Industrial Design Protection

Industrial Design filings are based on the principle of "first-to-file." In order to make an adjustment for multiple applications with same content, the first-to-file system is adopted, which grants an exclusive right to the first to file the application.

Therefore, filing of an industrial design should be made at the earliest possible time or before an article is disclosed to the public or as close to the date of creation of your design as possible. This also means that you cannot sell, advertise or publicize your design in any form prior to filing your application. Prior disclosure will destroy the novelty of the design.

An industrial design registered in Bhutan is only protected in Bhutan. Protection in other countries can be obtained by filling application in each country separately. However, to protect your novelty and if you wish to protect in many countries, applications for registration will have to be filed within twelve months from the earliest date when it was first filed in any of the Paris Convention member countries. Bhutan is a member to Paris Convention for the Protection of Industrial Property since 2000.

Only the owner of an industrial design may apply to register the industrial design, though an agent can be authorized to make application. Where an applicant's ordinary residence or principal place of business is outside Bhutan, the applicant must appoint a Registered Agent with the Intellectual Property Division. 

How to Apply for Industrial Design?

An Industrial Design application must contain:

• A completed application form (Form - ID1) in English (A request form);
• A copy of representation of the article to which the design is applied (drawings or photograph);
• Specimen if necessary;
• A statement of novelty in respect of the industrial designs to which the design is applied; and
• Payment, in full, of the appropriate filing fee

Number and Size of Representation and Specimen

1. If the Industrial Design is two-dimensional, the applicant is required to submit four graphic representation or four drawings or tracings; or
2. If the Industrial Design is three-dimensional, the applicant is required to submit four graphic representations or four drawings or tracings of each of the different sides of the Industrial Design; and
3. A Specimen shall be of a size not exceeding [20cm x 20cm x 20cm]
4. No graphic representation, drawing or tracing of the Industrials Designs shall exceed [10cm x 20cm]
5. Such representations, drawings or tracings shall be affixed on four sheets of hard and durable paper of [A4 size]
6. Drawings and tracings shall be in black ink.

Criterion for Industrial Design Registration

• Must be New* and Original**
• Must not be dictated by technical function
• Must be industrially applicable and
• It should not be contrary to public order or morality.

New* if the industrial design has not been disclosed to the public anywhere in the world by publication, exhibition, use in trade or in any other way prior to the filing date or where applicable the priority date of the application for registration. 

Original** if the industrial design significantly differs from a design or combination of design features known anywhere in the world

The following features diminish the Industrial Design from legal protection:

• Industrial designs that do not meet the requirements of novelty;
• Industrial designs that are considered to be dictated exclusively by the technical function of a product; such technical or functional design features may be protected, depending on the facts of each case, by other IP rights (e.g. patents, utility models or trade secrets);
• Industrial designs incorporating protected official symbols or emblems (such as the national flag);
• Industrial designs that are considered contrary to public order or morality.

The application is processed by the Industrial Designs Registry and if all conditions for grant of registration are met, the design is registered and certificate of registration is issued to the owner.