Trade Mark Protection in Brunei Darussalam

shutterstock_152628707Last week we learned about Patent protection in Brunei Darussalam. To give you the complete overview of basic IP rights in the country, today’s blog post discusses Trade Mark protection in Brunei Darussalam. You will learn how to register your Trade Mark in Brunei Darussalam, which is very important, as IP right are territorial and your European Trade Mark is not automatically protected in Brunei Darussalam. You will also learn what IP protection is available in Brunei Darussalam for your Trade Mark and what you can do in the case of an IP infringement. 

Background for EU SMEs

Brunei Darussalam is one of the 10 countries of the Association of South-East Asian Nations (ASEAN).  Despite being one of the smallest ASEAN countries, it is also one of the wealthiest nations in the South-East Asian region. Brunei Darussalam has an annual GDP of EUR 10.6 billion[1] and most of its revenue comes from the exports of crude oil and natural gas.

The European Union is Brunei Darussalam’s 5th largest trading partner. The EU’s Key exports to Brunei Darussalam include pearls, precious metals, transport equipment and machinery and appliances. The EU’s key imports from Brunei Darussalam include machinery and appliances, optical and photographic instruments, pearls and precious metals.

Brunei Darussalam’s legal system is based on English Common Law and since the year 2000, Brunei Darussalam has passed various legislations on trade marks, industrial designs, copyright and patents. Brunei Darussalam’s IP legal system is in compliance with international standards, complying with international agreements and treaties administered by the World Intellectual Property Organisation (WIPO). It is a member of a number of conventions including the Paris Convention, the Berne Convention, the Patent Cooperation Treaty (PCT) and the Hague Agreement Concerning the International Registration of Industrial Designs. Brunei Darussalam is also a signatory of the TRIPS agreement. Brunei Darussalam is currently in talks to join the Madrid Protocol in the near future.

Trade Marks in Brunei Darussalam

Brunei Darussalam functions under the first-to-file system, which means that the first person who registers a trade mark in Brunei Darussalam, will have the right to that trade mark regardless of the trade mark’s first use. To be eligible for registration, a trademark must be visually perceptible and capable of being represented graphically. This means that the current Trade Mark Act would not recognize sounds and smells as trade marks.

The Registrar will not accept registration for a trade mark which he/she thinks is descriptive of the goods or services, including of the origin of goods and services. Any trade mark considered well-known under the Paris Convention and belonging to a resident of a Paris Convention country, a person domiciled or a person having a real and effective industrial or commercial establishment in a convention country, may be protected whether or not that person carries out any business or has any goodwill in Brunei Darussalam.

Brunei Darussalam follows the International Classification of Goods and Services Systems outlined in the Nice Agreement. A multi-class application is allowed and the mark, if registered is considered as one registration for renewal purposes.

The term of protection for trade marks is ten years from the filing date, which is the date of registration. The registration can, however, be renewed indefinitely for a period of ten years each time. The renewal application must be filed and a renewal fee must be paid six months before the expiry of the registration. Late renewal can be made within a period not exceeding six months after the expiration of the mark by paying an additional fee.

Trade Mark Registration

SMEs are strongly advised to register their trade mark in Brunei Darussalam, because IP rights are territorial and European trade marks do not enjoy automatic protection in Brunei Darussalam. SMEs should also consider registering their trade mark in Brunei Darussalam already before starting their business activities in the country, because Brunei Darussalam because  trade mark piracy due to ‘bad faith’ registration is a serious problem. ‘Bad faith’ registration means that a third party, not owning the trade mark, registers European SME’s trade mark, thereby preventing the legitimate owner from registering it. These unscrupulous companies would normally try to resell the trade mark to its owner at an inflated price.

An application for registration of a trade mark should be submitted to the Registrar of Trade Marks. For foreign applicants, such applications should be made through an authorised representative (agent) with a local address in Brunei Darussalam. A multi-class application is allowed and the mark, if registered is considered as one registration for renewal purposes. In order to file the application for registration of a trade mark, the following is required:

  • Form TM 1, filled in by the applicant.
  • Authorisation of agent form.
  • Prescribed fee for every class of goods or services in respect of which registration is sought.
  • Six specimens of the trademark.
  • List of goods/services.
  • English translation of the document, if relevant.

After the application is submitted, the Registrar will officially acknowledge the application and give a filing number. After formal examination, the Registrar will accept the application and it will be published in the government gazette for opposition. If there is no opposition after three months, the mark will proceed to registration. The entire process of registration takes between fifteen to eighteen months.

The official fee to register one mark in one class is B$281 (approximately EUR 167) for a non-complicated and straightforward application. The total cost, including the official fee, legal costs and disbursements is B$ 1200 (approximately EUR 710). The official fee for renewing one mark in one class is B$ 206 (approximately EUR 129) and search official fee which is mentioned below totals to B$20 (approximately EUR 3) per hour.

Enforcement

Enforcement through Customs

Under the trade mark laws of Brunei Darussalam, a trade mark owner who suspects that goods to be imported into Brunei Darussalam are counterfeits, fakes or infringing the owner’s trade marks may give notice to the Controller of Customs who shall then prevent such identified goods from entering the country by detaining or seizing the goods at the point of entry.

Written notice has to be given by the owner of trade marks to the Controller of Customs to prevent goods with infringing trade marks from entering Brunei Darussalam. The owner of the trade mark must firstly establish his ownership and provide the details of the infringing goods and the expected shipment of such goods to enable the Customs to identify the infringing goods coming into Brunei Darussalam.

Civil Litigation

Civil proceedings may be brought in court by a trade mark owner facing infringement. The trade mark owner may claim for such remedies as an injunction, order for delivery up to the infringing product seizure, damages or account of profits. Civil proceedings are the easiest avenue for enforcement for most IP owners facing infringement as only the certificate of registration is needed for proof of ownership.

To initiate a lawsuit, SMEs will need to file a writ endorsed with a Statement of Claim alleging the infringing act and claiming for the remedy. Before filing the court action, a letter to the infringer to cease and desist should be deployed. Court hearings may take up to two years, although court hearings recently became faster and the trial dates may be given within twelve to fifteen months. However, if the infringer responds to the initial cease and desist letter, the process of settlement is much faster.

Criminal Prosecution

Criminal Prosecution is usually considered the most cost effective enforcement route available to IP right holders as the legal expenses of prosecution are borne by the Government as the prosecuting party. It is also the best route to take for actions against infringers on a commercial scale and when infringement involves dangerous goods.

To file a prosecution, a police report must be firstly made. The police force will then conduct investigations and depending on their findings, they may conduct raids. Lastly, the police will report to a public prosecutor of the Attorney General Chambers about whether to prosecute the offender. Trade mark right infringement includes penalties not exceeding a fine of B$10,000 (approximately EUR 3,210), imprisonment for a term not exceeding 5 years, or both. Criminal prosecution is brought by the Attorney Generals Chamber and is thus free.

South-East Asia IPR SME Helpdesk Team

SEA IPR

The South-East Asia IPR SME Helpdesk supports small and medium sized enterprises (SMEs) from European Union (EU) member states to protect and enforce their Intellectual Property Rights (IPR) in or relating to South-East Asian countries, through the provision of free information and services. The Helpdesk provides jargon-free, first-line, confidential advice on intellectual property and related issues, along with training events, materials and online resources. Individual SMEs and SME intermediaries can submit their IPR queries via email (question@southeastasia-iprhelpdesk.eu) and gain access to a panel of experts, in order to receive free and confidential first-line advice within 3 working days.

The South-East Asia IPR SME Helpdesk is co-funded by the European Union.

To learn more about the South-East Asia IPR SME Helpdesk and any aspect of intellectual property rights in South-East Asia, please visit our online portal at http://www.ipr-hub.eu/.

[1] IP Factsheet: Brunei Darussalam, South-East Asia IPR SME Helpdesk: http://www.southeastasia-iprhelpdesk.eu/sites/default/files/publications/Brunei_factsheet.pdf

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