Who can file Trademark Applications?

Any person claiming to be the proprietor of a trademark used or proposed to be used by him

Can a Foreigner or Foreign Legal Entity file Trademark Application in his/their name?

Yes.

Is multi-class application allowed in Bangladesh?

No.

Can we file conventional or priority application in Bangladesh?

Application for a Trademark or a Priority Trademark Application claiming priority from a convention country can be filed in Bangladesh within 6 (Six) months from the priority date. Certified copies of the priority documents need to be filed within 3 months from the date of filing of the convention application in Bangladesh.

What are the required documents for filing a Trademark Application?

  1. Name and address of the owner
  2. Sample of the mark/logo in jpg format
  3. Description of the mark/logo
  4. Date of first use of the mark
  5. List of goods/services against which the protection is sought or desired class

Stages of Trademark Registration?

Step 1- Application Filing and obtaining provisional Trademark Number
Step 2- Examination of the mark

Step 2A- if the mark is objected by the examiner

Objection Reply

Step 2B- if the examiner is not satisfied with the Objection Reply

Objection Hearing

***      A trademark application can be canceled or abandoned at this stage if the examiner is not satisfied after the objection hearing. If satisfied, then comes step 3.

Step 3- Journal Publication
Step 4- Certificate Fee Submission
Step 5- Collection of Certificate

Proximate Time Frame for Trademark Registration?

18-24 months. Time may vary depending on the mark/logo, class and stages explored. Time can also be minimized by special persuasion.

Opposition- Who can file and when to file?

Any person aggrieved.

What is the validity of a Registered Trademark?

Indefinite time, subject to time-to-time renewal. Initial validity is for 7 years. Thereafter, 10 years on each renewal.

Can a Trademark be renewed?

Yes.

What is the consequence of non-registration?

The mark becomes liable for removal from the registry.

Can a removed Trademark be restored?

Yes. If it is removed from the Register on grounds of non-renewal, it can be restored within 1 year from the expiration of the last registration of the trademark.

What is the tenure of validity after renewal?

Each renewal term is for a period of 10 years.

When to file Renewal request?

Application can be filed within 6 months BEFORE THE EXPIRY of the registration or renewal term.

Can a trademark is renewed after expiry of stipulated time?

Yes, with prescribed late fee.

Whether Assignment (Change of Recordal) of Trademarks is permitted?

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.

When a trademark can be Rectified?

Non-use Ground- if a registered trademark has not been used for a continuous period of 5 (five) years from the date of registration, it can be removed on an application made by an interested party.

Failure Ground- 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.

Who can assign a trademark?

The Registered proprietor of a Trade mark has power to assign the mark.

What documents are required for assignment of Trademark?

  1. Duly executed Power of Attorney
  2. Deed of Assignment

Whether the Deed of Assignment requires to be legalized?

If executed outside Bangladesh, should be Notarized and certified by the Embassy of Bangladesh of the assignor/assignee country. The Original Copy of the Assignment Deed needs to be legalized from the foreign ministry of Bangladesh once it arrives in Bangladesh.

Is a registered trademark owner entitled to better protection than that of an unregistered owner?

Yes. However, an unregistered trademark owner may initiate passing off actions.

Can a Well-known mark be registered in Bangladesh?

Yes. However, well-known trademarks must have International, National, and Cross Border reputations. Once registered, a well-known mark will get defensive marks protection-

  1. Against the registration of identical or similar marks.
  2. Against unauthorized access or misuse of the trademark.

Is there any limitation to initiate infringement actions?

Three years from the date on which the cause of action arose.

Trademark Infringement: What Remedies Are Available in Bangladesh?

  1. Civil Remedies
    1. Injunction restraining use of the infringing mark;
    2. Damages or an account of profits;
    3. Order for delivery up of infringing labels and marks for destruction or erasure.
  1. Criminal Actions
    1. Raids on the premises where the counterfeit goods are stored;
    2. Seizure of the goods;
    3. Destruction of counterfeit goods;
    4. Imposition of penalties on the infringer.
  1. Administrative Actions
    1. Removal of a registered trademark from the Trademark Register
    2. Cancellation of trademark registration as a defensive trademark.
    3. Cancellation of pending trademark application which may cause confusion with a registered or previously filed mark.
  1. Customs Actions
    1. Prevention of import-export of counterfeited or false described products
    2. Prevention of import-export of the original product by an unauthorized dealer
    3. Detention and confiscation and disposed of Seized products

Who can file Patent Applications?

A patent application can be made either alone or jointly by the

  • the true and first inventor of the invention
  • the assignee of a person claiming to be the true and first inventor
  • the legal representative of any deceased person who immediately before his/her death was entitled to make such an application.

What are the types of patent applications in Bangladesh?

  1. Ordinary application without priority
  2. Convention application with priority claim.

Can a Foreigner or Foreign Legal Entity file Patent Application in his/their name?

Yes.

Can we file conventional or priority application in Bangladesh?

Yes. Being a member of Paris Convention, Patent applications can be filed claiming 12 months’ conventional priority in Bangladesh from the date of the application in convention country.

What are the required documents for filing a Patent Application?

  1. Name and address of the owners/assignors
  2. Name and address of the inventors
  3. Agreement between the inventors and the assignor (if any)
  4. Abstract of the Invention
  5. Specification of the Application with inventive steps
  6. Declaration of Novelty
  7. Claims
  8. Drawings/Diagrams of inventive steps
  9. Declaration of practical use

Stages of Patent Registration?

Step 1- Filing of Application
Step 2- Publication request/auto publication (within 18 months)
Step 3- If any, Pre-grant opposition (within 3 months of opposition)
Step 4- Examination request (within 36months)
Step 5- Conducting Examination
Step 6- If accepted then publication
Step 7- If any, Post-grant opposition (within 3months)
Step 8- If no opposition, issue Letters’ Patent

Can an applicant challenge the decision of the Registrar?

Yes. Appeal may be filed to the Government against the Order of registrar. If appeal turns unsuccessful, Suit can be filed before the Hon’ble High Court Division.

What is the validity of a Registered Patent?

16 years, subject to renewal.

When to file Renewal request?

Application should be filed every year after the expiry of the 4th year and BEFORE THE EXPIRY of 5th years’ term.

Whether Assignment of Patent is permitted?

Yes. It can be done for the entire tenure or for a specific tenure.

What documents are required for assignment of Trademark?

  1. Duly executed Power of Attorney
  2. Deed of Assignment

Whether the Deed of Assignment requires to be legalized?

If executed outside Bangladesh, should be Notarized and certified by the Embassy of Bangladesh of the assignor/assignee country. The Original Copy of the Assignment Deed needs to be legalized from the foreign ministry of Bangladesh once it arrives in Bangladesh.

Is there any limitation to initiate infringement actions?

Three years from the date on which the cause of action arose.

Patent Infringement: What Remedies are Available in Bangladesh?

  1. Civil Remedies
    1. Injunction;
    2. Damages or an account of profits;

 

  1. Criminal Actions
    1. Raids;
    2. Seizure of the goods/machineries;
    3. Destruction of machineries/structures etc.
    4. Penalties on the infringer.

 

  1. Administrative Actions
    1. Removal from Patent Register.
    2. Cancellation of application/registration.

 

  1. Customs Actions
    1. Prevention of import-export of counterfeited products
    2. Prevention of import-export of original product by unauthorized dealer
    3. Detention and confiscation and disposed of Seized products

What is Industrial Design?

  • three-dimensional features- such as the shape of an article,
  • two-dimensional features- such as patterns, lines or color
  • Packaging
  • Labels

Who can file Industrial Design Registration in Bangladesh?

Any person whether national or foreigner

What are the filing requirements of a Design in Bangladesh?

  1. Name and Address of the applicant
  2. Sample (photo) of the design clearly showing the features of the design by different views and stating names of the views.
  3. Statement of Novelty with endorsement of disclaimers
  4. Classification of Goods
  5. Priority Declaration
  6. Original Power of Attorney

Can a convention application be filed with priority claim?

Yes. Within six (6) months from the date the foreign application. A certified copy of the application  needs to be submitted.

What is the validity period of a Design Registration in Bangladesh?

Total 15 years. Initially registration is given for five (5) years from the date of the application and renewable for two (2) further consecutive periods of five (5) years.

What will be the date of application in priority applications?

The Priority Date.

Stages of Design Registration?

Step 1- Filing of Application
Step 2- Substantive and Formality Examination
If Objection is given- Written Argument/Hearing/Amendment
Step 3- Process of Registration

What can be copyrighted?

  1. Literary (including computer programs) works;
  2. Dramatic; musical; artistic works
  3. Cinematograph films
  4. Sound recordings.

Who can apply for a copyright registration?

The author or publisher of, or the owner of, or other people interested in the copyright.

Who is the Owner of the Copyright?

The owner of copyright work is generally, the person who creates the work, more specifically the author of the work except otherwise he was employed or paid by any employer for the work.

Stages of Copyright Registration?

Step 1- Filing of Application
Step 2- Examination and Notice
If Objection is given- Written Argument/Hearing/Amendment
Step 3- Registration