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Trademark

Summary
  1. Legislation: Trade Marks Act (Cap 98).
  2. Definition: A trademark is defined as any visually perceptible sign capable of being represented graphically and capable of distinguishing goods or services of one undertaking from those of other undertakings.
  3. Criteria: o be registrable, a trademark must be new? (ie: there is no identical or confusingly similar mark in the same class by another applicant) and distinctive. Shape, colour and aspects of packaging are registrable in Brunei. There is also provision for the protection of well-known trademarks. Service marks are registrable. Multi-class applications, divisional applications, merger of applications and registrations are also available in Brunei.
  4. Membership: X – Paris Convention X – Madrid Protocol
  5. Rule of Priority: The first user of a mark is entitled to its registration in Brunei. Classification is identical with international classification.
  6. Duration and Renewal: Under the old law, trademark are viable for an initial period of seven years and renewable for a further period of fourteen years. After the amendment to Brunei’s trademarks law on 1 June 2000, a 10-year term of renewal will be granted where the renewal falls due on or after 1 June 2000. The old 14-year term will be granted only if the renewal fell due before 1 June 2000.
Procedure/Timeline
  1. Application Every applicant is required to submit an application with the Brunei Trademark office.
  2. Examination On submission of the application, the Trade Marks office will examine the application for statutory compliances. Such examinations could lead to office actions. Applicants will be informed and also given an opportunity to reply to such office actions.
  3. Publication A trade mark which passes through examination be published in the government gazette subject to the satisfaction of the registrar.
  4. Opposition Third parties can oppose the application within three months of publication.
  5. Registration On completion of objections and opposition a Certificate of Registration will be issued by the trade marks office subject to the payment of a fee. A trade mark once registered is valid for a term of 10 years and can be renewed every 10 years.
Requirements
The following information and/or documents are required to file an application for a trademark application in Brunei:-
  1. Application Form
  2. One (1) clear copy of the mark.
  3. The full name, nationality and registered address of the applicant.
  4. A list of goods or services (which closely follow the Nice International Classification).
  5. Description of claim if colour or a combination of colour or a combination of colours is claimed as Trademark.
  6. For marks that contain non-English words, a certified transliteration and translation.
  7. If convention priority is claimed, a certified copy of the priority.
Documents
Basic Requirements
Documents Remarks Time of filing
Mark in the form of foreign characters has to be accompanied with transliteration in English Certified by Translator 2 months from filing
Additional Documents for Claiming Convention Priority
Documents Remarks Time of filing
Priority documents Certified copy of the basic application. Documents in any other language has to be provided with its English translation 2 months from filing
Documents for Filing a Request of Recordals of Assignments and Changes
Documents Remarks Time of filing
Copy of : - Assignment deed; or -Document of name change; -Document of address change
  • Notarized Certified Certified
    Anytime after registration
    Documents for Filing an Opposition or Counter-Opposition
    (Deadline for Applying is during 3 Months Publication Period of the Trade Mark Application to be Opposed)
    Documents Remarks Time of filing
    Copy of registrations in various countries No legalization On filing date
    Copy of advertisements/ brochures of the products bearing the mark No legalization; as many and as early as possible On filing date
    Agents
    Pintas IP Group Sdn Bhd
    P.O. Box 18, Anggerek Desa Complex,
    BB3780 Brunei Darussalam.
    Fees
    Items Official Fees (USD) Professional Fees (USD)
    1. Search 20 180
    2. Filing application 130 630
    3.Issuance of Certificate 105 315

    Patent

    Summary
    On 1 January 2012, the Patents Order 2011 and Patents Rules 2012 came into effect. The Brunei’s Patent Order 2011 replaces the previous re-registration system of Singapore, Malaysia, UK and EP (designating UK) patents and establishes an independent patent system. The transitional provisions allow for continued re-registration of a granted UK, European patent (designating UK, Malaysia or Singapore under the old Inventions Act.
    1. Legislation:Patent protection in Brunei is governed by the Patents Order 2011 and Patents Rules 2012.
    2. Patentability Criteria: A patent has to fulfill the following conditions in order to claim protection.
      • it is new
      • it involves an inventive step
      • capable of industrial application
    3. Utility Innovations N/A in Brunei
    4. Membership: √ – Paris Convention √ – PCT Any PCT application with international filing date on or after 24 July 2012 may designate Brunei Darussalam (country code – BN)
    5. Rule of Priority: “First to File” is the rule followed by Brunei in determining priority of patents.
    6. Duration The term of a patent granted under the Order shall be 20 years from its filing date. Annual fees shall be payable in respect of the fifth year onwards.
    Requirements
    The following information and/or documents are required to file an application for a patent in Brunei:-Direct National Application
    1. Request for the grant of a patent (PF 1):-
      1. the name and address of the applicant;
      2. the name and address of the inventor;
      3. a specification comprising a description, claims and any necessary drawings; and
      4. the country and filing particulars of basic application whose priority is claimed.
    2. Appointment of Patent Agent (PF 46)
    3. A statement explaining how the applicant derives its right to the patent from the inventor, normally by virtue of assignment or employment (PF 8).
    4. There is no requirement for the filing of an assignment from inventor to applicant.
    PCT National Phase Application
    1. Request for the grant of a patent(PF42);
    2. A copy of the PCT application in English language ( i.e. request form PCT/RO/101);
    3. The details of the PCT application (suitably, the bibliographic page as published by WIPO);
    4. One copy of the PCT specification as originally filed (in or translated to English);
    5. One copy of any amendments filed in the international phase (in or translated to English);
    6. An Appointment of Agent form signed by the applicant(PF 46); and
    7. A statement explaining how the applicant derives its right to the patent from the inventor, normally by virtue of assignment or employment (PF 8).
    Procedure/Timeline
    1. Filing of Patent Application Every applicant is required to submit an application to the registrar of patents within 12 months of priority date.
    2. Preliminary ExaminationA formalities examination for forms will be carried out to ensure statutory compliance.
    3. Publication The application will be published after 18 months after the date of filing of the application.
    4. Examination

      There are four ways of examination:

      • Option 1: Request For Local Search and Examination (Non-PCT)

        The applicant may file a request for search within 13 months from the priority date to be followed by a request for examination within 21 months from the priority date or a combined search and examination within 21 months from the priority date.

      • Options 2.1: Notification To Rely on Prescribed Information From a Prescribed Patent Office (Non-PCT) or International Preliminary Report on Patentability (For PCT National Entry)

        The applicant can furnish prescribed information ( ie, search, examination results and claims in English) of corresponding foreign application from a prescribed patent office (namely, from either Europe, USA, Japan, Australia, Canada, United Kingdom, New Zealand or South Korea) ( for non-PCT filing) or IPRP ( for PCT national entry) to meet local grant requirements within 42 months from the priority date. Please be informed that under this option, the claims must either be the same or narrow in scope as compared to the claims in the corresponding application that have been examined for novelty, inventive step and industrial applicability.

      • Option 2.2: Notification To Rely on Prescribed Information Under the Slow Track (Non-PCT)

        If the applicant is unable to produce prescribed information showing final results or grant of foreign application from a prescribed patent office, the applicant can opt to proceed under the slow track by filing a block extension of time by 39 months and extend the deadline for filing the notification or prescribed information to 60 months.

      • Option 3: Request For Local Search and Examination Under the Slow Track (PCT National Entry)

        The applicant can file a block extension of time by 39 months and request local examination based on the International Search Report or request combined search and examination at time of requesting the block extension, similar to the slow track option of a non-PCT application.

    5. Registration Upon the receipt of a search and examination report, the applicant would have to assess if it is worthwhile to proceed to obtain a grant of a patent and maintain the patent. If the applicant chooses to do so, he would then submit a request for grant. On grant, a certificate of grant would be issued, and this fact and date of grant will be published in the Patents Journal.
    Agents
    Pintas IP Group
    P.O. Box 18, Anggerek Desa Complex,
    BB3780 Brunei Darussalam.
    Documents
    Basic Requirements
    Documents Remarks Time of filing
    Patent specification, claims and abstract in English No legalization requirement On filing date
    Drawings (if any) On filing date
    Additional Documents for Convention Patent Application
    Documents Remarks Time of filing
    Priority documents Certified copy of the basic patent application Within 2 months after filing
    Appointment of Agent (PF46) - Within 2 months after filing
    Additional Documents for Entry of PCT National Phase in Brunei
    Documents Time of filing
    International Preliminary Report on Patentability based on International Preliminary Search Report (Chapter 1); or On filing date
    International Preliminary Report on Patentability based on International Preliminary Examination Report (Chapter II) On filing date
    Fees
    Application Fees
    Items Official Fees (USD) Professional Fees (USD)
    1.Filing Patent Application 250 945
    2. Priority Document - 255
    3. Request for Search and Examination 2170 1005
    4. Relying on International Search Report, corresponding patent application - 690
    5. Office Action - 510
    6. Issuance Fee -Each claim in excess of 25 claims 170 20 570 -
    Maintenance Fees
    Items Official Fees (USD) Professional Fees (USD)
    5th to 7th year (each year) 140 170
    8th to 10th year (each year) 230 170
    11th to 13th year (each year) 300 170
    14th to 16th year (each year) 390 220
    17th to 19th year (each year) 470 220
    20th year 560 220

    Industrial Design

    Summary
    1. Legislation: The Emergency (Industrial Designs) Order 1999 which came into force on the 1st May 2000.
    2. Definition: “Industrial Design” is defined “as features of shape, configuration, pattern or ornament applied to an article by any industrial process, being features which in the finished article appeal to and are judged by the eye, but does not include:- (a) method or principle of construction; or (b) features of shape or configuration of an article which: – (i) are dictated solely by the function which the article has to perform; or (ii) are dependent upon the appearance of another article of which the article is intended by the designer to form an integral part.”
    3. Criteria: To claim protection, a design has to fulfill the following conditions:- (i) design must be new, that is there must not have been any prior disclosure; (ii) appearance of article must be material; (iii) publication or use of design must not be contrary to public order or morality.
    4. Rule of Priority: A claim to priority right must be applied for within six (6) months from the filing date of the first application in a Paris Convention Country or WTO member or successor in title, subject to compliance with any prescribed conditions.
    5. Duration and Renewal: A Registered Design can last for an initial period of 5 years from the filing date of the application for registration. Thereafter, the registration may be renewed up to a maximum of 15 years, subject to the payment of renewal fees
    Requirements
    The following information and/or documents are required to file an application for an industrial design application in Brunei:-
    1. Request for registration for the industrial design:-
      1. The name and address of the applicant;
      2. Where the applicant is not the industrial designer, a statement explaining the applicant’s rights in relation to the industrial design;
      3. Sn address in Brunei Darussalam for the services of documents
      4. A transliteration of the name of the application, if it is not in Roman letters;
      5. A statement identifying the article or articles to which the industrial design is intended to be applied;
      6. A statement identifying the classification of the article or articles to which the industrial design is intended to be applied, according to the class and sub-class of the classification establish by the Lacarno Agreement.
    2. Six additional representations of the industrial design.
    Procedure/Timeline
    1. Application Every design application has to be filed with the Registry.
    2. Examination The Registrar on receipt will accord a filing date; and will proceed to examine the application on the “formal requirements”. If there are deficiencies with regards to the formal requirements, the applicant will be notified and given the opportunity to correct the deficiencies within a prescribed period.
    3. Registration If the formal requirements are satisfied then as soon as practicable after such examination, but subject to Section 27, the Registrar shall on payment of the prescribed fees register the industrial design by entering the prescribed particulars in the Register.
    Agents
    Pintas IP Group
    P.O. Box 18, Anggerek Desa Complex,
    BB3780 Brunei Darussalam.
    Documents
    Basic Requirements
    Documents Remarks Time of filing
    A copy of the granted patent specifications duly certified by the relevant Patent Office. Certified copy On filing date
    Drawings duly certified by the relevant Patent Office Certified copy On filing date
    The Extract Sheet obtained by the relevant patent office (e.g. in UK, the Register Extract Sheet) - On filing date
    Additional Documents for Claiming Convention Priority
    Documents Remarks Time of filing
    Priority documents to be translated to English 2 months from filing
    Fees
    Application Fees
    Items Official Fees (USD) Professional Fees (USD)
    Filing application 260 470
    Filing application one design for articles forming a set of articles 430 470
    Issuance of Certificate 430 210
    Maintenance Fees
    Items Official Fees (USD) Professional Fees (USD)
    For the first period of 5 year 430 430
    For the second period of 5 years 600 510