A trademark, trade mark, or trade-mark is a distinctive sign or indicator used by an individual, business organization, or other legal entity to help consumers identify that its products or services with which the trademark appears originate from a unique source, and to help distinguish its products or services from those of other entities.
Trademarks in Bangladesh may be designated by the following symbols:
A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements. There is also a range of non-conventional trademarks comprising marks that do not fall into these standard categories, such as those based on color, smell, or sound.
The registration of a trademark in Bangladesh is for a period of 7 years from the date of application. To register a trademark in Bangladesh, after filing the application in the prescribed form and payment of relevant fee, the mark is then examined, published, and eventually proceeded to registration where there is no opposition against the said trademark or where the opposition against the said trademark was filed but was decided in favor of the applicant. The trademark is then registered for a period of 7 years from the date of filing of the application in Bangladesh and the registration certificate is issued. The Bangladesh Trademarks Act, 2009 also provides that if a registered trademark is not used for a continuous period of 5 years from the date of its registration, then the same becomes vulnerable to cancellation action on grounds of non-use.
The owner of a registered trademark may initiate legal proceedings for trademark infringement to prevent unauthorized use of that trademark. However, registration is not required. The owner of a common-law trademark may also file suit, but an unregistered mark may be protectable only in the geographical area within which it has been used or in geographical areas into which it may be reasonably expected to expand.
The term trademark is also used informally to refer to any distinguishing attribute by which an individual is readily identified, such as the well-known characteristics of celebrities. When a trademark is used in relation to services rather than products, it may sometimes be called a service mark, as in the United States.
Department of Patents, Designs, and Trademarks
A trademark search in Bangladesh can be for both word and device marks. It is advisable to conduct a trademark search prior to filing a trademark application to ascertain the availability of trademarks, the existence of prior identical/similar marks on the register, etc., so as to avoid any objection and opposition with respect to the mark. Although a search is not mandatory for filing the application, it is advisable to conduct a preliminary search for the proposed trademark before filing the application in order to avoid any objection and opposition with respect to the trademark later on.
Trademark searches in Bangladesh can be conducted for word marks, numerals, labels, and device marks. Device mark searches can be conducted through the Vienna code.
Trademark searches can be classified into the following categories:
Trademark word 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. Trademark searches in Bangladesh can be conducted for the desired class and associated classes.
It is advisable to conduct a comprehensive trademark clearance search in Bangladesh to ascertain the availability of the proposed mark and also to overcome any objection and opposition with respect to marking 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.
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 a 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.
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.
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. A certified copy of the priority documents needs to be filed within 3 months from the date of filing of the convention application in Bangladesh.
Being a signatory of the Paris Convention for the Protection of Industrial Property, one can file convention applications claiming priority in Bangladesh. A certified copy of the priority document is necessary for claiming priority. The same can be filed within 3 months from the date of filing the application in Bangladesh.
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.
The procedure for filing a Trademark in Bangladesh is as follows:
A trademark application in Bangladesh can be filed for a single class only. 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.
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 registration is raised, an official examination report will be issued by the Registrar within 6 months to 1 year, depending on the backlog at the Registry.
The Registrar may accept or refuse the application subject to the provisions of the ordinance. A trademark application in Bangladesh can be refused/ objected by the Registrar on the following grounds :
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.
Further, the objections raised by the Registrar with regard to an application are forwarded to the applicant and the applicant has to file an appropriate reply with the supporting documents to the official objections within 90 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 the 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.
After examination and upon acceptance of the response by the Registrar, the application is ordered for advertisement /publication in the Trademarks Journal. An application is advertised in the Trademarks Journal so as to invite the public for filing an opposition against the registration of a mark.
Upon publication of the trademark in the Trademarks Journal, any person can oppose the registration of the said trademark 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 period to file the notice of opposition can be extended by a maximum period of 3 months upon filing a specified request for an extension of thrice for a period of 1 month each along with the prescribed fee.
The application shall proceed to registration where there is no opposition or where the opposition was filed and was decided in favor of the applicant. The mark is then registered for a period of 7 years from the date of filing of the application and the registration certificate is issued. The trademark can be renewed for an unlimited period by payment of renewal fees, failing which the mark becomes liable to be removed from the Register on account of non-renewal. Each renewal term is for a period of 10 years.
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 period to file the notice of opposition can be extended by a maximum period of 3 months upon filing a specified request for an extension of 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 counter-statement 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 a 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.
A trademark can be renewed in Bangladesh for an unlimited period upon payment of the renewal fees, failing which the mark becomes liable to be removed from the Register on account of non-renewal. Each renewal term is for a period of 10 years.
The procedure for filing for a renewal of a trademark in Bangladesh is as follows: Request to renew a trademark in Bangladesh can be filed within 6 months BEFORE THE EXPIRY of the registration/ renewal term if accompanied by the requisite renewal fees on the prescribed form.
Request to renew a trademark in Bangladesh can be filed within 6 months AFTER THE EXPIRY of the registration/ renewal term if accompanied by the requisite renewal fees on the prescribed form.
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.
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.
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.