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Trademark Frequently Asked Questions (FAQ)

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Is there any way we know whether similar marks have already been registered in respect of same type of goods in Bangladesh?
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.
Before apply
Before apply
Before applying for the registration of a trademark, an applicant should 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. 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 trademark infringement and potential lawsuits if one went straight ahead in applying for registration.

Provision of Foreign Proprietor

Whether foreign proprietors can file trademark applications in Bangladesh?
Whether foreign proprietors can file trademark applications in Bangladesh?
Yes, any foreign proprietors can apply for registration of a trademark in Bangladesh. The Bangladesh Trademarks Act is TRIPS obedient and provides for the protection of well-known trademarks and recognizes trans-border reputation. However, a foreign applicant must be represented by a local agent.

Filing to Registration

How the Symbols ® and TM are to be used in Bangladesh?
How the Symbols ® and TM are to be used in Bangladesh?
Only the proprietor of a registered trademark can use the symbol ® in Bangladesh. Using the symbol ® unless the mark has been registered is unlawful in Bangladesh. Using symbol TM with trademark simply means that one claims to be the proprietor of the trademark. There is no prohibition on the use of the symbol TM in Bangladesh.
Is the registration of a trademark mandatory in Bangladesh?
Is the registration of a trademark mandatory in Bangladesh?
No, registration of a Trademark is not mandatory in Bangladesh but it is advisable to do. So In case of a registered trademark, an action for infringement lies where the aggrieved can sought civil and criminal reliefs.
What is a trademark?
What is a trademark?
A trademark is a distinctive sign or indicator used by an individual or an organization and is applied to the articles of commerce so as to identify the products of one trader from those of another. Simply, a trademark is a warden of a trader.
What is a Service mark?
What is a Service mark?

A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product.Service Marks are now registerable in Bangladesh. Applicants can now apply for registration of service marks in Bangladesh in International Classes 35 to 45. TheInternational Nice Classification of Services is applicable for the purpose.

A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product.Service Marks are now registerable in Bangladesh. Applicants can now apply for registration of service marks in Bangladesh in International Classes 35 to 45. TheInternational Nice Classification of Services is applicable for the purpose.

What is a Collective mark?
What is a Collective mark?
A collective trademark or collective mark is a trademark owned by an organization (such as an association), whose members use it to identify themselves with a level of quality or accuracy, geographical origin, or other characteristics set by the organization. Example-the “CA“ device used by the Institute of Chartered Accountants.
Symbols of Trademark
Symbols of Trademark
Trademarks in Bangladesh may be designated 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)
® (for a registered trademark)
Who can apply?
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.
What are the Filing Requirement of a Trademark in Bangladesh?
What are the Filing Requirement of a Trademark in Bangladesh?
An application for the registration of a trademark shall include the following;
1. Name and full address of the Applicant, if the applicant is a company the name and position of the signatory also be required
2. Status of the applicant i.e. Merchandisers / Manufacturers /Service Providers
3. Details of the Mark /Logo/Device prints or representation.
4. Specification of Goods/Services and Class
5. User date of the mark in Bangladesh (whether the mark is in use or proposed to be used in Bangladesh).
6. General/specific power of attorney (POA) may be required
7. Prescribe fee
Priority or Conventional Trademark Applications in Bangladesh
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.
What can be registered as a trademark in Bangladesh?
What can be registered as a trademark in Bangladesh?
Following marks can be registered as a Trademark in Bangladesh under the Bangladesh Trademarks Law:-• Names
• Invented / Coined Words
• Numerals
• Letters
• Devices
• Combination of colours
• Shape of goods
• Slogans
• Signature
• Image
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.
Can a multi class trademark application be filed in Bangladesh?
Can a multi class trademark application be filed in Bangladesh?
No, multi-class trademark applications cannot be filed in Bangladesh.
Can Three (3) dimensional or 3-D trademarks be registered in Bangladesh?
Can Three (3) dimensional or 3-D trademarks be registered in Bangladesh?
No, as per the Bangladesh Trademarks Act, 3-D marks or Three Dimensional marks cannot be registered in Bangladesh.
Can Sound and Smell be registered as a trademark in Bangladesh?
Can Sound and Smell be registered as a trademark in Bangladesh?
No, Sound and Smell marks cannot be registered as a trademark in Bangladesh.
Is it possible to have a descriptive trademark registered in Bangladesh?
Is it possible to have a descriptive trademark registered in Bangladesh?
No, it is not possible to register such a trademark.
What are the qualities of a good trademark?
What are the qualities of a good trademark?
A good trademark should possess the following qualities-• Easy to pronounce, spell & remember.
• Should be distinctive and should not have deceptive similarity.
• Should not be descriptive.
• Laudatory word/words such as best, perfect etc. to be avoided.
Does the Bangladesh Trade Marks Act bestow protection to unregistered trademarks?
Does the Bangladesh Trade Marks Act bestow protection to unregistered trademarks?
An action for passing off in common law lies for infringement of an unregistered trademark
WHICH Trademark CANNOT BE REGISTERED
WHICH Trademark CANNOT BE REGISTERED
• which comprises or consists of any scandalous or obscene matter; or
• the use of which would be contrary to any law for the time being in force; or
• the use of which would be likely to deceive or cause confusion; or
• which contains any matter likely to hurt the religious susceptibilities of any class of the citizens of Bangladesh;
• 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
• which would otherwise be disentitled to protection in a court;
• the application is made in bad intention and faith.Further, the objections raised by the Registrar with regard to an application is forwarded to the applicant and the applicant has to file an appropriate reply with the supporting documents to the official objections within 60 days. The Registrar may accept the application on the basis of the reply and documents filed or may list the application for hearing.An appeal against the decision of registrar at the hearing or without the hearing can be filed by the applicant within 1 month from the date of such communication to the Registrar, requiring him to state in writing the grounds of, and the materials used by him in arriving at, his decision.When an application for registration of a trademark is accepted, the Registrar advertises it in the official Trademarks Journal, which is published and available on the Registry’s website.
What trademark cannot be registered?
What trademark cannot be registered?

The trademarks which are not registrable in Bangladesh are the following:The trademark which is likely to cause deception or confusion;

The trademark that is likely to hurt religious sentiments of any community;

The trademark that comprises any scandalous or obscene matter;

A trademark which is contrary to any law, for the time being in force, or morality;

The trademark for the shape of goods necessary to obtain a technical result or which gives substantial value to the goods

Name of the chemical compound declared by World Health Organization as an International non-proprietary name

A mark shall not be registered as a trademark if-

1. the mark is likely to deceive the public or cause confusion with regard to the origin of goods.

2. the matter contained or comprised in the mark is likely to hurt religious susceptibilities of any class or section of the citizens of Bangladesh.

3. it contains or comprises of scandalous or obscene matter.

4. It is a word declared by World Health Organization as an international non-proprietary name.

What are the benefits of a registered trademark in Bangladesh?
What are the benefits of a registered trademark in Bangladesh?
Identifies the origin of goods & services.• Advertises goods & services.
• Guards the commercial goodwill of a trader.
• Protects the innocent public from buying goods of second-rate quality.In the case of a registered trademark, an action for infringement lies where the aggrieved can sought civil and criminal reliefs.
What is the worth of a trademark and how can it be exploited economically?
What is the worth of a trademark and how can it be exploited economically?
A trademark is an incorporeal asset and is also a guardian of the commercial goodwill of a business. Monetary gains can be enjoyed by licensing and assignment of the trademark.
Is proof of use necessary for filing a trademark in Bangladesh?
Is proof of use necessary for filing a trademark in Bangladesh?
No, use of mark prior to registration is not mandatory In Bangladesh. Trademarks that are proposed to be used can also be registered in Bangladesh.
Classes For Goods And Services
Classes For Goods And Services

In Bangladesh a trademark application can be filed in 45 classes: Classes 1 to 34 for goods and classes 35 to 45 is for service marks.The Trademarks Rules, 1963 were published in exercise of the powers conferred by section 84 of the Trademarks Act, 1940 and the Rules came into effect from April 02, 2004. The Trademarks Act, 2009 has been amended and a notification was issued by the Trademarks Registering Wing, Bangladesh vide Notification S. R. O. No.211-Law/2008 dated June 30, 2008 whereby the classification of goods and services was extended to 1 to 45. Therefore, service mark applications are now being filed and prosecuted in additional service classes i.e. 43 to 45.

TYPES OF APPLICATIONS
TYPES OF APPLICATIONS
Trademark application in Bangladesh can be filed in two categories:• Ordinary Applications
• Convention Application (claiming priority from a convention country)Ordinary Trademark Applications In Bangladesh:
Ordinary trademark applications filed in Bangladesh are applications without claiming any priority. Ordinarily, a trademark application is filed on Form TM-1. Multi-class trademark applications cannot be filed in Bangladesh. However, the Trademarks Act also lays down provisions regarding the filing of priority applications, wherein the priority of the mark can be claimed in the said mark filed in 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.Paris Convention:
The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on March 20, 1883, established a Union for the protection of intellectual property. It offers national treatment to the applicant residing in the member country of the union, in other words. National treatment is a very important concept and is essential for successfully achieving the fundamental aim of the Paris Convention. The idea is to provide equal treatment to applications from member countries, in a given member country and not to differentiate between the nationals of member countries for the purpose of the grant, and protection of industrial property. Priority application can be filed in Bangladesh within six months of after the date on which the application was made in the Convention Countries. The trademark is registered under the Act, will be registered as of the date on which the application was made in the Convention Country and that date shall be deemed, for the purpose of the Act, to be the date of registration.
Foreign Priority/Convention Applications
Foreign Priority/Convention Applications
An application for registration of a trademark in Bangladesh may be made by any person claiming to be the proprietor/owner of a mark for those goods and services for which he is using or intends to use the mark. At the time of filing the application, the proprietor must have the intention to use the mark.
The Law makes provision for an Applicant to claim priority of a foreign trademark within 6 months from the date of application to the member country of Paris Convention or WTO in Bangladesh.
How long does it take to get a trademark registered in Bangladesh?
How long does it take to get a trademark registered in Bangladesh?
Generally, it takes 18 months to 24 months to get a trademark registered in Bangladesh. However, it also depends on the basis for filing and the legal issues that may arise in the examination of the application.
Term of Registration
Term of Registration
A registered trademark is valid for an initial period of seven (7) years from the date of filing and renewable thereafter for successive periods of Ten (10) years.
After Registration
After Registration
Monitoring Registration Status Even if your mark registers, you should monitor the status of your registration on an annual basis through your agent, attorney or Advocate. It is particularly important to check the status of your registration after you make any of the filings required to keep your registration alive including between the fifth and sixth year after the registration date and between the ninth and tenth year after the renewal date. Term and renewal The registered trademark will be valid for 7 years from the initial filing date. However, protection of your mark can be indefinite if you pay the necessary renewal fees after 7 years then each 10 year period. Update your Address It is necessary to update your correspondence address if any changed after registration. Protecting Your Rights You are responsible for enforcing your rights if you receive a registration certificate in respect of your goods or services. If a right holder suspects that a registered mark is being infringed upon or may be subject to future infringement, he should take a necessary legal step under the Trademark Act, 2009.

Renewal

Renewal
Is there any way we know whether similar marks have already been registered in respect of same type of goods in Bangladesh?

Application for renewal of a trademark may be made to the Registrar in the prescribed manner, not more than six (6) months before the expiration of the last renewal.Renewal is for Ten (10) years. A Certificate of Renewal is issued by the Registrar as evidence of payment of the renewal fee due at that period. Clients are advised that the renewal fee due on a mark cannot be paid until the mark is registered. Clients are therefore advised that they need not worry about the renewal fee until the mark has been registered.

Is a trademark renewal application examined in Bangladesh?
Is a trademark renewal application examined in Bangladesh?
Yes, the examination includes whether the application has been filed in time and whether the same has been filed by the proprietor of the mark on record.

Opposition

Trademark Opposition
Trademark Opposition

Upon publication of a trademark in the Trademarks Journal, any person can file an opposition against the registration of the said trademark in Bangladesh by filing a notice of opposition within the prescribed period of 2 months from the date the Trademarks Journal is made available to the public. The time period to file the notice of opposition can be extended by a maximum period of 3 months upon filing a specified request for extension of time thrice for a period of one month, each along with the prescribed fee.A trademark application can be opposed in Bangladesh on grounds given under Sections 8, 9 and 10 of the Trademarks Act 2009.

Once an opposition is filed against a trademark in Bangladesh a copy of the notice of opposition so filed is served to the applicant by the Trademarks Registry and the applicant is then required to file a counterstatement within 2 months of receipt of the notice forwarded by the Registry, failing which the application shall be treated as abandoned.

Thereafter, the Registrar will request evidence in writing from both parties. If the dispute is not settled by the parties, then the hearing is fixed in the matter.

The Registrar decides the case made in the opposition proceedings. In the absence of an opposition, a trademark is registered, and the certificate of registration is issued.

What are the grounds for objections or refusal to register a trademark in Bangladesh?
What are the grounds for objections or refusal to register a trademark in Bangladesh?

A trademark can be refused registration in Bangladesh if the trademark is: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:

1. Devoid of any distinctive character.

2. Consists exclusively of the marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origins or the time of productions of the foods or rendering of the service or other characteristics of the goods or services.

Rectification of Trademark

On what grounds can a registered trademark be removed in Bangladesh?
On What Grounds can a Registered Trademark Be Removed in Bangladesh?
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.
On what grounds can an application for rectification of trademark be filed Bangladesh?
On what grounds can an application for rectification of trademark be filed 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.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:

1. Devoid of any distinctive character.

2. Consists exclusively of the marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origins or the time of productions of the foods or rendering of the service or other characteristics of the goods or services.

Can a trademark be removed from the Bangladesh Trademark Register because of non-use after registration?
Can a trademark be removed from the Bangladesh Trademark Register because of non-use after registration?
Yes, if a registered trademark in Bangladesh has not been used for a continuous period of five years, it can be removed on an application made in the prescribed manner by filing request before the Trademarks Office in Bangladesh.

Change of Name/Address of the proprietor

Is it possible to Change of Name/Address of the proprietor?
Is it possible to Change of Name/Address of the proprietor?

If there is a change in the name and/or address of the proprietor, such change must be recorded against the Trademark. The proprietor may make application in the prescribed manner to alter its name and/or address on the Register of Trademarks.The Registrar, if satisfied with the application, will issue a Proof of recordal of Change of Name/Address evidencing the recordal of such change in the Register.

To apply for the change of name of the proprietor of a trademark in Bangladesh, a Certified True Copy of the Certificate of Change of Name/Address or any equivalent document (e.g. Extract of Company Register) issued by the appropriate authority in the proprietor’s country of origin attesting to the change of name/address. Where such document is not in the English language, a certified English translation will be required.

On what grounds can an application for rectification of trademark be filed Bangladesh?
On what grounds can an application for rectification of trademark be filed 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.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:

1. Devoid of any distinctive character.

2. Consists exclusively of the marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origins or the time of productions of the foods or rendering of the service or other characteristics of the goods or services.

Can a trademark be removed from the Bangladesh Trademark Register because of non-use after registration?
Can a trademark be removed from the Bangladesh Trademark Register because of non-use after registration?
Yes, if a registered trademark in Bangladesh has not been used for a continuous period of five years, it can be removed on an application made in the prescribed manner by filing request before the Trademarks Office in Bangladesh.

Others

What are the procedure of Assignment of Trademarks in Bangladesh?
What are the procedure of Assignment of Trademarks in Bangladesh?

The Registered proprietor of a Trademark has power to assign the mark and a registered Trademark 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.To file application for recordal of assignment in Bangladesh, the following documents are required –

(i) Deed of Assignment – The Deed must be executed by the Assignor and the Assignee. A nominal consideration of US$ 10.00 is sufficient. The document must be Legalized in the country concerned.

(ii) 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.

(iii) Authorization of Agent – The authorization is to be executed by both the Assignor and the Assignee. It may be notarized.

What are the procedure of Licensing of Trademarks in Bangladesh?
What are the procedure of Licensing of Trademarks in Bangladesh?
There is provision under the Trademark Law for the registration of a person other than the registered proprietor of a trademark as a Registered User.
In order to file an application for Registered User in Bangladesh, the following
documents are required –
(i) Registered User/License Agreement
(ii) TM Form -28
(iii) Statement of Case by an Affidavit.
(iv) Authorization of Agent
What is the provision of Well-known Trademarks in Bangladesh?
What is the provision of Well-known Trademarks in Bangladesh?
The Trademarks Registry recognizes well-known trademarks in Bangladesh on the basis of their international, national and crosses border reputation.The Trademarks Act, 2009 provides protection to well-known trademarks at 2 levels:
• Against the registration of similar marks
• Action against the misuse of a well- known trademark
Restore a trademark of Abandoned Mark or Application
Restore a trademark of Abandoned Mark or Application
The procedure for filing for restoration of a trademark in Bangladesh is as follows:
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 the restoration of the mark within 1 year from the expiration of the last registration of the trademark.
How to protect a trademark in Bangladesh?
How to protect a trademark in Bangladesh?

Remedies available for protection of trademarks in Bangladesh are:Civil Action- The competent Courts can be moved for grant of relief of injunction against infringement and/or passing off.

Criminal Proceedings- Criminal complaints can also be filed against persons who have infringed the trademark in Bangladesh, in addition to a civil action.

Administrative Remedies- Notice of opposition can be filed against trademark applications published in the Trademarks Journal in Bangladesh. Proceedings can be initiated for rectification /cancellation of registered trademarks before the Registrar of Trademarks.

Border Measures- The Bangladesh Customs Act, 1969 confers power on the Commissioner of Customs to prohibit importation or exportation of certain goods. In exercise of the powers conferred by that section, the Commissioner of Customs has prohibited the import of those goods that have applied a false trade-mark or a false trade description. The Trademarks Act provides that the proprietor or a licensee of a registered trademark may give notice in writing to the Commissioner of Customs to prohibit the importation of any goods if the import of the said goods constitutes infringement under the Act.