How can you protect your IP rights?
Protect your trademarks in Brunei Darussalam and abroad
There are two routes of protection of marks in Brunei Darussalam—the national route and the international route or protection via the Madrid Protocol. The national route is excellent if you want to protect your mark only in Brunei Darussalam, but if you are thinking of protecting your mark abroad, you may consider the Madrid option.
The Brunei Darussalam Intellectual Property Office (BruIPO) of the Energy and Industry Department, Prime Minister’s Office is the national agency in charge of registering trademarks.
The contact details of the office are as follows:
Brunei Darussalam Intellectual Property Office
The Trademarks Act of Brunei Darussalam provides for the protection of any visually perceptible sign capable of being represented graphically and is capable of distinguishing goods or services of one person or entity from those of another.
The types of marks that may be registered in Brunei Darussalam may consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging. Collective and certification marks may also be protected.
- The application must be filed using the prescribed application form available on the website of BruIPO.
- The filing language is English.
- The Office accepts paper applications only.
- Brunei Darussalam follows the first-to-file principle.
- BruIPO accepts multi-class applications. The Office accepts the Nice classification and the ASEAN List of Goods. The terms accepted by BruIPO may be accessed at www.asean-tmclass.org.
- The name and address of the applicant;
- The address for correspondence of the applicant or attorney/representative, if any;
- Reproduction of the mark;
- List of goods or services for which registration is sought;
- Statement that the trade mark is being used, by the applicant or with his consent, in relation to the goods or services listed in the application, or that he has a bona fide intention to use the mark himself or with his consent;
- Filing fee.
- If convention priority is claimed, the details of the claim (priority date, country of earlier filing, and number) must be indicated in the application.
- If the application is for a series of marks, the number of marks in the series must be stated.
- If the application is for the registration of a 3-dimensional shape, this must be indicated in the application.
- Claim of colour, if there is any.
- Disclaimer or limitation, if there is any.
- Translation or transliteration of non-English words or foreign character/s, and a certified copy of the translation.
Once the minimum and other formality requirements are met, the application shall be examined to determine whether they meet the registrability criteria under the Trademark Act and regulations.
A mark cannot be registered if:
- it is not visually perceptible and not capable of being represented graphically.
- it is devoid of any distinctive character, unless it has acquired distinctiveness before the date of the application.
- it consists exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production of goods or of rendering of services, or other characteristics of goods or services, unless it has acquired distinctiveness prior to the filing of the application.
- it consists exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade, unless it has acquired distinctiveness before the date of the application.
- if the mark consists exclusively of (a) the shape which results from the nature of the goods themselves; or (b) the shape of goods which is necessary to obtain a technical result; or (c) the shape which gives substantial value to the goods.
- if the mark is (a) contrary to public policy or to accepted principles of morality; or (b) likely to deceive the public.
- if or to the extent that its use is prohibited in Brunei Darussalam by any law.
- if the mark is consists of or is a specially protected emblems listed below.
- if or to the extent that the application is made in bad faith.
The following are the protected emblems that cannot be registered:
- representation of the Emblem, Arms and Regalia of Brunei Darussalam, including the Royal Arms, State Crest, the Insignia of Royalty, armorial bearings and other insignia and emblems of Brunei Darussalam, or any device so closely resembling any of them as to be likely to be mistaken for them;
- representation of the Royal crowns, and His Majesty the Sultan and Yang Di-Pertuan’s Standard or any other Royal flag, or any colourable imitation thereof;
- representation of His Majesty the Sultan and Yang Di-Pertuan or any member of the Royal family, or any colourable imitation thereof;
- any word, letter or device likely to lead persons to believe that the applicant either has or recently has had Royal patronage or authorisation;
- any name or thing which is a specified name or specified emblem as defined the act prohibiting the improper use of emblems and names, or any colourable imitation thereof, unless it appears to the Registrar that consent has been given by or on behalf of His Majesty the Sultan and Yang Di-Pertuan or, as the case may be, that member of the Royal family;
- consists of or contains a representation of the national flag of Brunei Darussalam shall not be registered if it appears to the Registrar that the use of that trade mark would be misleading or grossly offensive.
- other national emblems and those protected under the Paris Convention and World Trade Organisation countries and emblems of certain international organisations.
Furthermore, rules may be enacted prohibiting the registration of a trade mark which consists of or contains (a) arms which a person is authorised to use by virtue of a grant of arms by His Majesty the Sultan and Yang Di-Pertuan; or (b) insignia so closely resembling such arms as to be likely to be mistaken for them, unless it appears to the Registrar that consent has been given by or on behalf of that person. Where such a mark is registered, nothing in this Act shall be construed as authorising its use in any way contrary to any law relating to arms.
The following grounds will also be used as basis by BruIPO to refuse the registration of a mark:
- If the mark is identical with an earlier trade mark, and the goods or services for which the trade mark is applied for are identical with the goods or services for which the earlier trade mark is protected.
If the mark
- is identical with an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected, and there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark; or
- is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.
A trade mark which —
- is identical with or similar to an earlier trade mark if, or to the extent that, the earlier trade mark has a reputation in Brunei Darussalam and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.; and
- is to be registered for goods or services which are not similar to those for which the earlier trade mark is protected, shall not be registered if, or to the extent that, the earlier trade mark has a reputation in Brunei Darussalam and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
A trade mark shall not be registered if, or to the extent that, its use in Brunei Darussalam is liable to be prevented —
- by virtue of any law protecting an unregistered trade mark or other sign used in the course of trade; or
- by virtue of an earlier right, other than those referred to above, or by any law relating to the infringement of copyright or registered designs.
Once an application has been accepted for registration, it shall be published in the Gazette upon directive from the Registrar.
An opposition to the registration of a trade mark may be filed within 3 months of the date of publication in the Gazette. If no opposition to the registration of the mark is lodged with the Registrar, the mark will be registered and the Certificate of Registration issued.
If you are thinking of seeking protection outside Brunei Darussalam, you may wish to consider the Madrid Protocol option or the “International Route”. Madrid Protocol will enter into force in Brunei Darussalam on 06 January 2017. This option is crucial if you intend to export your products abroad. In this context, you should familiarize yourself with the key elements of the Protocol Relating to the Madrid Agreement for the International Registration of Marks or the Madrid Protocol, which is undoubtedly very beneficial for SMEs in countries like Brunei Darussalam, if they wish to protect their marks in other countries.
The Madrid Protocol enables trademark owners to obtain protection in as many countries as are members of the international agreement by simply filing one application, in one language (including English), with one set of fees and in one currency (Swiss francs). Similar advantages exist when the registration has to be renewed or is assigned to a third party or when other changes, such as in name and/or address, have to be recorded.
In short, the Madrid system is a simple, economical, effective centralized procedure that provides for:
- A one-stop shop for trademark holders to obtain and maintain trademark protection in export markets;
- A single set of simple formalities;
- Lower registration fees;
- No need to translate the application into several languages;
- Great ease of post-registration administration of your rights.
The savings achieved, in terms of filing fees, formalities and agent fees abroad, will clearly facilitate the protection of your trademark abroad and therefore the marketing of your products in foreign countries. The good news is that beginning January 2017, Brunei Darussalam will start receiving Madrid applications. This means that if you possess either a commercial or industrial establishment in Brunei Darussalam, or you are domiciled in or a national of Brunei Darussalam, then you are entitled to use the Madrid system.
A single international application produces the same legal effects in the various designated countries as if the mark had been filed nationally. In other words, the effects of an international registration are equivalent to those of a national registration. As a consequence, an international registration can be seen as a bundle of national registrations, whose management is centralized within the hands of the International Bureau of WIPO and is greatly simplified.
However, it is important to remember that the Madrid system is merely procedural. The domestic legislations of the designated Contracting Parties set the substantive conditions for the actual granting of the protection. In general, it is recommended to seek professional advice before filing an application.
This is the way you should proceed to use the Madrid system:
- First of all, if you are using DIP as your so-called “Office of Origin”, you need to have a basic mark—an application or a registration in Cambodia. This is what you will use as basis for your international application.
- You need to use the official WIPO Form (MM2) to file an international application with DIP. The filing language in DIP is English. You cannot use Khmer when filing a Madrid international application. Note that you cannot file your application directly with WIPO.
- Your basic mark should match your national application or registration. You may decide to reduce its scope (for example, by eliminating some of the goods/services covered by the national mark), but you cannot expand it.
The international application must contain the following:
- a reproduction of the mark (identical to the mark filed or protected nationally);
- a list of the goods and/or services for which protection is sought, classified in accordance with the International Classification of Goods and Services (Nice Classification); and
- the indication of the Contracting Parties in which protection of the mark is sought (the so-called “designations”); these are the countries where you wish to register your mark and where you intend to do business.
- An international application is subject to the payment of fees. The standard fee system comprises a basic fee (which is intended to cover the costs of the International Bureau in administering the system of international registration), a supplementary fee (if the list of goods and services involves more than three classes of the International Classification under the Nice Agreement) and a complementary fee (for each Contracting Party for which protection is requested) or an individual fee (instead of the complementary fee), the amount of which is determined by that Contracting Party.
- Before forwarding the application to WIPO, BruIPO, your Office of Origin must certify that the mark that is the subject of the international application is the same as that in the national application or registration, that the applicant or owner of the mark in both the basic mark and the international application is identical, and that the goods and/or services listed in the application are covered by those of the basic registration or basic application.
- On receipt of the international application, WIPO checks that it complies with the requirements of the Madrid Protocol and of the Common Regulations, including in particular, the requirements relating to the classification of the list of goods and/or services, and that the required fees have been paid. The Office of Origin and the applicant are informed of any irregularities and these must be remedied within the time limit of three months, otherwise the application will be considered abandoned.
- Where the international application complies with the applicable requirements, the mark is recorded in the International Register and published in the Gazette. The International Bureau then notifies each Contracting Party in which protection has been requested.
- Each designated Contracting Party has the right to refuse protection in its own territory if the mark does not comply with the substantive requirements of its law.
- A refusal must be notified to WIPO by the Office of the designated Contracting Party concerned within the time limit specified (in principle, 12 months from the date of the notification of the international registration, or 18 months, or even a longer period if the refusal is based on an opposition).
- If no refusal is notified to WIPO within the relevant period, the mark in question will enjoy the same protection in the Contracting Parties concerned as if it had been registered by the respective Offices of these Contracting Parties. The designated contracting party will then issue a Statement of Grant of Protection.
- On the contrary, if a refusal is notified, the procedure subsequent to that refusal, such as a review or appeal, is carried out directly between the holder and the national IP Office of the designated contracting party in accordance with domestic legislation and without any involvement on the part of WIPO.
- An international registration is in effect for 10 years. It may be renewed for further periods of 10 years on payment of the prescribed fees. The applicant will still need to comply with the maintenance requirements (use requirements) of each of the designated contracting parties, if there are any.
There are two routes of protection of industrial designs in Brunei Darussalam—the national route and the international route of protection via the Hague Agreement. The national route is excellent if you want to protect your mark only in Brunei Darussalam, but if you are thinking of protecting your design abroad, you may consider the Hague option.
The Brunei Darussalam Intellectual Property Office (BruIPO) of the Energy and Industry Department, Prime Minister’s Office is the national agency in charge of registering industrial designs.
Brunei Darussalam Intellectual Property OfficeEnergy and Industry Department
Prime Minister's Office
Design & Technology Building
Anggerek Desa Technology Park
Jalan Berakas BB3713
Telephone: +673 2380966
Facsimile: +673 2380545
- The application must be filed using the prescribed application form.
- The filing language is English.
- The office accepts paper applications only.
The application for registration of an industrial design must contain the following:
- a representation of the industrial design suitable for reproduction;
- the name and address of the applicant;
- where the applicant is not the industrial designer, a statement explaining the applicant's rights in relation to the industrial design; and
- an address in Brunei Darussalam for the service of documents.
- a statement identifying the article or articles to which the industrial design is intended to be applied;
- a statement identifying the Locarno classification of the article or articles to which the industrial design is intended to be applied;
- six additional representations of the industrial design corresponding exactly to the original;
- transliteration of the name of the applicant, if it is not in Roman letters;
- signature of the applicant;
- any other information required in the prescribed application form.
Two or more industrial designs may be the subject of the same application for registration if the industrial designs relate to the same class of articles as classified in the Locarno Classification.
The filing date of an application for registration of an industrial design is the latest of the dates on which
The following requirements are submitted:
- request for registration of the industrial design;
- representation of the industrial design suitable for reproduction;
- statement that the industrial design is new.
- The prescribed filing fee is paid.
Any formal defects that are not remedied within the prescribed period will result in the abandonment of the application. The application shall also be deemed abandoned if the prescribed filing fee is not paid.
The representation of the industrial design may be either a drawing or a photograph and shall not be more than 160 millimetres by 160 millimetres, and one side of the representation shall be not less than 30 millimetres.
Where the application is made for the registration of an industrial design intended to be applied to a set of articles, the representation shall show the industrial design as applied to each article included in the set.
The application shall be accompanied by six additional representations of the industrial design corresponding exactly to the original.
An application may claim the priority of an earlier application filed in a country that is a member of the Paris Convention or the WTO for purposes of registering the same industrial design in respect of any or all of the same articles, for a period of six months from the filing date of the first application.
A subsequent application for registration of a design that was subject of an earlier application filed in a Paris or WTO country shall be considered as the first application for the purpose of determining priority if, at the time of filing the subsequent application, (a) the previous application had been withdrawn, abandoned, or refused without having been open to public inspection and without any outstanding rights; and (b) has not served as basis for claiming a priority right.
An industrial design which is new may be registered in respect of any article or set of articles specified in the application.
A statement describing the features of the industrial design which the applicant considers to be new shall appear on each representation of the industrial design. Where practicable, the statement shall appear on the front of each representation. The statement of novelty shall appear separately from any other statement appearing on the representation.
An industrial design for which an application for registration is made shall not be regarded as new if it is the same as -
- an industrial design that has been registered in pursuance of a prior application filed or having effect in Brunei Darussalam, whether or not that industrial design has been registered in respect of the same article for which the application is made or in respect of any other article; or
- an industrial design that has been disclosed in Brunei Darussalam or elsewhere before the filing date, whether or not it has been published in respect of the same article for which the application is made or in respect of any other article, or if it differs from such an industrial design only in immaterial details or in features which are variants commonly used in the trade.
For the purpose of deciding whether an industrial design is new, the Registrar may direct that an application for registration to be treated as made on a date earlier or later than that on which it was in fact made.
If an application for registration of an industrial design has been accorded a filing date and has not been withdrawn, the Registrar shall examine the application to determine whether it complies with the formal requirements.
In case of formality deficiencies, the Registrar shall notify the applicant require that the defects be corrected within the prescribed period.
If the application is found to have satisfied the formal requirements and the prescribed fees paid, the Registrar shall:
- register the industrial design by entering the prescribed particulars in the Register, including the name of the applicant, or the successor in title to the application, as the owner of the industrial design;
- issue a certificate of registration to the registered owner of the industrial design; and
- advertise the registration and publish a representation of the industrial design in the Gazette.
If you are thinking of seeking protection outside Brunei Darussalam, you may wish to consider the Hague Agreement for the International Registration of Industrial Designs option or the “International Route”. This is a very good option if you intend to export your products abroad. In this context, you should familiarize yourself with the key elements of the Hague Agreement for the International Registration of Industrial Designs, which is undoubtedly very beneficial for SMEs in countries like Brunei Darussalam, if they wish to protect their designs in other countries.
The Hague Agreement enables industrial design owners to obtain protection in as many countries as are members of the international agreement by simply filing one international application, in one language (including English), with one set of fees and in one currency (Swiss francs). Because of the efficiency of acquiring design protection in multiple countries provided by the Hague Agreement, cost savings are realized by design owners.
The Hague Agreement is available to any person or entity that is a national of, has domicile, or has real and effective industrial or commercial establishment in Hague member. An international application may also be filed in a Hague Contracting Party that is the habitual residence of the of the applicant.
A single application may include up to 100 different designs, for as long as they all belong to the same class of the Locarno Classification. The publication of the designs may be requested to be deferred for a period or 12 or 30 months from the date of filing or priority date, if there is a priority claim. Brunei Darussalam has declared that the deferment period is only up to 12 months from the filing or priority date.
An applicant may file the application with the IP Office of a Hague Contracting Party or directly with the International Bureau of the World Intellectual Property Organization (WIPO), if this is allowed by the applicant’s Contracting Party. The application may be filed in English, French and Spanish. An international application is subject to the payment of a basic fee, a publication fee and either an individual or standard fee based on the number of countries where the applicant wishes to seek protection for the design. The application may be filed in paper or online.
Once the international application is received by the International Bureau, it will check whether the prescribed formality requirements (such is quality of representation, fees) are met. In case of defects, the applicant will be notified by the International Bureau and given three months to correct the deficiencies. If the formality issues are not resolved within the time period, the international application will be abandoned.
If the formality requirements are met, the application will be published by the International Bureau, unless there is a request for deferment of publication. The resulting international registration will then be transmitted by the International Bureau to the Contracting Parties designated in the application.
The IP Offices have the option to refuse the registration of the industrial design if it does not comply with the substantive conditions for protection in the concerned Contracting Party. The refusal of protection, if any, is issued by the IP Office either within 6 or 12 months. In the case of Brunei Darussalam, the refusal period is 6 months.
If there are no grounds to refuse protection, the design will be protected in the Contracting Party under the laws of such country. The international registration will be protected for an initial period of five years, with an option for renewal for an additional period of five years, or up to the maximum period allowed by each Designated Contracting Party. In Brunei Darussalam, the maximum total period is 15 years.