Trademarks in Bangladesh
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:
™ (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)
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 which do not fall into these standard categories, such as those based on color, smell, or sound.
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.
|Relevant Office||Department of Patents, Designs and Trademarks|
|Law in Force||Trade Marks Act, 2009|
|Nice Classification||Yes (Ninth Edition)|
|Multi- Class System||No|
|Documents required for filing a trade mark application||Simply executed Power of Attorney|
|Prosecution Process||Filing of trade mark application Examination report Advertisement of mark in the trade marks journalOpposition, if any, within a period of three months from the date of advertisementRegistration of the mark if no opposition is filed or is set asideIssuance of Registration Certificate|
|Registration Term||7 years from the date of application|
|Renewal Term||10 years from the date of previous registration|
Trademark Search in Bangladesh
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, existence of prior identical/similar marks on the register etc., so as to avoid any objection and opposition with respect to the mark. Although, 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 mark later on.
Trademark searches in Bangladesh can be conducted for word mark, numerals, labels and device mark. Device mark searches can be conducted through Vienna code.
Trademark searches can be classified into the following categories:
- Word Search
- Device Search
Word mark Search in Bangladesh
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 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.
Trademark Applications in Bangladesh
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 priority of the mark can be claimed in the said mark filed in a convention country.
Priority Trademark Applications in Bangladesh / Convention Trademark Applications 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. 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.
The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on March 20, 1883, established a Union for the protection of industrial 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 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 if 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.
Trademark Classes for Goods and Services 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.
An application for registration of the trademark is to be filed with the Department of Patents, Designs and Trademarks (DPDT), Dhaka in the prescribed form with payment of requisite fees.
Further details regarding filing of trademark applications can be accessed on the Trademark Registry’s Website, Bangladesh at the following link: http://www.dpdt.gov.bd/
Trademark Filing in Bangladesh
Requirements for Filing a Trademark Application in Bangladesh: Who Can File a Trademark Application in Bangladesh?
Any person who claims to be the proprietor of a trademark can file an application for the registration of the mark in respect of his goods/services. It should be filed at the trademark office, Dhaka.
After filing the trademark application, the same is then examined by the Trademarks Registry, Dhaka as to its inherent registrability and/or any similarity with existing marks. If any objection is raised, an official examination report will be issued by the Trademarks Registry. To overcome the objection, it is necessary to file a response to the examination report along with the supporting documents showing the marks as used.
If, following examination, the trademark application is considered allowable, an acceptance order is issued, and thereafter the trademark is published in the Trademarks Journal. If there are no oppositions filed within 2 months or within such further period, not exceeding 3 months in aggregate, from the date of advertisement in the Trademarks Journal, then the trademark registration certificate is issued.
Trademark registration is a long process and it takes around 24- 36 months to obtain registration in case no opposition is filed by a third party
Duration of Trademark registration
Once a trademark is registered in Bangladesh, it is valid for a period of 7 years from the date of application. The trademark registration can then be renewed for a further period of 10 years from the date of expiration of registration or of the last renewal of the registration.
Trademark Filing Procedure in Bangladesh
The procedure for filing a Trademark in Bangladesh is as follows:
- Filling a Trademark in Bangladesh – 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.
- Official Examination of a Trademark in Bangladesh / Issuance of 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. A trademark application in Bangladesh can be refused/ objected by the Registrar on the following grounds:
- The mark is similar/ identical to an earlier trademark for the same or similar goods/services.
- The mark is similar/identical to an earlier trademark in respect of different goods/services.
- The mark is a commonly used and accepted name of any single chemical element or single chemical compound.
The above categories of marks may however be registered if the proprietor of the earlier trademark consents to its or there has been an honest concurrent use of the later mark.
Trademarks which 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 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 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.
- Publication / Advertisement of a Trademark in Bangladesh – 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 opposition against the registration of a mark.
- Opposition of Published Trademark in Bangladesh – 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 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 1 month each along with the prescribed fee.
- Registration & Renewal of a Trademark in Bangladesh – 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 from time to time 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.
Trademark Prosecution Flowchart in Bangladesh
For more information on Trademarks in Bangladesh please click here:firstname.lastname@example.org
TRADEMARKS IN BANGLADESH FAQs
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