TRADEMARKS FILING AND PROSECUTION 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) |
| Paris Convention | Yes |
| Madrid System | No |
| 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:
a. 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.
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 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:
1. 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
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Bangladesh introduces Border Protection Measures
TRADEMARKS IN BANGLADESH FAQs
TRADEMARK OPPOSITION BANGLADESH
PROCEDURE FOR TRADEMARK OPPOSITION IN BANGLADESH
Upon publication of a trademark in the Trademarks Journal, any person can file an opposition against 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 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 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.
For more information on trademark opposition in Bangladesh please click here info@ssrana.com
TM OPPOSITION FLOWCHART BANGLADESH
TRADEMARK REGISTRATION BANGLADESH
HOW TO REGISTER A TRADEMARK IN BANGLADESH
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 will then be 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 will then be registered for a period of 7 years from the date of filing of the application in Bangladesh and the registration certificate is issued.
The insignia ® can be used for a registered trademark in Bangladesh.
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.
For more information on how to register a trademark in Bangladesh please click here info@ssrana.com
TRADEMARK RENEWAL BANGLADESH
How to renew a Trademark in Bangladesh?
A trademark can be renewed in Bangladesh from time to time 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.
TRADEMARK RESTORATION BANGLADESH
How to restore a trademark in Bangladesh?
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 restoration of the mark within 1 year from the expiration of the last registration of the trademark.
For more information on trademark renewal and restoration in Bangladesh please click hereinfo@ssrana.com
TRADEMARK RECTIFICATION 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?
Procedure for filing an application for Rectification of a Trademark In 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.
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TRADEMARK FILING FEE & FORM BANGLADESH
Details regarding the Trademark forms can be accessed at the following link:
Details regarding the Trademark Filings fees can be accessed at the following link:
Bangladesh Trademark Filing Fee
Also read
For more information on trademark forms and fees in Bangladesh please click hereinfo@ssrana.com
TRADEMARK ACT BANGLADESH
The first statutory law relating to trademarks in Bangladesh was the Trademarks Act, 1940 which introduced a machinery for the registration and statutory protection of marks in Bangladesh.
This Act of 1940 was replaced by the Trademarks Act, 2009 which was promulgated to amend and consolidate the law relating to trademarks and unfair competition and to provide for the registration and better protection of trademarks and for the prevention of the use of fraudulent marks, and for matters ancillary thereto.
Details regarding the Bangladesh Trademarks Act, 2009 and Trademarks Act, 1940 can be accessed at http://www.dpdt.gov.bd
For more information on please click here info@ssrana.com
WELL KNOWN TRADEMARKS BANGLADESH
The Trademarks Registry recognizes well-known trademarks in Bangladesh on the basis of their international, national and cross border reputation.
The Trademark Act, 2009 provides protection to well-known trademarks at two levels:
- Action against registration of similar marks
- Action against misuse of well-known trademarks
For more information on mark not registrable in Bangladesh please click here info@ssrana.com.
TRADEMARKS NOT REGISTRABLE BANGLADESH
What marks are not registrable in Bangladesh?/ What is not registrable as a trademark in Bangladesh?
The trademarks which are not registrable in Bangladesh are the following:
- Trademark which is likely to cause deception or confusion;
- Trademark that is likely to hurt religious sentiments of any community;
- Trademark that comprises any scandalous or obscene matter;
- Trademark which is contrary to any law, for the time being in force, or morality;
- Trademark for the shape of goods necessary to obtain technical result or which gives substantial value to the goods
- Name of the chemical compound declared by World Health Organisation as an International non-proprietary name
For more information on mark not registrable in Bangladesh please click here info@ssrana.com
TRADEMARK PROTECTION BANGLADESH
How to protect 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.
For more information on trademark protection in Bangladesh please click hereinfo@ssrana.com
Who can file a trademark application in Bangladesh?
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.
What is a Collective mark in Bangladesh?
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.
What is a Service mark in Bangladesh?
A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product.
Is it possible to have a descriptive trademark registered in Bangladesh?
No, it is not possible to register such a trademark.
Can Sound and Smell be registered as a trademark in Bangladesh?
No, Sound and Smell marks cannot be registered as a trademark 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.
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 colors
- Shape of goods
- Slogans
- Signature
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.
How is a trademark designated in Bangladesh?
A trademark is designated by the following:
- ™ (for an unregistered trademark, the application for whose registration has been filed);
- ® (for a registered trademark)
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.
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.
What are the qualities of a good trademark in Bangladesh?
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.
What is a trademark in Bangladesh?
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.
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.
What is not registrable as a trademark in Bangladesh?
The trademarks which are not registrable in Bangladesh are the following:
- Trademark which is likely to cause deception or confusion;
- Trademark that is likely to hurt religious sentiments of any community;
- Trademark that comprises any scandalous or obscene matter;
- Trademark which is contrary to any law, for the time being in force, or morality;
- Trademark for the shape of goods necessary to obtain technical result or which gives substantial value to the goods
- Name of the chemical compound declared by World Health Organisation as an International non-proprietary name
What marks are not registrable in Bangladesh?
The trademarks which are not registrable in Bangladesh are the following:
- Trademark which is likely to cause deception or confusion;
- Trademark that is likely to hurt religious sentiments of any community;
- Trademark that comprises any scandalous or obscene matter;
- Trademark which is contrary to any law, for the time being in force, or morality;
- Trademark for the shape of goods necessary to obtain technical result or which gives substantial value to the goods
- Name of the chemical compound declared by World Health Organisation as an International non-proprietary name
Well Known Trademarks in Bangladesh
The Trademarks Registry recognizes well-known trademarks in Bangladesh on the basis of their international, national and cross border reputation. The Trademarks Act, 2009 provides protection to well-known trademarks at 2 levels:
- Against the registration of similar marks
- Action against misuse of well- known trademark
Bangladesh Trademarks Act
The first statutory law relating to trademarks in Bangladesh was the Trademarks Act, 1940 which introduced a machinery for the registration and statutory protection of Trademarks in Bangladesh.
This Act of 1940 was replaced by the Trademarks Act, 2009 which was promulgated to amend and consolidate the law relating to trademarks and unfair competition and to provide for the registration and better protection of trademarks and for the prevention of the use of fraudulent marks, and for matters ancillary thereto.
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.
On What Grounds can a Registered Trademark Be Removed in Bangladesh?
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.
Restoration of Trademarks in Bangladesh
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 restoration of the
mark within 1 year from the
expiration of
the
last registration of the trademark.
Trademark Renewal in Bangladesh
A trademark can be renewed in Bangladesh from time to time 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.
Trademark Opposition Flowchart in Bangladesh
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Trademark Opposition Flowchart in Nepal
Trademark Prosecution Flowchart in Nepal
Procedure for Trademark Opposition in Bangladesh
Upon publication of a trademark in the Trademarks Journal, any person can file an opposition against 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 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 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.
Trademark Prosecution Flowchart in Bangladesh
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.
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.
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.
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.
Trademark acceptance or refusal by Registry in Bangladesh
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.
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.
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.
Trademark Filing Procedure in Bangladesh
The procedure for filing a Trademark in Bangladesh is as follows:
- Filling a Trademark in Bangladesh
- Official Examination of a Trademark in Bangladesh / Issuance of Office Action
- Acceptance/refusal of Trademark application in Bangladesh
- Publication / Advertisement of a Trademark in Bangladesh
- Opposition of Published Trademark in Bangladesh
- Registration of a Trademark in Bangladesh
Duration of 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.
Duration for Getting Trademark Registered in Bangladesh
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
Acceptance/ Refusal of Trademark Application in Bangladesh
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.
Examination of Trademark Application in Bangladesh
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.
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.
Trademark Filing in Bangladesh
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.
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.
Applicability of Paris Convention 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.
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.
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.
Trademark Applications Bangladesh
Trademark application in Bangladesh can be filed in two categories:
- Ordinary Applications
- Convention Application (claiming priority from a convention country)