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:
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:
Why should you register your Trademark?
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:
What are the stages of Trademark Filing in Bangladesh?
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.
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:
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.
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.
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