Any person who is the owner of a trade mark can apply for registration. The trade mark may be in use or proposed to be used. The Application should be made before the Department of Patents, Designs, Trademarks (DPDT) of Bangladesh. The department of Trademarks Registry follows the Nice Classification of Goods and Services. But the multiclass filing provision is not available in Bangladesh. Service Marks can be also registered in Bangladesh. Applicants can apply for registration of service marks. The International Nice Classification of Services is applicable for this purpose.
Trademark Search
A Trademark search is necessary as it determines the success rate of an application. The applicant or his agent may apply for search and preliminary advice by the registrar on Form TM - 04.
Application of Trademark
An application for the registration of a trademark should contain the following contents: Name of the Applicant or the Name of Partners. Address and nationality of the Applicant. Status of the applicant i.e., Merchandiser / Manufacturer /Service Providers Details, Description of Goods/Services enlisted as different types of Goods. Description of the Class of the Goods/Service. A clear image of the trademark. Translation or Transliteration of the trademark. When the trademark is in any language other than English and Bengali. A scanned copy of the Power of Attorney. Documents supporting Priority in the case of a Priority Claim. The signature of the applicant or the trademark representative or lawyer.
Procedure for Registration of Trademark application in Bangladesh
The application for the registration of a trademark must have the sign of the applicant and must be on Form TM-1. An image of the trademark must be present on the application form in the space provided. The application form must contain all the contents of the trademark. Otherwise, the Application will fail, and the registrar will not issue the certificate. Examination of the Application within 3 months from the date of receipt of the application. While examining the Application, the Registrar may ask for an amendment within 10 days. The applicant may submit a written statement within 3 months or opt for a hearing on Form 23 for amendments. If the applicant does not follow the same, the Application may be abandoned. Hearing will take place within 1 month after filing the Application. The same should be filed before the Registrar of Trade Marks.
Journal Publication
After accepting the Application, the Department will send a notification for Advertisement. Thereafter, the applicant will deposit Publication fees at DPDT. An application should be made through Form 9 of the First Schedule of the Trademark Rules, 2015. The Registrar will forward the trade mark to the Bangladesh Government press. For Publication the requisite fees should be paid.
The Opposition of the Trademark
Any person may file the Notice of Opposition within 2 months from the date of Publication. The Notice of Opposition should be filed through Form 5. The Registrar within 1 month from the date of receipt of the Notice, serves a copy to the applicant. The Applicant must file the Counter Statement within 2 months. It should be after receiving the Notice of Opposition. If it is not filed within 2 months, the Application will be abandoned. By paying fees, an extension of time may be obtained. When the Counter Statement is filed, the Registrar will forward the same to the Opponent. Afterward, both the parties will file evidence by way of Affidavit. On receiving the evidence, the Registrar will fix the hearing of the Opposition case. All the proceedings related to the opposition must finish within 120 days. The Registrar will pass an ex-parte order when one party is absent at the hearing. The Registrar may dismiss the Opposition proceeding when both parties are absent. An appeal may be filed before the Hon'ble High Court for reviewing the order of the Registrar.
Registration of the Mark
When there is no Opposition, the Registrar will ask to pay certification fees Finally, the Registrar will issue a certificate of registration within 150 days. The certificate will be provided on Form TMR - 1.
Trademark Renewal in Bangladesh
The registration is valid for 7 years and afterward for successive period of 10 years in Bangladesh. The Registrar will send a notice to the registered owner to pay the renewal fees before the expiry date. The request for renewal can be filed within six months by paying the requisite fees. A renewal can be also filed within six months after the expiry of the registration through Form 12.
Assignment of Trademark in Bangladesh
Any registered trade mark can be assigned with or without the goodwill of the business in Bangladesh. An Application and the deed of assignment should be filed before the Registrar. The Application for Assignment should be filed on Form TM-24 or TM-23.
Licensing of Trademark in Bangladesh
The license for a trademark should be recorded with the authority to make it effective. Application for the record must be made to the Registrar.
Remedy for Infringement
For infringement case in Bangladesh, the owner can start civil or criminal proceedings for remedy. The registered owner can start a civil case before the District Judge. For criminal case, it should be before the Metropolitan Magistrate or Judicial Magistrate. Remedy can be sought in the form of injunction against usage of infringed trade mark. The damages for loss of business can also be recovered from infringer. If you need any help with trademark registration, please write to us.
