Understanding Trademark Law In Bangladesh: An Overview

What is a Trademark?

In Bangladesh, trademark registration is mandatory to be granted rights over a trademark, as it is a “first to file” jurisdiction. Only in some exceptional cases can an unregistered trademark be protected. The trademark applications must be filed with the Department of Patents, Designs and Trademarks (DPDT) of the Ministry of Industries of Bangladesh.

This article aims at exploring the trademark law and registration procedure in Bangladesh. Read on!

What is a valid Trademark in Bangladesh?

Section 2(23) provides that a “mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, symbol, numeral, figurative elements, a combination of colours or any combination thereof. In addition to this, Section 6 of the Trademarks Act, 2009 mandates for a valid trademark to contain at least one of the following essential elements for registration:

• the name of a company, individual, or firm, represented in a special or particular manner;
• the signature of the applicant for registration or some predecessor in his business;
• one or more invented words;
• one or more words having no direct reference to the character or quality of the goods or services, and not being, according to its ordinary signification, a geographical name or a surname or a personal name or any common abbreviation thereof or the name of a sect, caste or tribe in Bangladesh;
• any other distinctive mark.

What cannot be registered as a Trademark in Bangladesh?

According to the Trademarks Act, the following marks cannot be considered for registration as a valid trademark:

• Those which comprise or consist of any scandalous or obscene subject matter;
• Those which if used would be in violation of any law which is currently in force in the country;
• Those which if used would likely serve to cause confusion among consumers or would in effect deceive consumers;
• Those which contain any matter likely to injure the religious sentiments of citizens of Bangladesh irrespective of class;
• Those which are identical with, or are an imitation of, or contain as an element, an armorial bearing, flag or other emblems, 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;

Why should you register your Trademark?

• The registration of a trademark for a product or service serves to create intellectual property for a company which is considered an asset in the sense that it functions as a privilege that may be sold, delegated to another entity, franchised or economically contracted. All leading companies like Samsung, Google, Apple and others have hundreds of registered patents and trademarks which distinguish their products and services from other competitors.
• A trademark lends a unique identity to the brand through its products or services. It offers tangible proof that the value of such a product or service is unique and it is worth the customer’s expenditure. Moreover, it aids in the development of loyal and long-term clientele who will consistently pick your trademarked brand over others. For example, consumers often relate to the partly-eaten apple as belonging to the high-end Apple company. Through continued use and innovative strategies, the symbol of apple has gained its own unique popularity and traction with a larger section of consumers who only use Apple products.
• Upon the successful registration of your trademark, one is entitled to use the ® symbol on the logo of the product or service which is an indication that it is a registered mark and that no one can use a similar trademark for their products/services.
• The most important aspect of trademark registration is perhaps the protection against infringement. If someone uses a trademark without the prior consent or authorisation of the owner, the owner can file for an injunction against such use of the mark in a court of law in the jurisdiction concerned. Upon getting a favourable order, such an authorised user can be stopped from using the trademark. Moreover, in case it is found that the trademark has been misused to the owner’s detriment, it entitles the owner of the trademark to certain statutory damages in the case of counterfeiting, relieving him or her from having to demonstrate actual damages in order to receive a monetary award.
• Trademark registration in Bangladesh can also serve as a foundation for international trademark registration. For brands which are looking to expand outside a single country, a trademark registered in Bangladesh serves to gain international recognition and can be used as the basis for registration in another country on account of the goodwill the mark has generated through use in the registered country.

Information required for trademark filing in Bangladesh

In order to apply for a trademark, the Trademark authorities in Bangladesh require the applicant to submit certain documents to process the application as per the procedure. These documents include:

• Details regarding the name, address and the incorporation/nationality of the applicant.
• Personal details of the applicant are followed by the depiction of the trademark (word or label in .jpg/.png format). If the mark is a label or logo, it cannot exceed 10cm x 10cm in size.
• The description of goods/services involved in the trademark.
• In case of marks which involve multiple colours or a colour combination, then a clear indication and names of the colours used have to be provided. Moreover, if the trademark is in any other language other than English, then a translation or transliteration of the same in English must be filed along with a sworn statement.
• In case priority is claimed, the priority application number, filing date and the priority country is required as part of the application.
• Power of Attorney (POA) in original is required which should also carry the signatures of two witnesses whose names and addresses should be provided. Without the POA, the application remains incomplete, although the notarization/legalisation of the POA is not required. In case of a priority application, a certified copy of the POA should be provided.

What are the stages of Trademark Filing in Bangladesh?

• Filing Of An Application

The drafting and filing of an application is the first step to getting a successful trademark registration. It is to be noted that according to Section 15 of the Trademarks Act, 2009 in Bangladesh, a trademark can be applied for under a single class only on a particular application. In other words, if a trademark is required to be registered under multiple classes, then multiple applications will have to be filed, each catering to a particular class.

Section 15 also states that where the applicant or any of the joint applicants does not carry on business in Bangladesh, the application may be filed in the office of the Trademarks Registry having territorial jurisdiction over the place mentioned in the address for service in Bangladesh as disclosed in the first application, is situated.

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 as per the existing regulations.

For filing the trademark application, one may have to pay a filing fee of 70 USD along with the professional fee of the advocate or a legal consultant.

• Examination by Registrar

Once the trademark application has been filed, the next stage in the process is the Examination of the application by the Registrar. The examination is conducted pertaining to several parameters such as distinctiveness, the possibility of deceptiveness and any chance that the trademark in question comes into direct conflict with other trademarks already registered. If there is an objection to the mark, the Registrar sends an official examination report within a period of 6 months to 1 year, depending on the backlog of pending applications in the Registry.

Under the existing law, the Registrar may object to a mark due to any of 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 for any single chemical element or single chemical compound.

Once the objection, if any, raised by the Registrar has been forwarded to the applicant, the applicant has to file an appropriate reply with the supporting documents to the official objections within 60 days from being notified of said objections. The Registrar on careful consideration of the reply and documents filed may then accept the application or if he is not satisfied, he will 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.

• Publication In Trademarks Journal

After acceptance of the response by the Registrar after a successful hearing and upon completion of the examination process, the application proceeds to get published for advertisement in the Trademarks Journal. The Journal publication of the application serves the purpose of inviting the public for filing an opposition against the registration of the concerned mark due to any ground as is provided under the law.

Such opposition can be expressed by filing a notice of opposition within the prescribed period of 2 months from the date of advertisement of the mark in the Trademarks Journal. This period can be further extended for another month by filing a special application and paying the requisite fees.

For publication in the Trademarks Journal, the applicant may have to may an official fee of 42 USD along with any professional fee that may be applicable.

• Registration Of The Trademark

If there is no opposition to the application or if any opposition was decided in favour of the applicant, the application shall proceed for registration. At this stage, the concerned mark stands registered as a valid trademark for a period of 7 years from the date of filing of the application and the registration certificate is issued by the Trademark Registry. Once registered, the owner of the trademark can renew the trademark from time to time for an unlimited duration simply by paying the renewal fees as mandated in the Fee Schedule, failing which the mark becomes liable to be removed from the Register on the ground on non-renewal. While the initial term of a trademark is for 7 years, each renewal term is for a duration of 10 years.

The official fee once the trademark has been approved for registration is fixed at 280 USD along with any professional fee that may be applicable.

Written and compiled by the Corporate and M&A team at Mahbub & Company