Trademark Registration in Bangladesh | The complete procedure, how to apply, cost and filling requirement in 2020 | Trademark Fee, Trademark ApplicationTahmidur Rahman, Senior Associate, Counsels Law Partners2 Oct 2019This post will explain in details about Trademark...
Trademark Registration in Bangladesh | The complete procedure, how to apply, cost and filling requirement in 2020 | Trademark Fee, Trademark Application
Tahmidur Rahman, Senior Associate, Counsels Law Partners
2 Oct 2019
This post will explain in details about Trademark Registration in Bangladesh | The complete procedure, how to apply, cost and filling requirement in 2020. | Everything about Trademark registraion and filing in Bangladesh that you need to know and be aware of.
Table of Contents
Find the subsections below, If you want to jump through specific sections instead of reading the whole article.
What is a Trademark?
Usually, a trademark is a name, term, sentence, logo, emblem, style, illustration, or a combination of these elements. There are also a variety of non-conventional trademarks composed of trademarks, such as those based on colour, scent or sound, that do not fit within these traditional categories. In order to prevent the unauthorized use of that trademark, the owner of a registered trademark may initiate legal proceedings for trademark infringement.
Trademark Registration in Bangladesh, however, should not be deemed as absolutely necessary. A common law trademark owner can also file a lawsuit, but an unregistered trademark can only be protected in the geographical area for which it has been used or in the geographical areas to which it may fairly be assumed to extend.
The term trademark is also used informally to refer to any distinguishing attribute, such as the well-known features of celebrities, by which an individual is easily identified. If a trademark is used for services rather than goods, it may also be referred to as a service mark.
A trademark is a distinctive symbol or indicator used by a person, a commercial company or some other legal body to assist customers in the recognition of the origin of their goods or services for which the trademark occurs and to differentiate their goods or services from those of other individuals.
How to Apply for a Trademark in Bangladesh
Trademark application in Bangladesh can be filed in two categories:
Priority or conventional trademark applications in Bangladesh
Multi-class trademark application in Bangladesh
In Bangladesh, a trademark application can be filed in the manner prescribed for a single class only with the Registrar of Trademarks and with an application number. In Bangladesh, multi-class patent applications can not be submitted. Application for a Trademark or Preference Trademark A submission from a convention country requesting preference can also be lodged in Bangladesh within 6 months of the priority date.
How to file an application for a trademark in Bangladesh with simple 8 steps
1. Name and full address of the applicant:
2. Applicant status
3. Mark / Logo / Device prints:
Mark / Logo / Device prints and describes whether it is a word mark or a device mark or a merged mark.
4. Goods / Services specification and class
5. Day of use of the symbol in Bangladesh (whether the symbol is in use or suggested in Bangladesh to be used).
6. POA (No original or notarization or legalization needed, only sufficient SCANNED copy)
7. Fee Prescribed
8. Priority Application
In Bangladesh, there is a provision for priority requests. In that regard, within 6 months of the date of that earlier filing, the claimant for registration of a trade mark seeking to take advantage of the priority of an earlier application lodged in a convention country shall add to his application a written statement stating the date and number of the earlier application.
If the priority document is in some language other than English, the English version of the priority document is verified / notarized.
Stage 1: Filing
Anyone can file claiming priority or ordinary application
Stage 2: Examine
Once the claim has been filed, the Registrar shall evaluate the distinctiveness, identification or resemblance of the trade mark with existing registered trade marks and the general accordance with the provisions of the Statute of the Registrar.
Stage 3: Publication
If the examiner is pleased as above (at the examination stage), the label will be released for opposition purposes in the Trademarks Journal.
Step 4: Registration
Where no opposition is received or resolved the same in favour of the Applicant, the Registrar issue a Certificate of Registration for an initial period of seven (7) years from the date of filing.
Trademark Registration in Bangladesh
Trademark Registration Procedure in Bangladesh is regulated by Trade Marks Act, 2009 and Trade Marks Rules, 1963. However, any individual claiming to be the owner of a trademark needs to apply to register the trademark in Bangladesh.
Trademark searches in Bangladesh
Trademark search in Bangladesh:
may be for both word and device marks. In order to assess the availability of trademarks, the presence of prior identical / similar marks on the register, etc., it is advisable to perform a trademark check before filing a trademark application in order to prevent any objection or opposition with regard to the mark.
While a search is not necessary for the filing of an application, it is advisable, before filing an application, to conduct a preliminary search for the proposed trade mark in order to prevent any objection and opposition to the trade mark at a later date.
Trademark searches in Bangladesh can be performed for word marks, numerals, labels and system marks. Device mark searches can be carried out using the Vienna code.
Trademark searches can be categorized in the following categories:
(a) Search through Word Mark
b) Search through Device mark
Word Mark Search:
Trademark word search version of Bangladesh follows the Nice Classification and trademark applications can be filed for products in Classes 1-34 and services in Classes 35-45. Trademark searches in Bangladesh can be performed for the desired class and related classes.
It is advisable to conduct a thorough search for trade mark clearance in Bangladesh in order to ascertain the availability of the proposed trade mark and also to address any resistance and opposition to the trade mark at a later date.
In addition to looking for trademarks, it is also advisable to search the proposed trademark in Bangladesh for a detailed company search and domain search.
Device Mark Search:
It is advisable to perform a systematic search for a figurative trademark. Device marks shall include individual marks such as stylized letters, numerals, shapes, plants, celestial beings, living creatures, etc. or a mixture of marks containing device marks.
The hunt for a system mark in Bangladesh can be carried out between the marks filed and registered in accordance with the Vienna Code Classification.
Trademark Application Filing categories in Bangladesh
Applications for trademarks in Bangladesh can be filed in two categories:
Ordinary trademark applications filed in Bangladesh are non-priority applications. A trademark application is typically filed on the form TM-1. Applications for multi-class trademarks can not be filed in Bangladesh.
However, the Trademarks Act also lays down provisions concerning the filing of priority applications where the priority of the trade mark can be asserted in the said trade mark filed in the Convention country.
Trademark Applications (Priority Trademark Applications)
A priority trade mark application should be filed in Bangladesh within 6 months of the date on which the application was made in the Convention country. A certified copy of the priority documents must be filed within 3 months of the date of the submission for the Convention in Bangladesh.
The Paris Convention for the Protection of Industrial Property, signed in Paris , France, on 20 March 1883, created the Union for the Protection of Industrial Property. It provides national treatment to the applicant residing in the Member State of the Union, national treatment is a very important concept and is necessary for the achievement of the fundamental objective of the Paris Convention.
The idea is to ensure fair treatment of applications from Member States in the Member State concerned and not to discriminate between nationals of Member States for grant purposes and protection of industrial property.
Priority applications may be lodged in Bangladesh within six months of the date on which the request was made in the countries of the Convention. The trade mark, if licensed under the Act , shall be licensed as from the date on which the application was made in the Convention country and shall be considered to be the date of registration for the purposes of the Act.
Trademark classes in Bangladesh
In Bangladesh, a trade mark application can be filed in 45 classes: Classes 1 to 34 for goods and Classes 35 to 45 for service marks.
The Trademarks Rules of 1963 were published in the exercise of the powers conferred by section 84 of the Trademarks Act of 1940 and the Rules of Procedure came into force on 2 April 2004.
The Trademarks Act, 2009 has been amended and the Trademarks Register Wing, Bangladesh empty Notification S. R. O. No.211—Law/2008 dated 30 June 2008 has been notified by expanding the classification of products and services to 1 to 45. Service mark applications are also now being lodged and prosecuted in additional service grades, i.e. 43 to 45.
Trademark filing process in Bangladesh
An application for registration of a trade mark must be filed with the Department of Patents, Designs and Trademarks (DPDT), Dhaka, in the specified form, with payment of the necessary fees.
Further information on the filing of trademark applications can be found on the Trademark Registry website, Bangladesh, under the following link: http:/www.dpdt.gov.bd/
Requirements for the submission of a trademark application in Bangladesh
Any individual who claims to be the owner of a trade mark can make an application for registration of the trade mark in respect of his goods / services. It should be filed with the trademark office, Dhaka.
After filing a trade mark application, the same shall be reviewed by the Trade Marks Registry, Dhaka, as to its inherent registrability and/or any similarities with existing marks. If an objection is raised, an official investigation report will be released by the Trademarks Registry.
Duration of Trademark registration in Bangladesh
If a trade mark is registered in Bangladesh, it shall be valid for a period of 7 years from the date of registration. The registration of a trade mark could then be extended for a further period of 10 years from the date of expiry of the registration or the last renewal of the registration.
Trademark prosecution in Bangldaesh
As we have explained earlier:
The process for filing a trade mark in Bangladesh is as follows:
Trademark filing in Bangladesh –
Trademark application in Bangladesh can be filed for a single class only. Applications for multi-class trademarks can not be filed in Bangladesh. Application for a trade mark or a priority trade mark Applications requesting priority from a convention country can also be filed in Bangladesh within 6 months of the priority date.
Official Review of a Trademark in Bangladesh / Issue of Office Action – Once an application has been filed, the Registrar shall investigate the distinctiveness, the potential for misleading and contradictory trademarks.
If an objection to registration is raised, the Registrar shall submit an official review report within 6 months to 1 year, depending on the backlog of the registry.
The Registrar can, subject to the provisions of the Ordinance, approve or deny an application. A trade mark application in Bangladesh may be refused / objected by the Registrar on the following grounds:
- The mark is similar / identical to the earlier mark for the same or similar goods / services.
- The trade mark is similar / identical to the earlier trade mark in respect of various goods / services.
- The label is the widely used and accepted name of any specific chemical element or chemical compound.
However, the above categories of trade marks may be registered if the owner of the earlier trade mark has consented to it or if there has been an honest parallel use of the later trade mark.
Trademark which can not be registered in Bangladesh
As we have explained earlier:
(a) consisting of, or consisting of, some scandalous or pornographic matter;
(b) the use of which will, for the time being, be contrary to any law; or
(c) the use of which is likely to be misleading or confusing; or
(d) which contains any matter likely to affect the religious sensitivities of any class of Bangladeshi citizens;
(e) which is identical with, or imitates, or contains as an element, the armorial bearing, flag or other emblem, the name or abbreviation or initials of the name or official sign or symbol adopted by any State or international organization founded by an international convention, charter or other instrument, unless approved by the competent authority of that State or organization;
(f) which would otherwise be dissented from defense in a court of law;
(g) the request is made in bad intentions and in bad faith;
Furthermore, the objections raised by the Registrar with respect to the application are forwarded to the applicant and, within 90 days, the applicant must file an acceptable reply with the supporting documents to the official objections. The Registrar may consider the request on the basis of the reply and the documents submitted or may list the request for a hearing.
An appeal against the decision of the Registrar at or without the hearing can be lodged by the applicant within 1 month from the date of such notification to the Registrar, requiring him to state in writing the grounds and the materials used by the Registrar in arriving at his decision.
When an application for registration of a trade mark is approved, the Registrar shall publish it in the Official Trade Marks Journal and shall make it available on the Registry ‘s website.
Trademark publication in Bangladesh
Publication / Publication of a Trademark in Bangladesh –
After review and approval of the reply by the Registrar, the application is ordered for publication / publication in the Trademarks Journal. An application is published in the Trademarks Journal in order to allow the public to file an objection to the registration of a trade mark.
Opposition to the published trade mark in Bangladesh –
Upon publication of the trade mark in the Trademarks Journal, any person may object to the registration of the said trade mark by filing a notice of opposition within a specified period of 2 months from the date on which the Trademarks Journal is made available to the public.
The time limit for filing a notice of opposition can be extended by a maximum duration of 3 months upon filing a stated request for an extension of time of three months for a period of one month each along with the prescribed fee.
Renewal of trademark in Bangladesh
The application shall continue to be registered if there is no opposition or if the opposition has been submitted and it has been determined in favor of the applicant. The mark shall then be registered for a period of 7 years from the date of filing of the application and the certificate of registration shall be issued.
The trade mark may be extended from time to time for an indefinite period by payment of renewal fees, failing which the trade mark may be withdrawn from the Register on account of non-renewal. Each renewal period shall be for a period of 10 years.
Filing and opposition of a trademark in Bangladesh
Upon publication of a trade mark in the Trademarks Journal, any person may file an opposition against registration of the said trade mark in Bangladesh by filing a notice of opposition within a specified period of 2 months from the date on which the Trademarks Journal is made available to the public. The time limit for filing a notice of opposition can be extended by a maximum duration of 3 months upon filing a stated request for an extension of time of three months, each with the prescribed fee.
The trademark application can be challenged in Bangladesh on the grounds set out in Sections 8 , 9 and 10 of the Trademarks Act 2009.
Where an opposition is lodged against a trade mark in Bangladesh, a copy of the notice of opposition so lodged shall be served on the applicant by the Trade Marks Registry and the applicant shall be allowed to file a counter-statement within 2 months of receipt of the notice sent by the Registry, failing which the application shall be regarded as abandoned.
Subsequently, the Registrar shall request written documentation from all parties. If the dispute is not settled by the parties, the hearing shall be determined on the matter.
The Registrar shall decide the case in the opposition proceedings. In the absence of an opposition, a trade mark shall be registered and a certificate of registration shall be issued.
Restoration and Renewal of Trademark in Bangladesh
Renewal of trademark in Bangladesh
A trade mark may be renewed in Bangladesh from time to time for an indefinite duration upon payment of renewal fees, failing which the trade mark may be withdrawn from the Register on account of non-renewal. Each renewal period shall be for a period of 10 years.
The process for filing a renewal of a trademark in Bangladesh is as follows: a request for renewal of a trademark in Bangladesh can be filed within 6 months prior to the date of registration / renewal if it is accompanied by the necessary renewal fees in the specified form.
Requests for renewal of a trade mark in Bangladesh can be filed within 6 months after the date of registration / renewal, provided they are accompanied by the required renewal fees on the prescribed form.
Restoring trademarks in Bangladesh:
If, on grounds of non-renewal, a trade mark has been withdrawn from the Register, the same may be reinstated by filing an application in the specified form for the restoration of the trade mark within 1 year from the expiration of the last registration of the trade mark.
Types of Trademark Application
Applications for trademarks in Bangladesh can be filed in two categories:
(1) Ordinary applications
(2)Convention Application (claiming priority from the country of the Convention)
RECAPPING AT A GLANCE
Ordinary Trademark Application
Ordinary trademark applications filed in Bangladesh are non-priority applications. A trademark application is typically filed on the form TM-1. Applications for multi-class trademarks can not be filed in Bangladesh. However, the Trademarks Act also lays down provisions concerning the filing of priority applications where the priority of the trade mark can be asserted in the said trade mark filed in the Convention country. – Trademark Registration in Bangladesh
Priority Trademark Application
A priority trade mark application / convention application for a trade mark should be filed in Bangladesh within 6 months of the date on which the application was made in the Convention country. A certified copy of the priority documents must be filed within 3 months of the date of the submission for the Convention in Bangladesh.- Trademark Registration in Bangladesh
The Paris Convention for the Protection of Industrial Property, signed in Paris , France, on 20 March 1883, created the Union for the Protection of Industrial Property. It gives national care to the applicant residing in the member country of the union, in other words. National care is a very important concept and is necessary for effectively achieving the fundamental goal of the Paris Convention. The idea is to ensure fair treatment of applications from Member States in the Member State concerned and not to discriminate between nationals of Member States for grant purposes and protection of industrial property. Priority applications may be lodged in Bangladesh within six months of the date on which the request was made in the countries of the Convention. -Trademark Registration in Bangladesh
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STEP BY STEP Process of a Trademark Registration in Bangladesh through 5 simple steps.
FILING AN APPLICATION
An application has to be submit along with few information and documents which are listed below:
- Particulars of the mark/logo/device prints or representations
- Name of the applicant, address and nationality
- If the applicant is a firm then signatory’s name and position
- Status of the application i.e. manufacturers/merchandisers/ service providers
- Specification of goods/ service/class
- Trademark date of user (whether the mark is in use or proposed to be used in Bangladesh)
- Power of Attorney authorizing to the lawyer if it requires
Government fee for trademark application
The government fee for filing the application for registration is 3500 (three thousand and five hundred taka) or equivalent to USD. 42 (Forty Two). You can get more information on government fee for registration here.
Jurisdiction to file a trademark in Bangladesh
The application needs to file at the Head office or any branch of the Trademark Registry having territorial jurisdiction over the principal place of business. Furthermore, If the person does not carry on business in Bangladesh, the application needs to file in the office having territorial jurisdiction over the place mentioned in the address for service in Bangladesh.
Substantive and Formalities Check of a trademark in Bangladesh
Acknowledgement of the Application
Upon receiving the application along with government fee, the Registrar will issue an automatic generated receipt. The receipt includes information related to trademark filing, e.g. Application Number, application date, trademark, etc.
PROSECUTION OF OFFICE ACTION FOR A TRADEMARK IN BANGLADESH
After the application has been filed, the Registrar shall review the distinctiveness, the risk of fraud and the conflicting trademarks. If an objection to registration is raised, the Registrar shall submit an official review report within 6 months to 1 year, depending on the backlog of the registry. The Registrar can, subject to the provisions of the Ordinance, approve or deny an application.
Examination by the registrar
After an application has been filed, the Registrar shall review the trademark for its distinctiveness, identicalness or resemblance to existing registered trademarks and general compliance with the provisions of the Statute. If the Registrar is pleased, he shall issue a letter of approval for the trade mark to be published in the Trademarks Journal for opposition purposes (smooth case). Otherwise, the Registry raised the objection / refusal notice (OFFICE ACTION) and demanded a written reply on the objection or refusal notice (non-smooth case).
Journal Publication of a Trademark in Bangladesh
Publication Cost and Timeline
The Official fee of the publication cost would be around VAT: BDT 1150 or USD 20 + Law Firms fee and the timeline would be 8 to 12 months from the date of the publication fee deposited.
Thereafter, if anyone has any dispute as to the proposed trademark, he can raise it within 2 (two) months from the date of publication. The reason behind the journal publication is to invite the public for filing opposition against the registration of a mark.
Passing the registrar
If there is no office action or notice after review, if the Examiner is satisfied as mentioned above (in stage 2), the Registrar shall approve the trade mark for advertising in the Trademarks Journal for opposition purposes.
Opposition Proceedings of a Trademark in Bangladesh
Government Fee for opposition
If there is no office action or note After review, if the Examiner is satisfied as mentioned above (in stage 2), the Registrar shall approve the trade mark for advertising in the Trademarks Journal for opposition purposes.
The Registrar having received the notice of Opposition, sends a copy of the Notice of Opposition to the Applicant. Thereafter, the Applicant will get an opportunity file a Counter-Statement with in 2 (two) months of receiving the notice. The Counter-Statement should contain the grounds in supporting the claim. The government fee for filing counter-statement is 1500 (one thousand and five hundred taka).
Counter Statement and Appeal
Upon receipt of the Counter-Statement, the Registrar shall forward a copy to the Opponent. The Registrar shall then rule on the contested matter at the hearing of both parties. However, an appeal can be brought before the High Court against the decision of the Registrar. However, the opposition proceedings should be filed within 120 (one hundred and twenty) working days of receipt of the order.
Final Registration Proceedings of a Trademark in Bangladesh
Certificate of Registration
Above, if there is no conflict against the publication of a trade mark, the Registrar shall, after the expiry of the term of 2 ( two) months, notify the Registrar of the payment of the charge. After collecting the fee, the Registrar shall issue a Certificate of Registration for the trade mark. The licensed trade mark shall be valid for a term of 7 years from the date of registration.
Renewal of Trademark registration
A Trademark can be renewed in Bangladesh from time to time for an indefinite duration upon payment of renewal fees. Failure to renew could, however, result in the removal from the Registry of registered trademarks. The renewal period could be for a period of 10 years. Please bear in mind that an application for the renewal of a trade mark should be made no more than six (6) months before the expiry of the last renewal.
Registration Cost and timeline
The registration timeline would be 6 to 8 months from the date of publication if there is no opposition and the cost would be with an offical fee with VAT+Disbrusment: BDT 17250 or USD 220 +Law Firm’s fee.
OUR Managing Director Barrister Hafiz Khan has the experience over 15 years of working with Trademark in Bangladesh
Counsels Law Partners offers services on Trademark Registration and other related matters. However, If you need any legal help or clarification about Trademark Registration Process in Bangladesh, please reach us at:
Phone:+8801727983838 (WhatsApp). Address: House 39, Road 126 (3rd Floor) Islam Mansion, Gulshan-1, Dhaka.