect that he will make such a declaration shall be without legal
effect.

Application

7. (1) The application for a patent shall be filed in the prescribed manner with the

Registrar and shall contain a request, a description, one or more claims, one or
more drawings (where required), and an abstract. It shall be subject to the
payment of the prescribed application fee.

(2) (a) The request shall contain a petition to the effect that a patent be granted,

the name of and other prescribed data concerning the applicant, the
inventor and the agent, if any, and the title of the invention.

(b) Where the applicant is not the inventor, the request shall be accompanied

by a statement justifying the applicant's right to he patent.

(3) The description shall disclose the invention in a manner sufficiently clear and
complete for the invention to be carried out by a person having ordinary skill in
the art, and shall, in particular, indicate at least one mode known to the applicant
for carrying out the invention.

(4) (a) The claim or claims shall define the matter for which protection is sought.

The description and the drawings may be used to interpret the claims.

(b) Claims shall be clear and concise. They shall be fully supported by the
description.

(5) Drawings shall be required when they are necessary for the understanding of the

invention.

(6) The abstract shall merely serve the purpose of technical information; in particular,
it shall not be taken into account for the purpose f interpreting the scope of the
protection.

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(7) The applicant may withdraw the application at any time during its pendency.

Unity of Invention; Amendment and Division of Application

8. (1) The application shall relate to one invention only or to a group of inventions so

linked as to form a single general inventive concept.

(2) The applicant may, up to the time when the application is in order for grant, amend
the application, provided that the amendment shall not go beyond the disclosure in
the initial application.

(3) (a) The applicant may, up to the time when the application is in order for

grant, divide the application into two or more applications ("divisional
applications"), provided that each divisional application shall not go
beyond the disclosure in the initial application.

(b) Each divisional application shall be entitled to the filing date and, where

applicable, the priority date of the initial application.

(4) The fact that a patent has been granted on anapplication that did not comply with
the requirement of unity of invention under subsection (1) shall not be a ground
for the invalidation of the patent.

Right of Priority

9. (1) The application may contain a declaration claiming the priority, as provided for in

the Paris Convention, of one or more earlier nationl, regional or international
applications filed by the applicant or his predecessor in title in or for any State
party to the said Convention.

(2) Where the application contains a declaration under subsection (1), the Registrar

may request 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.

(3) The effect of the said declaration shall be as provided in the Paris Convention.

(4) If the Registrar finds that the requirements under this Section and the Rules

pertaining thereto have not been fulfilled, the said declaration shall be considered
not to have been made.

Information Concerning Corresponding Foreign
Applications for Patents

10. (1) The applicant shall, at the request of the Registrar, furnish him with the date and

number of any application for a patent filed by him abroad ("foreign application")

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relating to the same or essentially the same invention as that claimed in the
application filed with the Industrial Property Registry.

(2) (a) The applicant shall, at the request of the Registrar, furnish him with the

following documents relating to any of the foreign applications referred
to in subsection(1):

(i) a copy of any communication received by the applicant concerning

the results of any search or examination carried out in respect of the
foreign application;

(ii) a copy of the patent granted on the basis of the foreign application;

(iii) a copy of any final decision rejecting the foreign application or

refusing the grant requested in the foreign application.

(b) The applicant shall, at the request of the Registrar, furnish him with a
copy of any final decision invalidating the patent granted on the basis of
the foreign application referred to in paragraph (a).

Filing Date; Examination

11. (1) (a) The Registrar shall accord as the filing date the date of receipt of the

application, provided that, at the time of receipt, the application contains:

(i) an express or implicit indication that the elements are intended to
be an application for a patent;

(ii) indications allowing the identity of the applicant to be established;

(iii) a description.

(b) If the Registrar finds that the application didnot, at the time of receipt,

fulfill the requirements referred to in paragraph (a), he shall invite the
applicant to file the required correction and shall accord as the filing date
the date of receipt of the required correction, but if no correction is made,
the application shall be treated as if it had not been filed.

(2) Where the application refers to drawings which in fact are not included in the

application, the Registrar shall invite the applicant to furnish the missing
drawings. If the applicant complies with the said invitation, the Registrar shall
accord as the filing date the date of receipt of the missing drawings. Otherwise,
the Registrar shall accord as the filing date the dat of receipt of the application
and shall treat any reference to the said drawings as non-existent.

(3) After according a filing date, the Registrar shall examine whether the application

complies with the requirements of Section 7(1) and 7(2) and the Rules pertaining

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thereto and those requirements of this Act and the Rul s which are designated by the
Rules as formal requirements for the purposes of this Act and whether information
requested under Section 10, if any, has been provided.

(4) Where the Registrar is of the opinion that the application complies with the

requirements of subsection (3), the Registrar shall take a decision as to whether the
requirements of Sections 4(2) and (3), 5, 7(4), (5) and (6) and 8 and the Rules
pertaining thereto are fulfilled and for this purpose may, as provided for in the Rules,
cause the application to be examined.

(5) The Registrar shall take into account, for the purposes of subsection (4),

(a) the results of any international search report and any international

preliminary examination report established under the Patent
Cooperation Treaty in relation to the application; a d/or

(b) a search and examination report submitted under Section 10(2)(a)(i)
relating to, or a final decision submitted under Section 10(2)(a)(iii)
on the refusal to grant a patent on, a corresponding foreign
application; and/or

(c) a search and examination report which was carried out upon his
request by an external search and examination authority.

Grant of Patent; Changes in Patents

12. (1) Where the Registrar finds that the conditions referred to in Section 11(3) are

fulfilled, he shall grant the patent. Otherwise, he s all refuse the application and
notify the applicant of that decision.

(2) When he grants a patent, the Registrar shall:

(i) publish a reference to the grant of the patent;

(ii) issue to the applicant a certificate of the grant of the patent and a
copy of the patent;

(iii) record the patent;

(iv) make available copies of the patent to the public, on payment of

the prescribed fee.

(3) The Registrar shall, upon request of the owner of the patent, make changes in the text
or drawings of the patent in order to limit the extent of the protection conferred
thereby, provided that the change would not result in the disclosure contained in the
patent going beyond the disclosure contained in the initial application on the basis of
which the patent was granted.

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(4) The Registrar shall, whenever possible, reach a final decision on the application not

later than two years after the commencement of the examination referred to in Section
11(4).

Rights Conferred by Patent

13. (1) The exploitation of the patented invention in Bhutan by persons other than the

owner of the patent shall require the latter's agreement.

(2) For the purposes of this Act, "exploitation" of a patented invention means any of
the following acts:

(a) when the patent has been granted in respect of a pr duct :

(i) making, using, offering for sale, selling or importing for these

purposes that product;

(ii) stocking such product for the purposes of offering for sale, selling
or using;

(b) when the patent has been granted in respect of a process:

(i) using the process;

(ii) doing any of the acts referred to in paragraph (a) in respect of a

product obtained directly by means of the process.

(3) The owner of the patent shall, in addition to any other rights, remedies or actions
available to him, have the right, subject to subsection (4) hereof and Section 15,
to institute Court proceedings against any person who infringes the patent by
performing, without his agreement, any of the acts referred to in subsection (2) or
who performs acts which make it likely that infringement will occur.

(4) (a) The rights under the patent shall not extend :

(i) to acts in respect of articles which have been put on the market in

Bhutan by the owner of the patent or with his consent; or

(ii) to the use of articles on aircraft, land vehicles or vessels of other
countries which temporarily or accidentally enter the airspace,
territory or waters of Bhutan; or

(iii) to acts done only for experimental purposes rlating to a patented

invention; or

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(iv) to acts performed by any person who in good faith, before the

filing or, where priority is claimed, the priority date of the
application on which the patent is granted, was using the
invention or was making effective and serious prepaations for
such use in Bhutan.

(b) The right of prior user referred to in paragraph (a)(iv) may be transferred

or devolve only together with the enterprise or busine s, or with that part
of the enterprise or business, in which the use or preparations for use have
been made.

Duration; Annual Fees

14. (1) Subject to subsection (2), a patent shall expire 20 years after the filing date of the

application for the patent.

(2) In order to maintain the patent or patent application, an annual fee shall be paid in
the prescribed manner in advance to the Registrar fo each year, starting one year
after the filing date of the application for grant of he patent. A period of grace of
six months shall be allowed for the late payment of the annual fee on payment of
the prescribed surcharge. If an annual fee is not paid in accordance with the
provisions of this subsection, the patent application shall be deemed to have been
withdrawn or the patent shall lapse.

Exploitation by Government or Person thereby Authorized

15. (1) Where

(i) the public interest, in particular, national security, nutrition, health or the
development of other vital sectors of the national economy so requires; or

(ii) a judicial or administrative body has determined that the manner of
exploitation, by the owner of the patent or his licensee, is anti-
competitive, and the Minister is satisfied that theexploitation of the
invention in accordance with this subsection would remedy such practice:

the Minister may decide that, even without the agreem nt of the owner of
the patent, a Government agency or a third person designated by the
Minister may exploit the invention. The exploitation f the invention shall
be limited to the purpose for which it was authorized and shall be subject
to the payment to the said owner of an adequate remun ration therefor,
taking into account the economic value of the invention, as determined in

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the said decision, and, where a decision has been tak under paragraph
(ii), the need to correct anti-competitive practices. The Minister shall take
his decision after hearing the owner of the patent and any interested
person if they wish to be heard.

(2) Upon request of the owner of the patent, of the Government agency or of the third

person authorized to exploit the patented invention, the Minister may, after
hearing the parties, if either or both wish to be heard, vary the terms of the
decision authorizing the exploitation of the patented invention to the extent that
changed circumstances justify such variation.

(3) (a) Upon the request of the owner of the patent, the Minister shall terminate

the authorization if he is satisfied, after hearing the parties, if either or
both wish to be heard, that the circumstances which led to his decision
have ceased to exist and are unlikely to recur or that the Government
agency or third person designated by him has failed to comply with the
terms of the decision.

(b) Notwithstanding paragraph (a), the Minister shall not terminate the

authorization if he is satisfied that the need for adequate protection of the
legitimate interests of the Government agency or third person designated
by him justifies the maintenance of the decision.

(4) Where a third person has been designated by the Minister, the authorization may

only be transferred with the enterprise or business of that person or with the part
of the enterprise or business within which the patented invention is being
exploited.

(5) The authorization shall not exclude:

(i) the conclusion of license contracts by the owner of the patent; or

(ii) the continued exercise, by the owner of the patent, of his rights

under Section 13 (2).

(6) (a) A request for the Minister's authorization shall be accompanied by
evidence that the owner of the patent has received, from the person
seeking the authorization, a request for a contractual license, but that
person has been unable to obtain such a license on reasonable commercial
terms and conditions and within a reasonable time.

(b) Paragraph (a) of this subsection shall not apply in cases of national

emergency or other circumstances of extreme urgency provided, however,
that in such cases the owner of the patent shall be notified of the
Minister's decision as soon as reasonably practicable.

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(7) The exploitation of the invention by the Government agency or third person

designated by the Minister shall be predominantly for the supply of the market in
Bhutan.

(8) The decisions of the Minister under subsections (1) to (3) may be the subject of

an appeal before the Court.

Invalidation

16. (1) Any interested person may request the Court r the Registrar to invalidate a

patent.

(2) The Court or the Registrar shall invalidate the patent if the person requesting the
invalidation proves that any of the requirements of Section 4(2) and (3), Section 5
and Section 7(3), (4) and (5) are not fulfilled or if the owner of the patent is not
the inventor or his successor in title.

(3) Any invalidated patent, or claim or part of a cl im, shall be regarded as null and

void from the date of the grant of the patent.

(4) The final decision of the Court shall be notified to the Registrar who shall record
it and publish a reference thereto as soon as possible.

PART III

INDUSTRIAL DESIGNS

Definition of "Industrial Design"

17. (1) For the purposes of this Act, any composition of lines or colours or any three-

dimensional form, or any material, whether or not associated with lines or
colours, is deemed to be an industrial design, provided that such composition,
form or material gives a special appearance to a prduct of industry or handicraft
and can serve as a pattern for a product of industry or handicraft, and appeals to
and is judged by the eye.

(2) The protection under this Act does not extend to anything in an industrial design

which serves solely to obtain a technical result and to the extent that it leaves no
freedom as regards arbitrary features of appearance.

Registrable Industrial Designs

18. (1) An industrial design is registrable if it is new.

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(2) An industrial design shall be new if it has not been disclosed to the public in
Bhutan by publication in tangible form or by use or in any other way, prior to the
filing date or, where applicable, the priority date of the application for
registration. Section 5(2)(c) shall apply mutatis mutandis.

(3) Industrial designs that are contrary to public order or morality shall not be

registrable.

Right to Registration of Industrial Design; Naming of Creator

19. Section 6 shall apply mutatis mutandis.

Application

20. (1) The application for registration of an industrial design shall be filed in the

prescribed manner with the Registrar and shall contain a request, drawings,
photographs or other adequate graphic representatios of the article embodying
the industrial design and an indication of the kind of products for which the
industrial design is to be used. It may be accompanied by a specimen of the article
embodying the industrial design, where the industrial design is two-dimensional.
The application shall be subject to the payment of the prescribed application fee.

(2) Where the applicant is not the creator, the request shall be accompanied by a

statement justifying the applicant's right to the registration of the industrial
design.

(3) Section 9 shall apply mutatis mutandis.

(4) Two or more industrial designs may be the subject of the same application,

provided they relate to the same class of the Interna ional Classification or to the
same set or composition of articles.

(5) The application, at the time of filing, may contain request that the publication of

the industrial design, upon registration, be deferrd for a period not exceeding 12
months from the date of filing or, if priority is claimed, from the date of priority,
of the application.

(6) The applicant may withdraw the application at any time during its pendency.

Examination; Registration and Publication of Industrial Design

21. (1) The Registrar shall accord as the filing date the date of receipt of the application,

provided that, at the time of receipt, the application contains indications allowing
the identity of the applicant to be established and the required graphic
representation of the article embodying the industrial design. Section 11(1)(b)

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shall apply mutatis mutandis.

(2) After according a filing date, the Registrar shall examine whether the application
complies with the requirements of Section 20(1) and (2) and the Rules pertaining
thereto, whether the application fees has been paid and whether the industrial
design complies with the requirements of Sections 17 and 18(3) and the Rules
pertaining thereto.

(3) Where the Registrar finds that the conditions referred to in subsection (2) hereof

are fulfilled, he shall register the industrial design, publish a reference to the
registration and issue to the applicant a certificae of registration of the industrial
design; otherwise, he shall refuse the application.

(4) (a) Notwithstanding subsection (3), where a request has been made under

Section 20 (5) for deferment of publication, upon registration of the
industrial design, neither the representation of the design nor any file
relating to the application shall be open to public inspection. In this case,
the Registrar shall publish a mention of the deferment of the publication
of the industrial design and information identifying the registered owner,
and indicating the filing date of the application, the length of the period
for which deferment has been requested and any other prescribed
particulars.

(b) At the expiry of the period of deferment, the Registrar shall publish the

registered industrial design.

(c) The institution of legal proceedings on the basis of a registered industrial
design during the period of deferment of publication shall be subject to
the condition that the information contained in the Register and in the file
relating to the application has been communicated to the person against
whom the action is brought.

Rights Conferred by Registration; Duration; Renewal

22. (1) The exploitation of a registered industrial design in Bhutan by persons other than

the registered owner shall require the agreement of the latter.

(2) For the purposes of this Act, "exploitation" of a registered industrial design means
the making, selling or importation of articles incorp rating the industrial design.

(3) Section 13(4)(a)(i) shall apply mutatis mutandis.

(4) The registered owner of an industrial design 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 industrial design by performing, without his

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agreement, any of the acts referred to in subsection(2) or who performs acts
which make it likely that infringement will occur.

(5) The registration of an industrial design shall be for a period of five years from the

filing date of application for registration. The registration may be renewed for two
further consecutive periods of five years through the payment of the prescribed
fee. 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

23. (1) Any interested person may request the Court or the Registrar to invalidate the

registration of an industrial design.

(2) The Court or the Registrar shall invalidate the registration if the person requesting
the invalidation proves that any of the requirements of Section 17 and 18 is not
fulfilled or if the registered owner of the industrial design is not the creator or his
successor in title.

(3) Section 16(3) and (4) shall apply mutatis mutandis.

PART IV

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 this Act:

(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 se vices 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

25. (1) The exclusive right to a mark, as conferred by this Act, shall be acquired by

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registration in accordance with the provisions thereof.

(2) Nothing in this Act shall be deemed to affect rights of action against any person
for passing off goods or services as the goods of an ther 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 deceiv or cause
confusion.

Application for Registration

26. (1) 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

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under the applicable class or classes of the Interna io al Classification. It shall be
subject to the payment of the prescribed application fee.

(2) (a) The application may contain a declaration claiming the priority, as

provided for in the Paris Convention, of 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

27. (1) (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 Sction 25(3)(i) to (vi).

(2) (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 prescibed 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 d 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 oppositi n 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.

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(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 a certificate of registration. Otherwise, he shall refuse the
application.

Rights Conferred by Registration; Duration; Renewal

28. (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 o 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.

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(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

29. (1) (a) Any aggrieved person may request in the prescribed manner the Court or

the Registrar to invalidate the registration of a mrk.

(b) The Court or the Registrar shall invalidate th 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

30. (1) 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).

(2) (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 refer d 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

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services concerned.

Licensing of Marks and Collective Marks

31. (1) 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 hich 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.

(2) The Registration of a collective mark, or an application therefor, may not be the

subject of a license contract.

Trade Names

32. (1) 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 orde 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.

(2) (a) 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.

(b) 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

33. (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 d emed 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;

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(iii) indications or allegations the use of which in the course of trade is liable
to mislead the public as to the nature, the manufact ring process, the
characteristics, the suitability for their purpose, or the quantity of the
goods.

PART V: GENERAL PROVISIONS

Changes in Ownership; License Contracts

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, t 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 pr vious 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 m rk 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 regist red industrial design or a

registered mark, or an application therefor, shall be submitted to the Registrar who
shall keep its contents confidential but shall recod 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.

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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 a d 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 this Act 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 organisational 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 Marks. All the recordings provided
for in this Act shall be effected in the said Register .

(b) The Registers may be consulted by any person, and any person may obtain

extracts from the Register, under the conditions pre cribed in the Rules.

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

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 o in any recording effected
pursuant to this Act or the Rules.

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(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 this Act and the Rules, upon notice to the parties concerned and
upon such terms as he may direct. The extension may be granted though the time
for doing the act or taking the proceeding has expir d.

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 this Act or the Rules.

(2) Nothing in subsection (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 this Act, 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 sh l 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 pr tection, 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 infr gement, 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 an unlawful act as defined in Sections 32(2)

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and 33 shall be guilty of an offence punishable by imprisonment according to the
law of the land or by a fine of upto Nu. 10,00,000 or by both.

(4) For the purposes of proceedings, other than criminal proceedings, in respect of the

violation of the rights 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 conditions 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 this Act and, in case of conflict with
provisions of this Act, shall prevail over the latter.

Rules; Administrative Instructions

43. (1) The Minister shall issue Rules prescribing details for the implementation of this

Act. 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 this Act and the Rules as well as to the other functions of the Industrial
Property Registry.

Interpretation

44. In this Act, unless the context otherwise requires:

"Court" means a Court of competent jurisdiction;

"International Classification of Goods and Services" means, as regards industrial designs,
the classification according to the Locarno Agreement Establishing an International

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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 Marks, of
June 15,1957, as last revised;

"Minister" means the Minister of 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 date of the earlier application that serves as the basis for the

right or priority provided for in the Paris Convention;

"Registers" means the Registers referred to in Section 37(1);

"Registrar" means the Registrar of Industrial Propety;

"Rules" means the Rules referred to in Section 43(1).

Done at the 79th Session of the Gyalyong Tshogdu Chhenmo on the 22nd day of the 5th month of
the Female Iron Snake Year corresponding to 13 July, 2001.

i

Industrial Property Act
of the Kingdom of Bhutan,2001

TABLE OF CONTENTS

Page

Preamble 2

PART I 3

PRELIMINARY 3

Title 3
Commencement 3
Territorial Extent 3

PART II 3

PATENTS 3

Definitions 3
Patentable Invention 4
Right to Patent; Naming of Inventor 4
Application 5
Unity of Invention; Amendment and Division of Application 6
Right of Priority 6
Information Concerning Corresponding Foreign 6
Filing Date; Examination 7
Grant of Patent; Changes in Patents 8
Rights Conferred by Patent 9
Exploitation by Government or Person thereby Authorized 10
Invalidation 12

PART III 12

INDUSTRIAL DESIGNS 12

Definition of "Industrial Design" 12
Registrable Industrial Designs 12
Right to Registration of Industrial Design; Naming of Creator 13
Application 13
Examination; Registration and Publication of Industrial Design 13
Rights Conferred by Registration; Duration; Renewal 14
Invalidation 15

PART IV 15

MARKS, COLLECTIVE MARKS, TRADE NAMES AND ACTS OF

UNFAIR COMPETITION 15

Definition of "Mark," of "Collective Mark" and of "Trade Name" 15
Acquisition of the Exclusive Right to a Mark; Registrability 15
Application for Registration 16
Examination; Opposition; Registration of Mark 17
Rights Conferred by Registration; Duration; Renewal 18

ii

Invalidation; Removal on Grounds of Non-Use 19
Collective Marks 19
Licensing of Marks and Collective Marks 20
Trade Names 20
Acts of Unfair Competition 20

PART V

GENERAL PROVISIONS 21

Changes in Ownership; License Contracts 21
Agents 21
Organization of the Industrial Property Registry 22
Registers; Official Bulletin 22
Correction of Errors; Extension of Time 22
Exercise of Discretionary Powers 23
Appeals 23
Infringement; Unlawful Acts; Offences 23
Application of International Treaties 24
Rules; Administrative Instructions 24
Interpretation 24

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