Trademark Act, 2009 (Bangladesh)
Trademark Rules, 2015 (Bangladesh)
What is a Trademark?
As per Section 2 (23) “mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, symbol, numeral, figurative, elements, combination of colours or any combination thereof;
As per section 2 (8) “trademark” means⎯ a registered trademark or a mark used in relation to goods or services for the purpose of indicating a connection in the course of trade between the goods/services and the person having the right as proprietor to use the mark;
What is a Distinctive Mark?
“Distinctive Mark,” means a trademark which distinguishes the goods or services, as the case may be, of the proprietor from the goods or services, of the same kinds.
Trademark Search in Bangladesh (Procedure)
Any individual can conduct a Trademark Search in Bangladesh. The person must apply to the respective class (i.e. class 25 for shoes and clothing) with the desired mark/trademark of the good(s) or service(s) after payment of necessary govt. fees. Then the concern Assistant Director of Trademarks will issue a search report based on the application. Usually it takes 3-7 working days to obtain an official search report.
Who can file a trademark application in Bangladesh?
Any person, including the foreign entities, who claims to be the proprietor of a trademark, can file a Trademark application for the registration in Bangladesh.
Information or Documents required for Trademark Application (Registration) in Bangladesh
- Name and Address of the applicant
- Logo/mark/name of the Trademark
- Date of First use
- A brief description of the Trademark to be filed in Bangladesh
- Desired Class on which the Trademark is to be filed for registration in Bangladesh
- List of the Goods or Services against which the trademark registration is sought in Bangladesh
Trademark Search in Bangladesh
|Work||Proximate Time of MentorIP’s Service||Comment|
|Optional for Trademark Registration|
Trademark Searches are done to check the availability and possibility of obtaining trademark registration in Bangladesh. This is optional. Not a pre-requisite to file a Trademark Application in Bangladesh. It may take 3-7 working days to obtain the report.
Trademark Application in Bangladesh
Trademark Registration in Bangladesh
Any person can file a Trademark Application in Bangladesh for obtaining Trademark Registration in Bangladesh. Bangladesh provides territorial protection to Trademarks. As per section 24 of the Trademarks Act, 2009- No protection can be sought, if there is no registration. A Foreign Person or Entity can file a trademark in his/its own name in Bangladesh.
Procedure and Time of Trademark Registration in Bangladesh
Smooth Cases: (Usually Three Steps)
|Stages||Work||Proximate Time of MentorIP’s Service||Comment|
|Step 1||Trademark Application||1 W/D|| |
Proximate time for Filing to registration is 8-12 months.
|Step 2||Journal Publication Fee Submission/Trademark Publication||1 W/D|
|Step 3||Trademark Registration Fee Submission||1 W/D|
However, a trademark application may face the following steps where it is objected from the office or opposed by any 3rd party.
|Step 1A||Objection Reply||3 W/D||Optional|
Examination notice will be issued after 3-6 months of filing trademark application in Bangladesh. If the application is objected, then the next step is objection reply. From Step 1 to examine the application it may take 2-6 months.
|Step 1B||Objection Hearing||Usually 1 day of hearing suffice||Optional|
If the Examination is objected and if hearing is required.
|Step 2A||Trademark Opposition||Please check out the procedure of our Trademark opposition part.||Optional |
After journal publication, registration of your trademark can be opposed by any 3rd party. A Trademark opposition can add extra 10-14 months or more with the registration process.
Priority Trademark application in Bangladesh
Convention Trademark Applications in Bangladesh
If you have queries on Multi-class trademark application in Bangladesh or Priority Trademark Application in Bangladesh or Conventional Trademark Application in Bangladesh, please contact us for further details.
Benefits of Registered Trademark in Bangladesh?
What are the Legal Rights and Protections Permitted to Registered Trademarks?
No action for infringement of unregistered trademark. Section 24 (1) implies that no person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trademark. However, Passing-off actions are granted under section 24(2) of the Trademarks Act, 2009.
Relief for infringement of registered trademark may include injunctions, damages or accounts of profits, together with delivery of the infringing material for destruction or erasure etc.
Trademark Journal Publication in Bangladesh
A trademark must be published on the Trademark Journal before registration.
Amendment in Trademark Application in Bangladesh
A trademark application can be amended at any time i.e. before or after registration. However, the Registrar may cause the application to be advertised again or, notify in the prescribed manner the correction or amendment made in the application.
Trademark Renewal in Bangladesh
Once Trademark Registration is obtained, validity for the first time registration is 7 years. Thereafter, renewal will be required before the end of every 10 years and as such can be renewed from time to time for unlimited tenure subject to the payment of due registration fee as fixed by the Government.
How to renew a trademark in Bangladesh?
Any request for renewal of trademark in Bangladesh must be filed within 6 months before the date of expiry of the Registration or Renewal.
Documents required for Renewal of Trademarks in Bangladesh: Please contact us for further details.
Trademark Late/Delayed Renewal in Bangladesh
After the expiry of the validity tenure, request for renewal can be filed along with late fee.
When to submit Trademark Renewal requests in Bangladesh?
Usually 6 months before expiry of the validity period.
Trademark Assignment in Bangladesh
Recordal Change of Trademark in Bangladesh
Transmission of Trademark in Bangladesh
Trademark Licensing in Bangladesh
Only a registered trademark proprietor can authorize any 3rd party to use its trademark, goodwill in respect of all or some of the goods or services for which he has obtained trademark registration in Bangladesh. Recordal Change can also be for any other changes in the Trademarks.
Required Documents for Trademark Assignment or Recordal Change in Bangladesh: Please contact for further details.
Well Known Trademark Registration in Bangladesh (Time & Procedure)
A well known trademark must prove that its goodwill and reputation is across the nation and across categories of goods and services. A well known mark can be registered as Defensive mark in Bangladesh in respect of identical goods. Once registered, the registered proprietor can take legal action against unauthorized access or misuse of a well-known trademark in Bangladesh.
Trademark Cancellation in Bangladesh
Trademark Removal in Bangladesh
A trademark can be removed on several grounds. Application of such removal is to be made to the High Court Division or the Registrar of Trademarks.
How to make correction of the Trademark Register in Bangladesh
On application made in the prescribed manner by the registered proprietor. However, a registered user of trademark can only apply to the Registrar to correct any error, or enter any change, in the names, address or description of the registered user.
Trademark Rectification in Bangladesh
Rectification of Trademark in Bangladesh
How to rectify a trademark in Bangladesh
The High Court Division and the Registrar of Trademark can cancel or vary registration or to rectify the Register on application by any person aggrieved on the ground of any contravention of, or failure to observe a condition stipulated in obtaining Registration.
Trademark Objection Hearing in Bangladesh
During the examination of the Trademark application Objection Notice may be raised against the application. In response, the applicant may submit a request for hearing.
Trademark Abandoned in Bangladesh
A registered trademark or an application pending for trademark registration can be declared abandoned by the Registrar for lack of renewal or non-compliance of the office order from time to time. An abandoned trademark is a dead trademark which has been expunged from the Trademark Register. However, on limited occasions, an abandoned Trademark can be restored in the Trademark Register.
Trademark Restoration in Bangladesh
Restoration of Trademarks in Bangladesh can be done by filling an application to the Registrar of Trademarks within stipulated period.
Trademark Opposition in Bangladesh
How to file Trademark Opposition in Bangladesh?
After Journal Publication, any person can oppose, within stipulated time, the registration of a trademark to the trademark Registrar.
Steps for opposition
- Filing Notice of Opposition
- Notice of opposition is served to the Applicant
- Filing Counter statement by the applicant
- Request for Evidence of support in Writing
- Submission of affidavit in support
- Submission of affidavit in Support
- Affidavit in Reply
- Notice of Hearing
- Hearing and Verdict
Appeal against the Order or Decision of the Registrar in Opposition
The decision of the Registrar in Opposition case can be challenged by filing an Appeal before the High Court. Limitation Period of filing such appeal is the same as usual Civil Appeals before the Hon’ble High Court Division.
What are the Requisites for registration of a Trademark in Bangladesh?
A Trademark must contain or consist of at least one of the following essential particulars⎯
- 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, as the case may by, 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.
Why a Trademark application is refused in Bangladesh?
Grounds of Trademark Objection in Bangladesh!
The Registrar may object or refuse a trademark application in Bangladesh on the following grounds:
- If the trademark comprises or consists of any scandalous or obscene matter; or
- The use of the mark would be contrary to any law for the time being in force; or
- The use of the mark would be likely to deceive or cause confusion; or
- The mark contains any matter likely to hurt the religious susceptibilities of any class of the citizens of Bangladesh;
- If the mark 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
- If the mark would otherwise be disentitled to protection in a court;
- If the application is made in bad intention and faith.
In addition, registration of Trademark in Bangladesh can be denied if the trademark is identical or deceptively similar to any registered or pending or well-known trademark.
Trademark Objection Reply in Bangladesh
How to overcome trademark objection in Bangladesh?
By objection Reply and/or Objection Hearing
What constitutes Trademark Infringement in Bangladesh?
Any type of unauthorized use of a registered trademark is a trademark infringement. In addition, use of deceptive or similar mark to the registered trademark can constitute Trademark Infringement.
What is the Limitation Period for filing Trademark infringement Suit in Bangladesh?
Every prosecution for an offence under this act shall be commenced within three years from the date of commission of the offence or within 2 years of discovery of the offence, whichever is earlier.
How to Prevent Trademark Infringement in Bangladesh?
What to do to stop Trademark Infringement in Bangladesh?
What remedies are available against Trademark infringement in Bangladesh?
Trademark Infringement: Remedies are Available in Bangladesh
- Civil Remedies
- Criminal Actions
- Administrative Actions
- Customs Actions
Civil (Injunction, Damages or an account of profits, destruction or erasure) and Criminal (Raids, Seizure, Destruction, Penalties) Remedies can be sought by filing Litigation before the Courts. Whereas, administrative (Removal, Cancellation) remedies are mostly in the hands of the trademark Registrar, with some exceptions to the power of the High Court in Bangladesh. On the other hand, Customs actions should be sought before the Customs Authority under the National Board of Revenue.
Raid in Bangladesh for Trademark Infringement
Raid is a very effective method of minimizing the Trademark Infringement. Subject to valid registration and regulatory documents, with the help of the law enforcing agencies, raid can be conducted in Bangladesh against Trademark Infringement.
Passing off Trademarks in Bangladesh
How to stop Passing-off action in Bangladesh?
Protection of Unregistered Trademarks
In Bangladesh, only the registered trademark proprietor is entitled to take actions against Infringement. However, registration is not so relevant for taking actions against passing off. When someone deliberately or intentionally describes or gives impression to his goods/services as the goods/services of any other person that constitutes passing off.
Passing off is also a very common and popular mode of Trademark Infringement in Bangladesh. A suit for infringement can be files against passing off action.
Trademark Review Petition in Bangladesh
The Registrar of Trademarks can review its own decision upon application made by the aggrieved party.
Trademark Appeal in Bangladesh
Subject to some limitations, against every Decision or Order of the Registrar of Trademarks, appeal can be filed before the High Court Division. The provisions of the Code of Civil Procedure shall, subject to the provisions of this Act and of the rules made there under, apply to appeals before the High Court Division.
What are the defenses against Trademark Infringement?
In applicable cases a person take shelter under the following defenses:
- The doctrine of estoppel and laches.
- Distinctiveness of his mark
- Area and mode of use
- Nature and quality of his goods/services
- Targeted consumers/customers
- Prior use of the mark etc.