In Bangladesh trademarks and service marks are registered under The Trademarks Act- 2009. Registration provides 7 years protection;it can be renewed every after 10 year on payment of renewal fees. A trademark can protect the name of an enterprise,a product and a service as well as slogans and the like. A trademark application provides the advantage that a register defines who is proprietor of the trademark and therefore entitled to use the trademark.
The information about trademarks is divided into the following sections:
Regulatory Regime: The Registration of Trade Marks and their protection are governed by the following:
- Trade Marks Act,2009
- Trade Marks Rules,1963
Filing Application: Anyone claiming to be the proprietor of a Trademark may apply to the Registry of the Trademark Department for the Registration of the said Mark. Bangladeshi Nationals and Foreigners have equal rights in this regard but a Foreign Applicant must be represented by a local Agent.
Classification: Classification of goods and services are identical with the International Classification through 01 to 45,according to the International Nice Classification of goods and Services.
Requirements for filing an Application:
- Name of the Mark /Logo/Device prints or representation.
- Name of the Applicant.
- Address and nationality of the Applicant.
- Status of the applicant i.e. Merchandisers / Manufacturers /Service Providers
- Specification of Goods/Services and Class i.e. in which class the mark will be applied.
- User date of the mark (whether the mark is in use or proposed to be used in Bangladesh).
- General/ Specific Power of Attorney. Power of Attorney (POA) may be filed subsequently.
Examination of the Application:
- The mark is thoroughly examined as regards:-
- Similarity or being identical or nearly resemble with existing trademarks on the Register of Trademarks;
- Hurt religious susceptibilities of any class of Bangladesh,and
- Compliance with the requirements of the Trade Marks Act.
Procedure for registration of a trademark in Bangladesh:
- Conduct Availability Search (optional).
- Filing the Application: An application is made in the prescribed form to the Registrar of Trade Marks.
- Acknowledgement of Application: The Registrar,on receipt of the application,issues Official Filing Receipt. The document contains all relevant filing details on the trademark e.g. Application Number,date of application,the trademark etc.).
- Examination of the Application: The Registrar examines the trademark for distinctiveness,identical or similarity with existing registered trademarks and general compliance with the requirements of the Law. If the Registrar is satisfied,he issues a Letter of Acceptance for the mark to be advertised in the Trade Marks Journal for opposition purposes. Otherwise,the Registry raised objection seeking written reply regarding objections.
- Refusal of Application:Where an application is refused,the Applicant through its local agent must submit reply to the show cause notice and may seek a hearing in the matter within three (3) months otherwise,the application will be deemed abandoned.
- Acceptance of Application:If the Examiner is satisfied as to (4.1) above,the Registrar accepts the mark for advertisement in the Trade Marks Journal.
- Opposition Proceedings: When a trademark is advertised,any person may within two (2) months from the date of the publication give notice of Opposition to the Registrar on Form TM-5. The Registrar shall send a copy of the Notice of Opposition to the Applicant and the Applicant shall within Two month of receipt of the Notice of Opposition,file a Counter-Statement of the grounds for which it relies for its application to be registered. Failure to file the Counter-Statement within the prescribed period will result in the application being deemed abandoned. The applicant may seek extension of time for filing Counter-Statement along with Govt. fees. Where a Counter-Statement is filed,the Registrar shall furnish a copy thereof to the Opponent. The parties are required to file evidence by way of Affidavit and the Registrar shall,after hearing the parties,decide on whether the application should be registered or not. The Registrar’s decision shall be subject to appeal to the High Court.
- Registration: Where no opposition is received at the expiration of the opposition period or the opposition is determined and resolved in favour of the Applicant,the Registrar is obliged to issue a Certificate of Registration for the trademark on payment of the prescribed fee. The registration date of the trademark will be the date of filing.
- Term of Registration:A registered trademark is valid for an initial period of seven (07) years from the date of filing and renewable thereafter for successive periods of Ten (10) years.
- Foreign Priority/Convention Applications:An Applicant can claim priority of a foreign trademark within 6 months from the date of application to the member country of Paris Convention or WTO in Bangladesh.
- Service Marks:Service Marks can be registered in Bangladesh. Applicants can now apply for registration of service marks in Bangladesh in International Classes through 35 to 45. The International Nice Classification of Services is applicable for this purpose.