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A trademark is a distinguished sign or mark used to express the services or individuality of a product or any business organization.
In Bangladesh, trademark may be deputed by the following symbols:
-For an unregistered trademark, but for which application has been filed.
-For an unregistered service mark, but for which application has been filed.
History:
Simply put, a trademark refers to a sign used in trade or commerce to individualize goods or services which is a sort of Intellectual Property (IP).
A non-conventional or non-traditional trademark does not match with the category of conventional trademark. It is mainly formed with sound mark, smell mark and colour mark. The proprietor of a registered trademark may introduce legal proceedings for breach of trademark to prevent unauthorized use of that trademark. Registration is not required for this one. A common law proprietor may file suit but an unregistered mark may be protectable only in the geographical area.Trademarks basically is the service mark. Brand name and logos are protected by trademark.
How to apply for a trademark application in Bangladesh?
Trademark application in Bangladesh can be filed in two categories:
(1) Ordinary Applications
(2) Convention Application (claiming priority from a convention country)
Priority or conventional trademark applications in Bangladesh
A priority trademark application should be filed in Bangladesh within 6 months after the date on which the application was made in the convention country.
Multi-class trademark applications cannot be filed
A trademark application in Bangladesh can be filed in the prescribed manner for a single class only to the Registrar of Trademarks and obtaining the application number. Multi-class trademark applications cannot be filed in Bangladesh. Application for a Trademark or a Priority Trademark Application claiming priority from a convention country can also be filed in Bangladesh within 6 months from the priority date.
Is it possible to have an illustrative trademark registered in Bangladesh?
No, it is not.
What can be registered as a trademark in Bangladesh?
Following marks can be registered as a Trademark in Bangladesh:
Combination of colors
As per the Bangladesh Trademarks Act, 3-D marks or Three Dimensional marks cannot be registered in Bangladesh. Similarly, sound and smell marks cannot be registered as a trademark.
Who Can Apply?
Anyone claiming to be the proprietor of a trademark may apply to the registrar for the registration of the mark. Both national and foreigners have equal right in this regard but a foreign applicant must be represented by a local agent.
Filing Requirements:
An application for the registration of a trademark shall include the following;
8) Priority: There is a provision for priority application in Bangladesh. In this respect the applicant for registration of a trademark who desires to avail himself of the priority of an earlier application filed in a convention country shall, within 6 months of the date of such earlier application, append to his application a written declaration indicating the date and number of the earlier application.Furnish a copy of the earlier application certified as correct by the appropriate authority of the country where such application was filed earlier. Verified/ notarized English translation of the priority document if priority document is in any language other than English.
Biography
Relevant Office:
Law in Force:
Trade Marks Act, 2009
Trademark Rules, 2015
Nice Classification?
Yes (Ninth Edition)
Paris Convention?
Yes
Madrid System?
No
Multi- Class System
No
Documents required for filing a trade mark application
Articles composed wholly of leather or in which leather predominates, not included in other classes.
Documents required for filing a trade mark application
Articles composed wholly of leather or in which leather predominates, not included in other classes
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Prosecution Process
Filing of trade mark application Examination report Advertisement of mark in the trade marks journal Opposition, if any, within a period of three months from the date of advertisement Registration of the mark if no opposition is filed or is set aside Issuance of Registration Certificate
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Registration Term
7 years from the date of application
Renewal Term
10 years from the date of previous registration
History of Trademark Law in Bangladesh
The first statutory law relating to trademarks in Bangladesh was the Trademarks Act, 1940 which introduced a piece of machinery for the registration and statutory protection of Trademarks in Bangladesh. This Act of 1940 was replaced by the Trademarks Act, 2009 which was promulgated to amend and consolidate the law relating to trademarks and unfair competition and to provide for the registration and better protection of trademarks and for the prevention of the use of fraudulent marks, and for matters ancillary thereto.
Details regarding the Bangladesh Trademarks Act, 2009 and Trademarks Act, 1940 can be accessed at the following link.
Search
Before applying for the registration of a trademark, an applicant may conduct a search to find out whether the trademark is registrable or not and whether there exists in the records a trademark, which could be confused with the intended trademark. An application for search and preliminary advice by the registrar should be made by the prospecting proprietor or his agent on Form TM-04.
How to search of a Trademark in Bangladesh?
Search is not mandatory but is advisable for the following two reasons. It will help one in determining whether the application has a chance for success, or whether it would be a waste of time and money to try and register it in its present form. It will also help one avoid breach of trademark and potential lawsuits if one went straight ahead in applying for registration.
Is there any way we know whether similar marks have already been registered in respect of same type of goods in Bangladesh?
There is no provision for conducting a trademark search in Bangladesh.
Conduct Availability Search
An application with a perceived form should be filed before the Registrar of Trademarks in Bangladesh.
Word Search in Bangladesh
Word mark search edition of Bangladesh follows the Nice Classification and trademark applications can be filed for goods in classes 1-34 and services in classes 35-45. Searches in Bangladesh can be conducted for the desired class and associated classes. It is advisable to conduct comprehensive trademark clearance search in Bangladesh to ascertain availability of the proposed mark and also to overcome any objection and opposition with respect to mark later on. Along with trademark search, it is also advisable to do a comprehensive company search and domain search of the proposed trademark in Bangladesh.
Device Mark Search in Bangladesh
It is advisable to conduct a comprehensive search for a figuration trademark. The device marks include individual marks such as stylized letters, numerals, shapes, plants, celestial bodies, living creatures etc. or combination of marks containing device marks. A device mark search in Bangladesh can be conducted amongst the marks filed and registered as per the Vienna code classification.
Required Documents
Description of the Mark and Class.
COST
Official fee with VAT and POA: BDT 1150 or USD 20 Plus+ Attorney fee.
Timeline
20 to 30 working days.
Registration Procedure
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Office action
After an application is filed, it is examined by the Registrar with regard to the distinctiveness, possibility of deceptiveness and conflicting trademarks. If an objection to a registration is raised, an official examination report will be issued by the Registrar within 6 months to 1 year, depending on the back log at the Registry.
The Registrar may accept or refuse the application subject to the provisions of the ordinance.
Prosecution for a Trademark in Bangladesh
Which trademark application in Bangladesh can be refused or objected by the Registrar?
(1) The mark is similar/ identical to an earlier trademark for the same or similar goods/ services.
(2) The mark is similar/identical to an earlier trademark in respect of different goods/services.
(3) The mark is a commonly used and accepted name of any single chemical element or single chemical compound.
(4) The mark is likely to deceive the public or cause confusion with regard to the origin of goods.
(5) The matter contained or comprised in the mark is likely to hurt religious susceptibilities of any class or section of the citizens of Bangladesh.
(5) It contains or comprises of scandalous or obscene matter.
(6) It is a word declared by World Health Organization as an international non-proprietary name.
The above categories of marks may however be registered if the proprietor of the earlier trademark consents to it or there has been an honest concurrent use of the later mark.
Which trademarks cannot be registered in Bangladesh?
(a) which comprises or consists of any scandalous or obscene matter; or
(b) the use of which would be contrary to any law for the time being in force; or
(c) the use of which would be likely to deceive or cause confusion; or
(d) which contains any matter likely to hurt the religious susceptibilities of any class of the citizens of Bangladesh;
(e) which is identical with, or is an imitation of, or contains as an element, an armorial bearing, flag or other emblem, a name or abbreviation or initials of the name of, or official sign or hallmark adopted by, any state or international organization created by an international convention, charter or other instruments, unless authorized by the competent authority of that state or organization. or
(f) which would otherwise be disentitled to protection in a court.
(g) the application is made in bad intention and faith.
Proceedings:
An applicant is bound to response
with the supporting documents within 60 days to the registrar, if he raises any objections. The registrar will possibly accept the application on responses and documents submitted or may catalog for hearing.
Appeal:
An applicant may appeal against the registrar during the hearing or except the hearing within 30 days from the date of communication to the registrar, requiring him to state in writing the grounds of and the materials used by him in arriving at his decision. After the application for registration of a trademark is accepted, registrar publicises in the official trademark journal following the link: www.supremeip.com/trademark-journal/
Required Documents:
COST
Official fee with VAT and POA: BDT 5000 to 20000 or USD 75 to 250 Plus + Attorney fee
Timeline: 2 to 3 Years
Publication
According to section 17 of the trademarks Act, 2009,
Advertisement of application.
(1) When an application for registration of a trademark has been accepted whether absolutely or subject to conditions or limitation, the registrar shall as soon as may be after acceptance, cause the application as accepted together with the conditions or limitations, if any subject to which it has been accepted, to be advertised in the prescribed manner.
Provided that the registrar may cause the application to be advertised before acceptance if it relates to a trademark to which section 6(2) applies or in any other case where it appears to him that it
is expedient by reason of any exceptional circumstances so to do.
(2) Where an application under sub-section (1)⎯
(a) has been advertised before acceptance, or
(b) After advertisement of an application, an error in the application has been corrected or the application has been permitted to be amended under section 19.
the registrar may cause the application to be advertised again or notify in the prescribed manner the correction or amendment made in the application.
Journal
Basic Information
When a trademark will be published in the journal?
After examination and upon acceptance of the response by the registrar, the application is ordered for advertisement or publication in the trademarks journal.
COST
Official fee with VAT: BDT 1150 or USD 20 + Attorney fee
Timeline
8 to 12 months from the date of the publication fee deposited.
Opposition Period
Two Months from the date of publication.
Opposition
Opposition proceedings of a trademark in Bangladesh:
Procedure & Cost:
Opposition proceedings of a trademark in Bangladesh.
Post advertised proceedings.
Who can file opposition?
Anyone can file an opposition against the registration of the trademark in Bangladesh.
What is the prescribed period of filing the opposition notice?
The prescribed period of filing the opposition notice is around 2 months from the date of trademarks journal is publicised. The prescribed period can be extended by highest 3 months by filing an appeal for extension of time including the prescribed fee.
Under what section of Law can be opposed?
A trademark application can be opposed in Bangladesh on grounds given under Sections 8, 9, and 10 of the trademarks Act 2009.
If no opposition what will be the outcome?
In the absence of opposition, a trademark is registered and the certificate of registration is issued.
Learn more about publication:
Registration Procedure Learn More.
Procedure of opposition
Step-1: Filing of opposition notice:
Filing a notice of opposition within the prescribed period of 2 months from the date the trademarks journal is publicised.
Step-2: Notice Serve
Once an opposition is filed against a trademark in Bangladesh, a copy of the notice of opposition is filed to serve to the applicant by the trademarks registry.
Step-3: Counterstatement
Then it is required to file a counterstatement by the trademark applicant within 2 months of receipt of the opposition notice forwarded by the registry, failing which the trademark application shall be treated as abandoned.
Step-4: Evidence Submission
If the counterstatement filed by the trademark applicant, the registrar shall furnish a copy to the opponent. Thereafter, the registrar will request evidence in writing by way of affidavit from both parties.
Step-5: Oral Hearing.
If the dispute is not settled by the parties, then the hearing is fixed in the matter.
Step-6: Decision.
After the registrar decides the case made in the opposition proceedings whether the application should be registered or not and will publish the decision in written format.
Required Documents:
COST
Official fee with VAT and POA: BDT 5000 or USD 75 Plus + Attorney fee
Timeline: 2 to 3 Years
Renewal of a trademark in Bangladesh:
Procedure & Cost
A trademark can be renewed in Bangladesh requiring renewal fees. Each renewal term is for a period of 10 years.
Renewal
Basic Information
In Bangladesh a trademark can be renewed from time to time for an unlimited period from the register on account of non-renewal.
Each renewal term is for 10 years.
Renewal of a trademark can be filled 6 months before the expiry of the registration by paying renewal fees on the prescribed form. Clients cannot pay the renewal fee due till the trademark is not registered. Therefore they are advised not to worry about the fee until the mark is registered.
Is a trademark renewal application examined in Bangladesh?
Yes. It is examined to learn if the owner of the trademark has filed an application.
Procedure for filing for a renewal
request: For renewing the trademark, appeal needs to be filed within 6 months before the expiration of registration or renewal term including the renewal fees.
Restoration of Trademarks in Bangladesh
If a trademark has been removed from the Register on grounds of non-renewal then the same can be restored by filing an application in the prescribed form for restoration of the mark within 1 year from the expiration of the last registration of the trademark.
Renewal Cost before the expiry:
Official fee with VAT and POA: BDT 18250 or USD 230 + Attorney fee
Timeline: 2 to 3 Months
Renewal Cost AFTER THE EXPIRY
Official fee with VAT and POA: BDT 24000 or USD 303 + Attorney fee
Timeline: 2 to 3 Months
Restoration Cost
Official fee with VAT and POA: BDT 3000 or USD 35 + Attorney fee
Timeline: 2 to 3 Months
Required Documents
(a) POA (Original or notarization or legalization does not require, only scanned copy is sufficient)
(b) Registration number and class of the trademark.
Assignment and recordal change of a trademark in Bangladesh:
Procedure & Cost
The Registered proprietor of a Trade mark has power to assign the mark and a registered Trade Mark is assignable and transmissible with or without goodwill of the business in respect of all or some of the goods for which it is registered. Where a person becomes entitled by assignment or transmission to a registered trademark, he shall make application to the Registrar (in the prescribed manner) to register his title and the Registrar shall, on receipt of the application and on proof of title to his satisfaction, register the assignee as the proprietor of the trademark.
Assignment and recordal change
of a trademark in Bangladesh
Form TM-24 or Form TM-23(Joint Request) -An application to register the title of a person who becomes entitled by assignment or transmission to a registered trademark shall be made on Form TM-24 or TM -23 according it is made by such person alone or conjointly with the registered proprietor.
Important
In case of registered mark the deed of assignment should be certified by the Embassy of Bangladesh of the assignor country. Then the deed of assignment should be legalized from the foreign ministry of Bangladesh.
Procedure of assigment
An application with a perceived form should be filed before the registrar of trademarks in Bangladesh. Certified copy of the Deed of Assignment, POA and the prescribed has to be submitted along with the application.
Required Documents
(a) Deed of Assignment or Agreement:
The Deed must be executed by the Assignor and the Assignee. A nominal consideration of $ 10.00 is sufficient.
**If the mark is a pending mark (not a registered mark) then the “The Deed of Assignment” should be Notarized or Legalized by Local Authority/Notary Lawyer.
** If it is a registered mark the Deed of Assignment should be certified by the Embassy of Bangladesh of the assignor country. Then the “The Deed of Assignment” should be legalized from the foreign ministry of Bangladesh.
(b) POA (Original or Notarization or Legalization does not require, only SCANNED copy is sufficient)
COST
Official fee with VAT and POA: BDT 5000 or USD 70+ Attorney fee
Timeline: 2 to 3 Months
Trademark
Removal
(Revocation &
Rectification or cancellation)
Proceedings In Bangladesh
Procedure & Cost
If a registered trademark in Bangladesh has not been used for a continuous period of five years from the date of registration, it can be removed by an application made in the prescribed manner by filing a request before the trademarks Office in Bangladesh.
Anyone may approach the registrar or the High Court Division seeking cancellation, Revocation or Rectification of a registered trademark in Bangladesh.
Revocation &
Rectification
Basic FAQ
On what grounds can a trademark registration be invalidated?
A trademark registration can be invalidated on the grounds that the impugned mark was registered where a continuous period of five years or longer surpassed during which:
**the trademark was registered; and
**there was no genuine use in relation to those goods or services by the proprietor.
Who may file a request for revocation and what is the statute of limitations for filing a request?
As per Section 42 of the Trademarks Act 2009, anyone can file a revocation request before the registrar or the High Court Division. However, the Trademarks Act 2009 does not prescribe a time limit for applying for revocation. Notably, if the proprietor of an earlier right acquiesces in the use of a later trademark for a five-year successive period, he or she can no longer file an application for invalidity on relative grounds.
On what grounds can an application for rectification of trademark be filed in Bangladesh?
According to section 51 of the Bangladesh Trademarks Act provides for the rectification of a trademark in Bangladesh in case of contravention or failure to observe a condition entered in the registry in relation thereto on an application made by an aggrieved person.
(a) Similar or identical to an earlier trademark for the same or similar goods/ services.
(b) Similar or identical to an earlier trademark in respect of different goods/ services.
Further, the following grounds in respect of the trademark will be considered by the Registrar while examination:
What are the evidentiary and procedural requirements for revocation proceedings?
Anyone may approach the registrar or the High Court Division seeking cancellation of a registered trademark on the following grounds:
(1) The petitioner company’s mark is well known and enjoys commercial reputation and goodwill across various jurisdictions in Bangladesh.
(2) The registered owner has failed to use the mark for a five-year consecutive period following registration.
(3) The registered owner was aware of the impugned mark’s goodwill and reputation and had thus filed an application for registration of the mark with a genuine intent to encash on the commercial reputation and goodwill.
(4) The mark is devoid of distinctive character because it is similar or identical to the petitioner’s mark.
(5) In addition to the above, various documents can be adduced as evidence to substantiate the claims (including copies of worldwide registrations).
Procedure for Removal of a Registered Trademark in Bangladesh on grounds of non-use:
Section 42 of the Bangladesh Trademarks Act provides for the removal of the trademark from the register of trademarks on the ground of continuous non-use of the mark for a period of 5 years from the date of registration i.e. application.
Procedure for filing an application for Rectification of a Trademark in Bangladesh:
Section 51 of the Bangladesh Trademarks Act provides for the rectification of a trademark in Bangladesh in case of contravention or failure to observe a condition entered in the registry in relation thereto on an application made by an aggrieved person.
Steps
Step-1: Filing of Revocation
Notice:
Filing a notice of rectification in a prescribed way/form before the trademark registrar.
Step-2: Notice Serve
Once a Rectification case is filed against a trademark in Bangladesh a copy of the notice of Rectification so filed is served to the applicant by the Trademarks Registry.
Step-3: Counterstatement
Then it is required to file a counterstatement by the trademark applicant within 2 months of receipt of the Rectification notice forwarded by the Registry, failing which the trademark application shall be treated as revomed.
Step-4: Evidence Submission
If the counterstatement filed by the trademark applicant, the registrar shall furnish a copy thereof to the opponent. Thereafter, the registrar will request evidence in writing by way of affidavit from both parties.
Step-5: Oral Hearing
If the dispute is not settled by the parties, then the hearing is fixed in the matter.
Step-6: Decision
After thar the Registrar decides the case made in the Rectification proceedings whether the application should be registered or not and will publish the decision in written format.
Required Documents
COST
Official fee with VAT and POA: BDT 5000 to 20000 or USD 75 to 250 Plus + Attorney fee
Timeline: 2 to 3 Years
Present law
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