Trademarks are names, domain names, words, phrases, logos, symbols, colors, designs, images, slogans, or combinations of them. It represents an enterprise’s name, goodwill, or reputation via a symbol, sign, or other means. Unregistered trademarks are denoted by TM or SM, whereas registered ones are marked by the circular R. Trademark registration processes are below.
Applying for Registration
The Department of Patents, Designs, and Trademarks’ ‘Trademarks Registry Wing’ accepts applications for registration. Head office or branch offices may accept registration applications. During application, remember which are trademarkable and which are not. Sections 8, 9, 10 list non-registrable matters.
A separate application is needed for each kind of products or services that may be trademarked. The Act defined “Distinctive Mark” as “a trademark which distinguishes the proprietor’s goods or services, as the case may be, from the goods or services, of the same kind in another enterprise’s trade or business”—the main need for registration.
The Registrar accepts or rejects
The Registrar may approve an application unconditionally or conditionally (subject to additions, alterations, and limitations) or decline it with reasons. If the Registrar detects a mistake or conditional conditions, he might revoke approval. The applicant gets a hearing for withdrawal.
Advertisement
After approval (or occasionally earlier), the Registrar announces the application in “Advertisement”. Within two months of such advertising, the applicant may get “opposition claim” notification and must submit “counter-statement” within two months. The case must be resolved in 120 days. Registrar will contact both parties and may grant registration unconditionally or conditionally after hearing their claims.
Without guarantee for proceeding expenses, an applicant or opposer outside Bangladesh may drop their application or objection. The Registrar may fix application and opposition claim or counter-statement inaccuracies.
Last Decision
After unconditional acceptance, unopposed application, or opposed and determined application, the Registrar registers the trademark in the relevant Register, giving it effect from the application date. Trademarks Registry certificates prove registration, and the Registrar may correct “clerical errors or obvious mistakes” after issuance.
Registration term
The original registration lasts seven years, but it may be renewed for 10 years after meeting fees and other requirements. If these standards are not met, the registrar may withdraw the trademark. Application for restoration is allowed within one year following removal.
The common law tort of “passing off” protects unregistered trademarks. Our Act protects this right via 24(2) and prohibits unregistered trademark proceedings. The owner has exclusivity and the ability to transfer/assign the item or service after registration.
Unregistered trademarks need goodwill vesting for transfer or assignment. Thus, trademark registration is recommended to conveniently enforce claims over products and services and facilitate transfer or transmission.
Trademarks play a crucial role in protecting intellectual property, and registering one involves a series of well-defined steps. Below is a simplified guide to the process of trademark registration in Bangladesh:
First, search for trademark registration
Before registering, check whether the mark is already registered. Although optional, this step prevents conflicts. Submit FORM TM-4 and fees to search:
- Government Fee: Tk 2000
- VAT: 15%
- Various Cost: Tk 500
- This search usually takes 2–3 days.
Second: Power of Attorney
For foreigners or representatives, a Power of Attorney must be provided to a lawyer or representative. Send FORM TM-10 with these fees:
- Government Fee: Tk 1000
- VAT: 15%
Step 3: Applying for trademarks online
a) Documents/Info needed:
You require mark details, applicant information, products or services specifications, and a photocopy of the application to submit the application. The Trademark Registry for the major business location must receive the application.
b) Filing jurisdiction:
The Trademark Registry office accepts online applications and charges:
- Tk 5000 government fee
- VAT: 15%
Step 4: Application Acceptance
An automated receipt with filing details will be provided to you after submission.
Step 5: Application Review
The Registrar checks trademark distinctiveness. If approved, a Letter of Acceptance and Trade Marks Journal publication follow. The procedure takes 3-6 months.
Step 6: Journal publication
The Trade Marks Journal publishes the proposed trademark and invites public objection within two months. The application is abandoned if the journal fee is not paid within one month.
Form TM-9 for publication:
- Government Fee: Tk 3000
- VAT: 15%
Step 7: Opposition (if required)
Anyone may file FORM TM-5 Opposition within two months following publication. Opposition includes counterstatements and appeals.
Process of Opposition:
- Tk 5000 government fee
- VAT: 15%
Contrary Statement and Appeal:
- Government Fee: Tk 4000
- VAT: 15%
Step 8: Register
After opposition, the Registrar tells the applicant to pay fees if there’s no disagreement. A Certificate of Registration is given after payment, valid for 7 years after filing.
Fill out TM-11 to register:
- Government Fee: Tk20,000
- VAT: 15%
Step 9: Trademark Renewal
Trademarks may be renewed indefinitely for fees. Failure to renew may result in Registrar removal.
Form TM-12 for renewal:
- Government Fee: Tk20,000
- VAT: 15%
- Late renewal within four months of expiration requires FORM TM-17 and extra fees:
- Renew: Tk 20,000
- Late fee: Tk 5,000
- VAT: 15%