Trademark registration in Bangladesh is carried out by the Department of Patents, Designs and Trademarks (DPDT). If someone believes they own a trademark that is currently being used or will be used in Bangladesh, they can submit a written application to register the trademark according to the specified procedure. To register a trademark, the applicant must submit an application to the Trademark Registry Wing of the DPDT.
Service Marks can also be registered in Bangladesh. Applicants have the option to seek registration of service marks in Bangladesh. The International Nice Classification of Services is relevant for this purpose.
APPLICATION OF TRADEMARK
An application for the registration of a trademark shall include the following-
- 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.
- User date of the mark (whether the mark is in use or proposed to be used in Bangladesh).
- General/specific power of attorney may be required.
Applicable fees is required to be paid.
ACCEPTANCE OR REJECTION OF TRADEMARK BY THE REGISTRAR
Once the application has been submitted, the Registrar has the authority to either approve, deny, or request amendments to the application. An application for registration of a trade mark can be accepted in two ways: either without any conditions or limitations, or with certain conditions or limitations.
Upon receiving the application, the Registrar promptly issues an Official Filing Receipt. The document includes all the necessary filing information for the trademark, such as the application number, date of application, and the trademark itself.
If the Registrar rejects any application, they should issue a show cause letter to the applicant. The applicant is required to respond to the show cause notice and has the option to request a hearing within three (3) months. Failure to do so will result in the application being considered abandoned.
JOURNAL PUBLICATION
Once an application is accepted by the Registrar, they will send a Journal Notification to the applicant, informing them about the advertisement of the mark. Following that, the applicant must submit the necessary journal fees through a pay order, treasury chalan, or bank draft.
DPDT will send the mark to Bangladesh Government Press (BG Press) for publication, following the necessary procedures.
Challenging the Mark
Once BG Press publishes the mark, individuals have a two-month window from the date of publication to provide notice of Opposition to the Registrar using the designated form.
The Registrar will provide the Applicant with a copy of the Notice of Opposition. The Applicant must then submit a Counter-Statement within two months of receiving the Notice, outlining the grounds on which it relies for its application to be registered. If the Counter-Statement is not filed within the specified time frame, the application will be considered abandoned. If the applicant needs more time to file the Counter-Statement, they can request an extension and pay the necessary government fees.
Once a Counter-Statement is submitted, the Registrar will provide a copy of it to the Opponent. The parties must submit evidence in the form of an Affidavit, and the Registrar will make a decision on whether to register the application after hearing both sides. An appeal to the High Court can be made against the Registrar’s decision.
Filing for the mark’s registration
Once any opposition is resolved, DPDT will notify the applicant to proceed with payment of the certification fees. The applicant must provide DPDT with the money receipt for the certification fees.
Upon the successful registration of a trade mark, the Registrar will provide the applicant with a certificate in the specified format, bearing the official seal of the Trade Marks Registry.
Term and Renewal
A registered trademark is initially valid for a period of seven (7) years from the date of filing. After that, it can be renewed for successive periods of ten (10) years.
Renewal fees should be paid before the expiration date, but no earlier than six months prior to the expiration. Renewals can be made after the expiry date, typically within four months, by paying the necessary late fees. Extensions are readily granted by the Registrar upon payment of additional fees.
Transfer of Trademark Ownership
The registered owner of a trademark has the authority to transfer the registered trademark, either with or without the business’s reputation, for all or some of the goods it covers.
When someone is assigned or inherits a registered trademark, they must apply to the Registrar to officially register their ownership. The Registrar will review the application and verify the person’s title before registering them as the new proprietor of the trademark.
Trademark Licensing
Recording licenses with the appropriate authority is crucial for their effectiveness. To obtain a record, it is necessary to submit an application to the Registrar.
Seeking a solution for infringement
If a proprietor of a registered trademark believes their rights have been infringed, they have the option to pursue either civil or criminal proceedings to seek a remedy. Legal action concerning trademark infringement or the establishment of trademark rights must be initiated in the court of the district judge with jurisdiction over the location where the infringement took place.
A criminal proceeding must be initiated in the Court of Metropolitan Magistrate or any other 1st class Judicial Magistrate. Remedies in a lawsuit for infringement can include seeking an injunction, claiming damages, requesting an account of profits, demanding the destruction or erasure of a falsified trademark, and seeking the delivery of goods marked with a false trademark.
