12 Feb 2018
Intellectual Property Protection in Brunei
IP rights are territorial in nature and registrations in Hong Kong are not automatically enforceable in another jurisdiction like Brunei. Hong Kong companies doing business in Brunei are advised to ensure their IP rights are protected through the Brunei IP system.
The Brunei Intellectual Property Office (BruIPO) is responsible for the registration of IP rights. Brunei keeps a basic legal framework to offer protection to IP owners in line with international standards with respect to their patents, copyright, trademarks and industrial designs. All Acts, Rules, Regulations and Notifications can be found on the website of BruIPO. Currently, there is no legislation protecting some forms of IP like geographical indications (GIs) and trade secrets.
Overview of IP Rights in Brunei
An industrial design refers to the features of a shape, configuration, pattern or ornament applied to an article by any industrial process (must be applied to more than fifty articles). To be registrable, the design must be new, and not registered, published, used or sold in Brunei or elsewhere, before the date on which the application of registration is logged.
The design is valid for an initial five years from the date of filing the registration. The registration can be renewed every five years up to a maximum of 15 years, subject to the payment of annual fees.
Registration and Fees
All applications must be lodged with the Registrar of Industrial Designs of BruIPO. The registration fee for an industrial design is about B$300 (about US$221). Forms to be completed along with the exact fees payable can be found on the BruIPO website.
Brunei is a member of the Hague System, thereby allowing Hong Kong companies to file one application for seeking protection in multiple jurisdictions.
A patentable invention can be a product or a process that gives a new technical solution to a problem. A patent holder must be able to demonstrate that the invention is new, an inventive step and has industrial applications. Brunei operates under a ‘first-to-file’ system, meaning that the first person or entity who files an IP right in the Bruneian jurisdiction will own that right once the application is granted.
20 years from the date of filing, subject to the payment of annual renewal fees.
Registration and fees
All patent applications must be lodged with the Registrar of Patents, and it usually takes between two to four years to register a patent. Forms to be completed with the fees payable can be found on the BruIPO website.
Brunei is a member of the following international patent conventions: Paris Convention, Patent Cooperation Treaty and the ASEAN Patent Examination Co-operation (ASPEC). Time and resources could be saved by processing patent applications through these routes.
A trademark is a visually perceptible sign capable of being represented graphically (excluding smell and scent marks) as well as capable of distinguishing goods or services of one undertaking from those of other undertakings. Brunei operates under a first-to-file system, meaning that the first person or entity to file a trademark in the Bruneian jurisdiction will own that right once the application is granted.
Trademarks are valid for 10 years from the initial filing date. Protection can be indefinite provided that the necessary renewal fees are paid after each 10-year period, and that the mark is being used correctly.
Registration and Fees
Applications for a trademark can be either:
1. Direct to Registrar of Trademarks at the BruIPO. The basic official fee of B$150 (about US$110) for each class of goods or services in respect of which registration is sought. Forms to be completed, along with the exact fees payable, can be found on the BruIPO website.
2. Using the Madrid Protocol, a single international application can be filed. Brunei joined the Madrid Protocol in January 2017.
Copyright protects such rights as literary, dramatic, musical and artistic works. It also protects sound recordings, films, broadcasts receivable by members of the public, cable programmes and the typed arrangements of published editions of any literary, dramatic or musical works.
The term for copyright protection varies with the nature of the work:
Copyright is an automatic protection and there is no registry or department in Brunei that accepts the registration of copyright.
Enforcement of IP Rights
Administrative actions are not available in Brunei and there is no governmental body or enforcement authority to apply administrative measures against IP infringement. Instead, right holders must pursue one of the following enforcement routes:
1. Use Customs to block counterfeits – There is currently no registration system with which the IP right owners can expect the Royal Customs and Excise Department to initiate a detention of counterfeit goods. However, IP right holders who suspect that goods to be imported into Brunei are infringing their IP rights can serve a written notice to the Controller of Customs, which will detain or seize the goods at the point of entry. There is no cost payable to Customs in respect of this activity but proof of ownership must be provided along with full details of the infringing works or goods.
2. Civil litigation – Only the certificate of registration is needed for proof of ownership, and right holders can initiate a lawsuit by providing a written endorsement of the alleged infringing act. This route can take up to two years.
3. Criminal enforcement – This is the most cost-effective route with the legal expenses of prosecution borne by the Brunei government as the prosecuting party. A report must be filed first with the police, who after investigation will make a decision on whether to prosecute the offender.
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