Trademarks

The Trade Marks Act, Cap 98 governs the trademark laws in Brunei Darussalam with its subsidiary legislation, the Trade Mark Rules. Section 4 of the Trade Marks Act defines the meaning of trademark as any perceptible sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings; and it may consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging (definition). On January 26, 2017, an amendment was made to the Trade Marks Act in which the word “visually” was deleted from the definition of trademarks, thereby enabling certain non-traditional marks like sounds and smells to be accepted in Brunei.

Section 6 of the Trade Marks Act lists the absolute grounds for refusing a trademark, such as signs that do not meet the requirements of Section 4(1), marks that are devoid of any distinctive character, and marks that consist only of descriptive or customary signs, unless they have acquired distinctiveness through use. Section 8 of the act provides for the relative grounds of refusal for a trademark registration, where the trademark applied for is similar or identical to an earlier trademark and/or where the goods and services are similar or identical to an earlier trademark.

As a member of the Paris Convention, Brunei affords protection to persons in member states of the Paris Convention and adopts the concept of “priority” for trademark applications.

To obtain protection, a mark must be registered with the Brunei Intellectual Property Office. Brunei adopts a multi-class application system, which means that for renewal purposes, the registered mark will be treated as a single application. Brunei also follows the International Classification of Goods and Services under the Nice Agreement (11th Edition). A mark may be registered if it meets the definition above and satisfies the substantive requirements under the legislation. 

To register a trademark, the applicant must file Form TM1 together with the prescribed application fee for each class of goods or services in which registration is sought. Upon registration, the trademark is protected for an initial period of 10 years. It can be renewed every 10 years indefinitely, provided that the renewal application is submitted and the renewal fees are paid at least six months prior to expiry. 

Under the Trade Marks (International Registration) Rules 2018, local brand owners in Brunei can use the Madrid System to protect their marks internationally by filing a single application in one language and paying a single set of fees in one currency. Similarly, international applications can designate Brunei as one of the countries in which protection is sought for their trademark. 

Enforcement 

Sections 16, 17 and 18 of the Trade Marks Act provides that civil proceedings may be brought by a registered proprietor against infringement. The registered proprietor may claim remedies such as an injunction, damages, an account of profits, an order for delivery up of infringing goods, and/or erasure, removal or obliteration of the offending sign or mark.

Under the Trade Marks Act, a registered proprietor may give written notice to the Controller of Customs requesting the detention of any infringing goods that are, or at any time come, under customs control. The Controller of Customs may prevent such infringing goods from entering Brunei by detaining or seizing them at the point of entry. 

The Trade Marks Act also lists certain offences, including falsifying the register or falsely representing a trademark as registered when it is not. Section 98 further provides that any person who counterfeits a trademark is guilty of an offence and is liable, on conviction, to imprisonment for a term not exceeding five years, a fine not exceeding B$100,000 (US$77,600), or both. 

Patents 

Patent law in Brunei Darussalam is governed by the Patents Order 2011 and the Patents Rules 2012. Brunei is a member of the Patent Cooperation Treaty (PCT) for the International Filing of Patent and the Paris Convention. As a member of the PCT, it allows signatories to seek patent protection for an invention in Brunei by filing an international patent application. 

For a patent to be registrable, Section 13 of the Patents Order provides that the invention must be new, involve an inventive step, be capable of industrial application, and must not encourage offensive, immoral, or anti-social behaviour. The invention must also not fall under categories of inventions that cannot be registered, namely methods of treatment of the human or animal body by surgery or therapy, or diagnosis practiced on the human or animal body (see Section 14 of the Patents Order). 

A patent application can be filed by submitting a request for the grant of a patent (Patents Form 1 or Patents Form 46 for PCT applications), a specification containing a description of the invention and an abstract, and the application fee, which must be paid within one month of the filing date. Together with, or subsequent to, the filing of the application, the applicant must also submit a request for search and examination to proceed to the grant stage of the patent application and the various timelines are set out in the Patents Order and the Patent Rules. A claim for priority in the patent application is also allowed and must be claimed within 12 months of the filing of the earlier application. 

Once the patent is registered, it will be protected for a period of 20 years from the date of filing the application, subject to payment of annual renewal fees. 

Under the transitional provisions in Section 114 of the Patents Order, patents originally filed in the United Kingdom, Malaysia or Singapore may be re-registered in Brunei without any formal examination. For example, Section 114(3) provides that where an application for a patent has been made before the commencement date under any law relating to patents having effect in the United Kingdom, Malaysia or Singapore and the application is pending on that commencement date (January 1, 2012), the applicant may, within a period of 12 months from the date of issue of the grant of a patent on that application, make an application for a certificate of registration and the Registrar may issue a certificate of grant. The term of a re-registered patent is 20 years from the date of grant.  

Enforcement 

Section 65 of the Patents Order provides that the proprietor of a patent may bring an action in Court in respect of any act alleged to infringe a patent, and in such proceedings a claim may be made for:

1. An injunction to stop the infringer from committing acts of infringement;

2. An order to deliver up and destroy any patented product, material or article that infringes the patent;

3. Damages in respect of the infringement;

4. An account of profits from the infringement; and

5. A declaration that the patent is valid and has been infringed by the alleged infringer. This provides the patent owner with certainty of their patent rights and freedom to operate within the scope of the patent.

Copyright

Copyright law in Brunei Darussalam is governed by the Emergency (Copyright) Order 1999, as amended in certain sections by the Copyright (Amendment) Order 2013. 

There is no requirement for authors to register their original work in order to obtain protection in Brunei, as protection is obtained automatically without the need for formalities. The work must, however, be original to qualify for protection, meaning that it was created with the author’s own skill, judgment, and individual effort. Section 18 of the Copyright Order provides that the owner of a copyright has the exclusive right to:

1. Copy the work; 

2. Issue copies of the work to the public; 

3. Perform, show, or play the work in public;

4. Broadcast the work or include it in a cable programme service;

5. Make an adaptation of the work; and

6. Communicate the work to the public.

There are certain categories that are not considered infringement of the copyright, such as use for research and private study, criticism, reviews, news reporting and educational purposes. 

Copyright law in Brunei extends to original literary, dramatic, musical and artistic works, as well as sound recordings, films, broadcasts, cable programmes and typographical arrangements of a published edition. The term of protection for literary, dramatic, musical, and artistic work is 50 years from the end of the year in which the author dies, while for sound recordings, films, broadcasts and cable programmes, it is 50 years from the end of the year in which it was made. For typographical arrangements of published editions, the term of protection is 25 years from the end of the year in which the edition was first published.

Enforcement 

Section 99 of the Copyright Order provides that an action for infringement may be brought by a copyright owner. The copyright owner may claim, in court, remedies such as an injunction, damages or account of profits, an order for delivery up of the infringing copy or article, or an order for seizure of infringing copies.

Under Section 109 of the order, a copyright owner may give notice to the Controller of Customs requesting him to detain any infringing copies that are, or at any time come, under customs control. The Controller of Customs may prevent such infringing goods from entering the country by detaining or seizing the goods at the point of entry.

Written notice must be given by the copyright owner to the Controller of Customs to prevent goods with infringing copies from entering Brunei. The copyright owner must first establish ownership and provide details of the infringing copies and the expected shipment to enable Customs to identify the infringing goods. The infringing goods may then be forfeited, destroyed, or otherwise dealt with as the court deems fit.

Section 204 of the Copyright Order provides that a copyright owner could also report to the police and request for a criminal prosecution against any person who, without consent, sells, hires, imports, communicates, exhibits or distributes the infringing copies. 

Industrial design

The Industrial Design Order 1999, which came into force in 2000, and the Industrial Designs Rules of 2000 govern the industrial design protection in Brunei Darussalam. The law in Brunei permits the registration of industrial designs through a formalities examination of the completed application.

To be registrable, an industrial design must be newat the filing date of the application. Furthermore, the design must be capable of industrial application; that is, it must be applied to more than 50 articles that do not constitute a single article, or to articles manufactured in lengths and pieces, excluding hand-made articles. The industrial design must also have visual appeal. Protection under the IDO is local only and does not extend to other countries. 

Registration involves lodging a completed application form (Designs Form D1) with the Registrar of Industrial Designs, together with the application fee of B$300 (US$233) for a single design or B$500 (US$388) for a set of designs. Registration is for an initial period of five years beginning from the filling date, which can be extended for two periods of five years each, totalling a maximum of 15 years. It should be noted that renewal fees are payable every five years.

Enforcement 

The registered owner of an industrial design can bring infringement proceedings by filing a claim in Court under Section 48 of the Industrial Design Order to seek reliefs such as damages, an injunction, or an account of profits. 

Section 79 and 80 of the Industrial Design Order provide that it is an offence for a person to falsify the register or falsely represent that an industrial design is registered when it is not. A police report may be filed for the aforesaid offences.