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Madrid System- international registration for trademark

March 5, 2020
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With the growth in export-oriented enterprises in the country, it has become imperative that the business firms and entrepreneurs register their trademarks abroad too. Registering abroad will give the right to prevent others from using a similar mark without the applicant’s permission.

And it is easier to do so if they file their registration through the Madrid filing system routing through the Department of Intellectual Property. It is a tool to protect registered trademarks globally.

Trademarks are distinctive signs, names and symbols that distinguish goods and services from one another. Trademark registration adds great value to a business. By filing registration, the trademark owner obtains a right to ownership.

“If the Bhutanese products in some countries are doing good and then they are preferred by the consumers of those countries, then over the years if those products have built reputation and goodwill then there are every chances that someone else will copy their trademark to sell their goods. So if it happens then original Bhutanese exporter will not be able to use his mark in his own products in those countries since somebody has registered his mark in that country,” said Binod Pradhan, the Deputy Chief Intellectual Officer at the Ministry of Economic Affairs.

And this is where the Madrid system plays an important role. It is a reliable, convenient and cost-effective solution for registering and managing trademarks in other countries.

“Under the Madrid System, the applicant will have to submit just one application and then he will have to submit it to the office of origin which in Bhutan is the Department of Intellectual Property. Then we forward that application to the World Intellectual Property Organisation (WIPO), and WIPO will designate all the countries wherever the applicants want to register his mark. So that way applicants just need to file one application and then with one application, his mark will be registered in all the countries wherever he wants to register his mark. So that way, the Madrid system is highly effective as well as very easy process,” he added.

Lately, the office has been receiving inquiries from business firms and others for filing their trademarks abroad using the Madrid system considering its benefits. And to build the capacity of the intellectual property officials, a three-day workshop was conducted that ended today.

“Since we have been getting requests from the private sector showing some interest in filing their marks abroad, we wanted to build our own capacity to acquaint ourselves with various operational and the procedural aspects of filing the trademarks abroad using the Madrid System,” he further added.

Trademark registration is the major source of revenue generator for the intellectual department. It generated a revenue of more than Nu 100 M since its inception in 2000.

Sonam Pem

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