Following the 13th session of the Brunei Legislative Council (“LegCo”), the Brunei Intellectual Property Office (“BruIPO”) circulated amendments to the Trade Marks Act (Cap 98) and Trade Marks Rules 2000. These amendments have been in effect since 26 January 2017.
The amendments widen the scope and classification of goods and services that are subject to registration. The amendments also provide some clarity regarding Brunei’s position following the recent accession to the Madrid Protocol.
Brunei Intellectual Property Office
BruIPO has expanded in recent years following the change of management from the Attorney General Chambers (“AGC”) and Brunei Economic Development Board (“BEDB”). The recent amendments moved the management of BruIPO to the Ministry of Energy and Industry in the Prime Minister’s Office (“EIDPMO”).
Key Changes to the Trade Marks Act (Cap 98) and Trade Marks Rules 2000
1. Scope of trademarks
The word “visually” has been removed from the definition of “trademarks”, thus leaving room for the Registry of Trade Marks to now accept non-conventional marks. On that note, the meaning of “trademarks” now reads as follows:
“… any perceptible sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings. A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging.”
In summary, should individuals or companies succeed in fulfilling the criteria for registration, it is now possible to register colour, motion (animated, moving, moving images, movement), smell (olfactory), shape (three-dimensional or 3D) and sound (aural) as marks.
2. Madrid Protocol
The Madrid System was adopted on 27 June 1989 in Madrid. As of 26 January 2017, Brunei’s accession to the Madrid Protocol has enabled the existence of a one stop solution for registering and managing marks.
To cater to such accession, a new provision has been added in the Trade Marks Act (Cap 98) which gives powers to the Minister of EIDPMO to make provisions giving effect to the Madrid Protocol. Consequently, international applications made to BruIPO via the Madrid System will become faster and easier.
Besides Brunei, other members to the Madrid Protocol within ASEAN are Cambodia, Philippines, Singapore and Vietnam.
3. Classifications of goods and services
The Third Schedule of the Trade Marks Rules 2000 introduced a number of amendments to the classification of goods and services.
Among others, the following goods have been included in Class 5:
In addition, the goods classified under Class 9 are substituted with the following:
“Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media, mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire extinguishing apparatus.”
A government gazette has also introduced amendments to the classification of services, such as the substitution of Class 42 to:
“Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.”
Further, in accordance with the 11th edition of the World Intellectual Property Organizations (“WIPO”) International Classification of Goods and Services (“NICE Classification”), the classification of services in the Trade Marks Rules 2000 now includes Classes 43, 44 and 45.
If you have any questions or require any additional information, you may contact Rozaiman Abdul Rahman or the ZICO Law partner you usually deal with.
This alert is for general information only and is not a substitute for legal advice.