Legal Basis: The Registration of Trade Marks and their protection is governed by the:-
Applicant: 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.
Classification of Goods: The International Nice Classification of Goods/services applies.
a. Name of the Mark /Logo/Device prints or representation.
b. Name and Address of the Applicant.
c. Telephone, E-mail and Nationality of the Applicant.
d. Status of the applicant i.e. Merchandisers / Manufacturers /Service
e. Specification of Goods/Services and Class.
f. User date of the mark (whether the mark is in use or proposed to be
used in Bangladesh).
g. General/ Specific Power of Attorney (notarized). Required at the time
of filing application.
Examination: The mark is thoroughly examined with regards – (i) distinctiveness; (ii) similarity or being identical or nearly resemble with existing trademarks on the Register of Trademarks; (iii) hurt religious susceptibilities of any class of Bangladesh and (iii) compliance with the requirements of the Trade Marks Act.
1. Conduct Availability Search (optional).
2. Filing the Application: An application is made in the prescribed manner to the Registrar of Trade Marks.
3. Acknowledgement of Application: The Registrar, on receipt of the application, issues Official Filing Receipt. The document contains all relevant filing details on the trademark e.g. Application Number, date of application, the trademark etc.).
4.1. Refusal of Application: Where an application is refused, the Applicant through its local agent must submit reply to the show cause notice and may seek a hearing in the matter within three (3) months otherwise, the application will be deemed abandoned.
4.2. Acceptance of Application: If the Examiner is satisfied as to (4.1) above, the Registrar accepts the mark for advertisement in the Trade Marks Journal.
5. Opposition Proceedings: When a trademark is advertised, any person may within two (2) months from the date of the publication give notice of Opposition to the Registrar on Form TM-5.
The Registrar shall send a copy of the Notice of Opposition to the Applicant and the Applicant shall within Two month of receipt of the Notice of Opposition, file a Counter-Statement of the grounds for which it relies for its application to be registered. Failure to file the Counter-Statement within the prescribed period will result in the application being deemed abandoned. The applicant may seek extension of time for filing Counter-Statement along with Govt. fees.
Where a Counter-Statement is filed, the Registrar shall furnish a copy thereof to the Opponent. The parties are required to file evidence by way of Affidavit and the Registrar shall, after hearing the parties, decide on whether the application should be registered or not. The Registrar’s decision shall be subject to appeal to the High Court.
Where no opposition is received at the expiration of the opposition period or the opposition is determined and resolved in favour of the Applicant, the Registrar is obliged to issue a Certificate of Registration for the trademark on payment of the prescribed fee. The registration date of the trademark will be the date of filing.
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.
Application for renewal of a trademark may be made to the Registrar in the prescribed manner, at least three (3) months before the expiration due date. 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.
Late Renewal is available within 6 months from the due date with prescribed late Fee.
POST REGISTRATION MATTER
Assignment of Trademarks
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.
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 trade mark 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) Authorisation of Agent – The authorization is to be executed by the Assignee. It may be notarized.
Licensing of Trademarks (Registered User)
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 application for Registered User in Bangladesh, the following documents are required –
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 trade mark. The proprietor may make application in the prescribed manner to alter its name and/or address on the Register of Trade marks.
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.
Foreign Priority/Convention Applications
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.
Service Marks are now registerable in Bangladesh. Applicants can now apply for registration of service marks in Bangladesh in International Classes 35 to 45. The International Nice Classification of Services is applicable for the purpose.