We are specialized in Trademark advisory, prosecution and protection. We represent our clients in Trademark Search and Risk Analysis, Drafting and Filing of Trademark or Service Mark Application, Acceptance of Application, Publication in Official Journal, Registration of Trademark, Renewal of Trademark, Restoration of Registered Rights, Assignment or Licencing, Opposition and Counter of Opposition, Cancellation Action, Infringement Investigations, Sending Legal Notices, Drafting, Filing and Proceeding of Civil Litigation in Bangladesh.
The Trademarks Department of the Department of Patents, Designs and Trademarks accepts Ordinary Trademark Application, Service Mark Application, Series or Associate Mark Application, Protective Mark Application, Certification Mark Application, Collective Mark Application, Application Claiming Priority based on Foreign Application of Trademark.
Bangladesh is a member of the Paris Convention. It is possible to file a trademark application in Bangladesh claiming priority based on foreign or international application. The deadline of priority based filing is 6 months from the filing date of the conventional application.
Now all types of trademark applications and submissions for registration processes are allowed via online. The Office accepts manual submissions only when the applicant faces any difficulties in online filing.
No. Multiclass filing of trademark is not yet applicable in Bangladesh. Individual application needs to be filed based on each separate class.
The Trademarks Rights in Bangladesh are governed by The Trademark Act, 2009 and The Trademarks Rules, 2015.
Any person claiming to be first and genuine proprietor can apply for registration of trademark containing the following requirements -
*Have novelty, inventiveness and distinct characteristics
*Not registered earlier in Bangladesh
*Not identical or deceptively similar to any existing registration of different proprietor
*Not used in such way that create false conception
*Not comprised of any scandalous or obscene matter
*Not contains any matter that can hurt the religious susceptibilities of the Peoples of Bangladesh
*Not disentitled to protection in a Court
*Not being contrary to morality or law
The Trademarks Authority in Bangladesh follows NICE classification of Goods or Services. Trademark can be filed with certain number of goods or services and it is also possible to file for all goods in certain class without raising any specific number of goods or services.
In accordance with Section 7 of the Trademark Act, 2009, a trademark may be limited wholly or in part to one or more specified colours, and any such limitation shall be taken into consideration by the Tribunal to decide on the distinctive character of the trademark. So far as a trademark is registered without limitation of colour, it will be deemed to be registered for all colours.
In accordance with Section 22 of the Trademark Act, 2009, the registration of a trademark shall be for a period of seven years, but may be renewed from time to time in accordance with the provisions of this section.
The Registrar shall, on application made by the registered proprietor in the prescribed manner and before expiration of validity deadline, renew the registration of the trademark for a period of 10 (ten) years from the date of expiration of the original registration or as the case may be, of the last renewal of registration.
Where, after the acceptance of an application for registration of a trademark the Registrar is satisfied that,
(a) the application has been accepted in error, or
(b) In the circumstances of the case the trademark should not be registered or should be registered subject to conditions or limitations or to conditions additional to or different from the conditions or limitations subject to which the application has been accepted,
The Registrar may, after giving the applicant an opportunity of being heard, withdraw the acceptance and proceed as if the application had not been accepted.
(1) The registration of a trademark shall be for a period of seven years, but may be renewed from time to time in accordance with the provisions of this section.
(2) The Registrar shall, on application made by the registered proprietor of a trademark in the prescribed manner and within the prescribed period, renew the registration of the trademark for a period of 10(ten) years from the date of expiration of the original registration or as the case may be, of the last renewal of registration.
(3) At the prescribed time before the expiration of the last registration of a trademark, the Registrar shall send notice in the prescribed manner to the registered proprietor of the date of expiration and the conditions as to payment of fees and otherwise upon which a renewal of registration may be obtained, and if at the expiration of the time prescribed in that behalf those conditions have not been duly complied with the Registrar may remove the trademark from the Register.
(4) Where a trademark has been removed from the Register for non-payment of the prescribed fee, the Registrar may, within 1(one) year from the expiration of the last registration of the trademarks, on receipt of an application in the prescribed from, if satisfied that it is just so to do, restore the trademark to the Register and renew the
registration of the trademark either generally or subject to such conditions or limitations as he thinks fit to impose, for a period of 10(ten) years from the expiration of the last registration.
(1) Any person may, within 2(two) months from the date of the advertisement of an application for registration, and on payment of the prescribed fee, give notice in
writing in the prescribed manner to the Registrar, of opposition to registration.
(2) The Registrar shall, within 1(one) month from the receipt of the notice of opposition by him, serve a copy of the notice on the applicant for registration in the prescribed manner and within 2(two) months from the receipt by the applicant of such copy of the notice of opposition, the applicant shall send to the Registrar in the prescribed manner, a counter-statement of the grounds on which he relies for his
application, and if he does not do so, he shall be deemed to have abandoned his application.
(3) If the applicant sends such counter-statement, the Registrar shall, within 1(one) month from the receipt of such counter-statement, serve a copy thereof in the prescribed manner on the person giving notice of opposition.
(4) Any evidence upon which the opponent and the applicant may rely shall be submitted in the prescribed manner and within the prescribed time to the Registrar, and the Registrar shall give an opportunity to them to be heard, if they so desire.
(5) The Registrar shall, after hearing the parties, and considering the evidence, decide whether registration is to be permitted and whether such permission shall be or not subject to conditions or limitations.
(6) When the Registrar deems it necessary to permit registration subject to conditions or limitations under sub-section (5), he shall record his decision on such conditions or limitations.
(7) If a person giving notice of opposition or an applicant sending a counter-statement after receipt of a copy of such notice neither resides nor carries on business in Bangladesh, the Registrar may require him to give security for costs of the proceedings before it, and in default of such security being duly given, may treat the opposition or application, as the case may be, as abandoned.
(8) Notwithstanding anything contained in this section, all opposition relating activities for registration shall be concluded within 120 (one hundred and twenty) working days after giving notice under sub-section (1).
The Registrar may on such terms as he thinks fit, at any time, whether before or after acceptance of an application for registration under section 15 permit the correction of any error in or in connection with the application or permit correction of any error in a notice of opposition or a counter-statement under section 18.
(1) No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trademark.
(2) Nothing in this Act shall be considered to affect rights of action against any person for passing of goods or services as the goods or services, as the case may be, of another person or the remedies in respect thereof.
(1) Subject to the other provisions of this Act, the registration of a person in the Register as
proprietor of a trademark in respect of any goods or services shall, if valid give to that person the exclusive right to the use of the trademark in relation to those goods or services, as the case may be, and to obtain relief in respect of infringement of the trademark in the
manner provided by this Act.
(2) No person other than the registered owner of a trademark in relation to any goods or services, as the case may be, shall use that trademark without the consent of the registered owner.
(3) The exclusive right to the use of a trademark given under sub- section (1) shall be subject to any conditions or limitations entered on the Register.
(4) Where two or more persons are registered proprietors of trademarks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trademarks shall not except so far their respective rights are subject to any conditions or
limitations entered on the Register, be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trademarks but each of those persons has otherwise the same rights as against other persons not being
registered users using by way of permitted use as he would have if he were the sole registered proprietor.
Notwith-standing anything in any other law to the contrary, a registered trademark shall, subject to the provisions of this Chapter, be assignable and transmissible whether with or without the goodwill of the business concerned, and in respect either of all of the goods of services in respect of which it is registered or of some only of those goods or services.
(1) where a person becomes entitled by assignment or transmission to a registered trademark, he shall apply in the prescribed manner to the Registrar to register his title, and the Registrar shall on receipt of the application and on proof of the title to his satisfaction, register him as the proprietor of the trademark in respect of the goods or services in respect of which the assignment or transmission has effect and shall cause particulars of the assignment or transmission to be entered on the Register:
Provided that where the validity of an assignment or transmission is in dispute between the parties, the Registrar may refuse to register the assignment or transmission until such dispute is settled by a competent court.
(2) Except for the purposes of an application before the Registrar under sub-section (1) of this section or an appeal from an order thereon, or an application under section 51 of this Act or an appeal from an order thereon, a document or instrument in respect of which no entry has been made in the Register in accordance with sub-section (1) of this section, shall not be admitted in evidence by the Registrar or any Court in proof of title to the trademark by assignment or transmission unless the Registrar or the Court, as the case may be, otherwise directs.
(1) No application for the registration of a trademark in respect of any goods or services shall be refused, nor shall permission for such registration be withheld, on the ground only that it appears that the applicant does not use or propose to use the trademark, if the Registrar is satisfied that a company is about to be formed and registered under the Companies Act, 1994 (Act XVIII of 1994) and that the applicant intends to assign the trademark to that company with a view to the use thereof in relation to those goods or services as the case may be, by the company.
(2) The Tribunal may, in a case to which sub-section (1) applies, require the applicant to give security for the costs of any proceedings relative to any opposition or appeal, and in default of such security being duly given may treat the application as abandoned.
(3) If any trademark in respect of any goods or services is assigned to any company under sub-section (1) an application shall be made to the Registrar within the time specified for registration as the proprietor of the trademark in respect of those goods, or services.
(4) If any application is made under sub-section (3), the Registrar may register the company as the proprietor of the assigned trademark in respect of those goods or services and if no application is made within the time, the registration shall cease to have effect and the Registrar shall amend the register accordingly.
The Government shall prescribe classes of goods under the International Classification, hereinafter referred to as textile goods in this Chapter, to the trademarks used in relation to which the provisions of this Chapter shall apply; and subject to the said provisions, the other provisions of this Act shall apply to such trademarks as they apply to trademarks used in relation to order classes of goods.
No prosecution for an offence under this Act shall be commenced after the expiration of three years next following the commission of the offence charged or two years the discovery thereof by the prosecutor, whichever expiration first happens.
(1) If the Registrar is satisfied on application made to him in the prescribed manner that there is sufficient cause for extending the time he may subject to such condition as to costs or otherwise as he may think fit to impose, extend the time and notify the parties accordingly : Provided that no extension of time shall be granted where time is expressly provided in this Act or the rules made there under.
(2) Nothing in sub-section (1) shall be deemed to require the Registrar to hear the parties before disposing of an application for extension of time.
(3) No appeal shall lie from any order of the Registrar under this section.
There is a provision that, where an applicant is in default in the prosecution of an application made under this Act, the Registrar may, by notice, require the applicant to remedy the default within a time specified any after giving his, if so desired, an opportunity of being heard, treat the application as abandoned, unless the default is remedied within the time specified in the notice.