Trademark Registration in
Trademark Registration in Bangladesh is performed through the Department of Patents, Designs and Trademarks (DPDT). Any person claiming to be the proprietor of a trademark already in use or proposed to be used in Bangladesh may apply in writing for registration of a Trademark in the prescribed manner. An applicant has to file application for the registration of a trademark to the Trademark Registry Wing of the DPDT. Service Marks can also be registered in Bangladesh. Applicants can apply for registration of service marks in Bangladesh. The International Nice Classification of Services is applicable for this purpose.
The applicant may conduct a search for similar trademarks with the DPDT. This is not mandatory for the registration of trademarks.
Application of Trademark Registration
- 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.
ACCEPTANCE OR REJECTION OF
TRADEMARK BY THE REGISTRAR
After filing the application, the Registrar may either accept or reject or order to correct or modify the application. An application for registration of a trade mark may be accepted either absolutely or subject to conditions or limitations. 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.). If the Registrar reject any application, s/he should issue a show cause letter to the applicant. The applicant 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.
After an application is accepted by the Registrar, s/he shall provide a Journal Notification to the applicant for the advertisement of the mark. Afterwards the applicant is required to deposit journal fees though pay order/treasury challah/bank draft. Then DPDT will send the mark to Bangladesh Government Press (BG Press) for publication.
OPPOSITION OF THE MARK
After BG Press publishes the mark, any person may within two (2) months from the date of the publication give notice of Opposition to the Registrar using prescribed form.
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 OF THE MARK
If there is no opposition, DPDT will inform the applicant to pay certification fees. The applicant is required to submit the money receipt of the certification fees to DPDT.
On the registration of a trade mark the Registrar shall issue to the applicant a certificate in the prescribed form of the registration thereof sealed with the seal of the Trade Marks Registry.
TERM AND RENEWAL
A registered trademark is valid for an initial period of seven (7) years from the date of filing and renewable thereafter for successive periods of Ten (10) years.
Renewal fees must be paid before the expiry date but not more than six months prior the expiry. Late renewals available, normally up to four months after expiry date, with payment of late fees. Extensions at the direction of Registrar are liberally granted with payment of additional fees.
ASSIGNMENT OF TRADEMARK
The Registered proprietor of a Trade mark has power to assign the registered trademark with or without goodwill of the business in respect of all or some of the goods for which it is registered. Where a person becomes entitled by assignment or transmission to a registered trademark, he shall make application to the Registrar (in the prescribed manner) to register his title and the Registrar shall, on receipt of the application and on proof of title to his satisfaction, register the Assignee as the proprietor of the trademark. LICENSING OF TRADEMARK
Licenses must be recorded with the authority to be effective. Application for record must be made to the Registrar.
REMEDY FOR INFRINGEMENT
Where the rights of a proprietor of a registered trademark has infringed, s/he can initiate civil proceeding or criminal proceeding for remedy. Any suit regarding the infringement of trademark, or to establish the right or any ratified right respecting trademark shall be instituted in the Court of District Judge within whose jurisdiction the infringement occurred. A criminal proceeding has to be instituted in the Court of Metropolitan Magistrate or any other 1st class Judicial Magistrate. Remedy in a suit for infringement may be availed in the form of injunction, damages, an accounts of profit, destruction or erasure of falsifying trademark, delivery up the goods marked with false trademark.
Procedure of Registration of Trademarks
There is a specific application form for trademark registration. The above mentioned form is available as Form TM-1 in the Sub-link Trademarks of the original link ‘Form and Fees’ on the website of this Department (www.dpdt.gov.bd or http://dpdt.portal.gov.bd). After downloading the Form, four sets of this will have to be filled up on computer appropriately. The completed Form with prescribed fees (Article 13 of this document) and necessary documents will have to be submitted before Information and Service Centre situated on the Ground Floor of this office (91 Motijeel C/A, Dhaka). After receiving the properly filled-up application, the Information and Service Centre will issue the applicant with an acknowledgement receipt containing a serial number. Noticeably, the applications of Chittagong Division will have to be submitted before the branch office of this Department in Chittagong (Room No. 218, Government Works Building-1, Agrabad, Chittagong). The details of the procedure to fill-up and submit the application have been furnished below.
- The application Form must be filled-up in paper format of ISO A4 size and minimum 80 G.M.S.
- Description of Class: Separate application will have to be submitted for different goods/services and the goods or services fall under which class must be mentioned in the specific area of the application. The classification of different goods/services will be available in the sub-link NICE Classification of the original link resource on the website of this Department.
- Description of Marks or Label: Label of suitable size and durable paper must be affixed on the specific area of application. No carton /packet/photocopy are acceptable as label. The desired Trademark on the label will have to be mentioned specifically with the sign of TM. Without proper evidence, no sign like (R), BSTI, ISO or these sorts of logo of any organization cannot be used on the label. If other Languages except Bengali/English exist on label/logo, translation and transliteration of the same will have to be mentioned in Column No. 6 of the application. NOC from the respective person or guardian will have to be submitted in case of using the photo of any person in the label/logo.
- The description of marks will have to be submitted in Colum No. 3 of application Form.
- Description of Goods/Services: The description of goods/services will have to be mentioned in the specific area of application Form.
- Name of Person along with information (in case of proprietorship) and name of company along with information (in case of limited company) will have to be mentioned in part-A and part-B respectively of Column No.-7 of Application Form. If the applicant is a company, the law under which the company has been incorporated will have to be mentioned. E.g. A Company organized and existing under the laws of Bangladesh.
- Trading Style of company will have to be mentioned in part-C of Colum No.7 of Application Form. E.g. Manufacturer, Importer and Service Provider.
- Full address of the applicant to communicate will have to be mentioned in part-A or B of Column No. 07 of Application Form.
- Using period of the trademark with certain date will have to be mentioned in Column No.10 of Application Form. “Proposed to be used” will have to be written in the above mentioned area if the mark in not in use.
- Full name, signature, designation, E-mail, Mobile/Telephone number will have to be mentioned in the specific area of Application Form.
- Evidence in support of Priority will have to be submitted if the same is claimed by the applicant and Column No. 11 of Application Form will have to be filled up properly.
- The application may be submitted by the applicant himself or his lawyer or the enlisted agent appointed by the applicant. If the application is submitted by the lawyer or enlisted agent, original/attested GPA/PA in form (TM-10) with appropriate stamp (Tk. 1000/- for GPA, TK. 500/- for PA) will have to be submitted. In case of foreign applicant, the application must be submitted by the local attorney/agent.
- Application Fee (Tk. 3500/ for every application) will have to be paid by Pay-order/Bank Draft from any scheduled bank, payable to the Registrar of DPDT
- If the applicant wishes to know whether the desired mark has already been registered/applied for any Goods/Services before filing the application, he may know the same within 2 (two) weeks by filing a request with prescribe fee (Tk. 1000/-) on Form TM-4.
- If the application submitted by the applicant has not been objected after examination, the applied mark is accepted for Journal Publication. TMR5 notice will be issued to the applicant to inform this fact and for submitting prescribed fee of Tk. 1000/- for Journal Publication.
- If Journal Fee has not been paid within 1 (one) month after receiving the notice, the trademarks will deem to have been abandoned subject to issue a warning notice.
- If prescribed fee for journal publication is paid duly, the mark is sent to B.G press for printing.
- Two months’ time is stipulated for opposition after Journal Publication from B. G. press.
- The applicant may pay prescribed fee of Tk. 15000/- by Form TM-11 for Registration Certificate after visualizing the Journal if the mark is not opposed within two months.