Trademarks

Preface:

The history and origin of trademarks in Bangladesh can be traced back to the colonial era, with the development of a modern legal framework culminating in the enactment of the Trademarks Act, 2009. Bangladesh has also recognized the importance of international agreements in shaping its trademark laws and has continued to update and modernize its legal and administrative processes for trademark protection. Bangladesh, as part of its legal framework, has become a signatory to international agreements related to intellectual property protection, including trademarks. The Paris Convention for the Protection of Industrial Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) under the World Trade Organization (WTO) are some of the key international agreements that influence the country's trademark laws.

Why Trademark Protection/registration in Bangladesh is essential?

Trademark registration in Bangladesh is essential for protecting any brand and its associated products or services. Because trademark registration can serve as a defensive strategy to protect your brand. It prevents others from registering a similar mark and asserting their rights over your brand or using it against you. However, a trademark registration in Bangladesh is crucial for the following reasons:

a.  It provides legal protection against unauthorized use, preventing trademark infringement and confusion in the market;

b.  It safeguards brand identity and recognition, offering a competitive advantage and driving consumer trust;

c.  It enables licensing, franchising, and the monetization of intellectual property;

d.  It supports global expansion efforts, especially in international markets; and ultimately, a registered trademark serves as a valuable asset, allowing for sale, transfer, and lending purposes, making it an essential step for businesses seeking to establish and protect their brand's presence in Bangladesh.

Governing Laws and the Authoritative Organs for the Protection of a Trademark:

In Bangladesh, the protection of trademarks is primarily governed by the Trademarks Act of 2009, with the authoritative organ for administration and enforcement being the Department of Patents, Designs, and Trademarks ( ) operating under the Ministry of Industries. The DPDT oversees trademark

 registration, maintenance, and enforcement, maintains the Trademark Registry, and collaborates with law enforcement agencies to combat trademark infringement. To safeguard trademark rights, registration with the DPDT is essential, and legal recourse against infringement is pursued through civil courts, with the Intellectual Property Office (IPO) also playing a role in managing intellectual property rights, and ensuring the comprehensive protection of trademarks in the country.

Registrability of a Trademark in Bangladesh:

A.        Pre-requisites for Trademark registration:

A trademark must be distinctive in order to obtain registration/protection in Bangladesh. Section 6 of the Act, 2009 imposes some preconditions for registration. Section 6 mentions a trademark shall not be registered unless it contains or consists of at least one of the following particulars, namely-

I. The name of a company, individual, or firm represented in a special or particular manner.

II. The signature of the applicant for registration or some predecessor in his business.

III.        One or more invented words.

IV.        One or more words having no direct reference to the character or quality of goods and not being according to its ordinary signification, a geographical name or surname, or the name of the sect, caste, or tribe in Bangladesh.

V.         Any other distinctive mark. 

B. Characteristics of a good Trademark:

In accordance with the law and practices of Bangladesh, the characteristics of a good Trademark can be traced upon the following grounds:

I.          It must be easy to pronounce and remember if the mark is a word;

II.         It must be easy to spell correctly and write legibly;

III.        It should not be descriptive but may be suggestive of the quality of the goods;

IV.        It should be short;

V.         It should appeal to the eye as well as to the ear;

VI.        It should satisfy the requirements of registration;

VII.       It should not belong to the class of marks prohibited for registration.

C. Which Marks are not Registrable:

As per section 8 of the Act, 2009, no trademark nor part of a trademark shall be registered if -

1. It comprises or contains scandalous obscene matter;
2. Be contrary to any existing law;
3. It is of such nature as to deceive the public or to cause confusion;
4. Be likely to hurt the religious susceptibilities of any class of the citizens of Bangladesh;
5. it uses the name, first letter of a name, hallmark, monogram, map, flag, symbol, or sign, of a country or international organization or any organization formed through international treaty or convention without approval of the competent authority or person; or it contains identical, partially identical or part of it.
6. Is not fit for obtaining the protection of the Court for any other reasons;
7. Any application is made for ill motives or by adopting unfair means.

The registration process of a trademark in Bangladesh begins with comprehensive research to ensure uniqueness and filing an application with the Department of Patents, Designs, and Trademarks (DPDT) in Dhaka, specifying the applicant's details, a clear representation of the trademark, the list of intended goods/services, and their corresponding class in the Nice Classification. Following the DPDT examination, if the application is accepted, it will be published for opposition, and upon a successful opposition-free period, a Certificate of Registration will be issued.

E. Renewal and Subsequent Maintenance:

When the registration certificate for a trademark is issued, its registration will remain valid upon lifetime subject to payment of certain renewal fees. The first renewal is required to be paid (if the registration certificate has been issued) after 7 (seven) years counted from the date of filing. Afterward, a trademark will be required to be renewed in each 10(ten) 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.

Remedy for infringement:

Where the rights of a proprietor of a registered trademark have been infringed, s/he can initiate civil proceedings or criminal proceedings for remedy. Any suit regarding the infringement of a trademark, or to establish the right or any ratified right respecting the 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 account of profit, destruction or erasure of falsifying trademark, or delivery up the goods marked with false trademark.