Introduction : UNDP is seeking to contract services of an International Firm to manage the registration of “Made in Bhutan” and “Grown in Bhutan” trademarks for the DOT, MOICE, Government of Bhutan. The International Firm working very closely with UNDP and DOT, MOICE, must deliver the following major outputs of the assignment: §File the application for “Made in Bhutan” (MIB) and “Grown in Bhutan” (GIB) marks in the EU, USA, India, and Japan according to the country’s classification system (22 classes for MIB Mark and 3 classes for GIB Mark) § Manage the complete trademark registration process including providing expert guidance, filing applications, undertaking background analysis, and research on trademark registration processes and requirements in all four international markets. § Successful completion of registration of MIB and GIB in the markets of EU, USA, India, and Japan. The Firm is expected to deliver the following activities under the above-mentioned major outputs: 1. Trademark research and analysis: Undertake comprehensive trademark search to assess the availability and potential conflicts with existing trademarks in the target markets; and Analyze the results of the trademark search and provide recommendations on trademark registration strategies based on the findings. 2. Thoroughly examine the current usage guidelines for the “Made in Bhutan” (MIB) and “Grown in Bhutan” (GIB) marks, formulate regulations for collective/certification marks, and meticulously submit the application, ensuring strict adherence to the registration systems and laws of the relevant countries, in order to minimize the potential for refusal or objections. 3. Prepare and file the application for MIB and GIB marks in the EU, US, India, and Japan according to the country’s classification system (22 classes for MIB Mark and 3 classes for GIB Mark); 4. Draft and review the regulations for the MIB and GIB collective/certification marks in line with the respective countries’/markets’ requirements and submit them for input and approval to the Department of Trade, MoICE prior to filing the applications. 5. After filing, manage and administer the applications and ensure registrations are completed in a timely and responsible manner. 6. Respond to any inquiries or requests for additional information from the Intellectual office during the registration process. 7. Trademark Prosecution § Monitor the progress of trademark applications and provide regular updates; and § Address any objections, oppositions, or refusals encountered during the registration process and develop appropriate responses. 8. Trademark renewal § Assist in monitoring the validity and renewal deadline for registered trademarks. 9. Provide expert guidance and support throughout the trademark registration process, ensuring the organization’s trademark is protected in the designated countries. 10. Provide translation services to translate the application into Japanese to file in the Japanese market. 11. Overall management of trademark registration leading to the successful registration of MIB and GIB in EU, USA, India and Japan; and 12. The firm is also required to submit: (i) certification/collective mark regulations; (ii) applications; and (iii) registration details/receipts.
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