Regulatory Regime: The Registration of Trade Marks and their protection are governed by the
Trade Marks Act, 2009
Trade Marks Rules, 1963
►Making an application: Anyone claiming to be the proprietor of a trademark may apply to the Registrar for the registration of the said mark. Bangladeshi nationals and foreigners have equal right in this regard but a foreign applicant must be represented by a local agent.
►Requirements for the application:
a. Name of the Mark /Logo/Device prints or representation.
b. Name of the Applicant.
c. Address and nationality of the Applicant.
d. Status of the applicant i.e. Merchandisers / Manufacturers /Service Providers
e. Specification of Goods/Services and Class.
f. User date of the mark (whether the mark is in use or proposed to be used in Bangladesh).
g. General/ Specific Power of Attorney. Power of Attorney (POA) may be filed subsequently.
The mark is thoroughly examined as regards –
(ii) similarity or being identical or nearly resemble with existing trademarks on the Register of Trademarks;
(iii) hurt religious susceptibilities of any class of Bangladesh, and
(iv) compliance with the requirements of the Trade Marks Act.
►Procedure for registration of a trademark in Bangladesh
1. Conduct Availability Search (optional).
2. Filing the Application: An application is made in the prescribed manner to the Registrar of Trade Marks.
3. Acknowledgement of Application: 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.).
4. Examination of the Application: The Registrar examines the trademark for distinctiveness, identical or similarity with existing registered trademarks and general compliance with the requirements of the Law. If the Registrar is satisfied, he issues a Letter of Acceptance for the mark to be advertised in the Trade Marks Journal for opposition purposes. Otherwise, the Registry raised objection seeking written reply regarding objections.
4.1. Refusal of Application: Where an application is refused, the Applicant through its local agent 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.
4.2. Acceptance of Application: If the Examiner is satisfied as to (4.1) above, the Registrar accepts the mark for advertisement in the Trade Marks Journal.
5. Opposition Proceedings: When a trademark is advertised, any person may within two (2) months from the date of the publication give notice of Opposition to the Registrar on Form TM-5.
The Registrar shall send a copy of the Notice of Opposition to the Applicant and the Applicant shall within two (2) 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.
6. Registration Where no opposition is received at the expiration of the opposition period or the opposition is determined and resolved in favour of the Applicant, the Registrar is obliged to issue a Certificate of Registration for the trademark on payment of the prescribed fee. The registration date of the trademark will be the date of filing.
Term of Registration
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.
Application for renewal of a trademark may be made to the Registrar in the prescribed manner, not more than six (6) months before the expiration of the last renewal. Renewal is for ten (10) years. A Certificate of Renewal is issued by the Registrar as evidence of payment of the renewal fee due at that period.
Clients are advised that the renewal fee due on a mark cannot be paid until the mark is registered. Clients are therefore advised that they need not worry about the renewal fee until the mark has been registered.
►Post Registration Matter
Assignment of Trademarks
The Registered proprietor of a Trade mark has power to assign the mark and a registered Trade Mark is assignable and transmissible 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.
To file application for recordal of assignment in Bangladesh, the following documents are required –
(i) Deed of Assignment - The Deed must be executed by the Assignor and the Assignee. A nominal consideration of US$ 10.00 is sufficient. The document must be Legalized in the country concerned.
(ii) Form TM-24 or Form TM-23(Joint Request) -An application to register the title of a person who becomes entitled by assignment or transmission to a registered trade mark shall be made on Form TM-24 or TM -23 according it is made by such person alone or conjointly with the registered proprietor.
(iii) Authorisation of Agent - The authorization is to be executed by both the Assignor and the Assignee. It may be notarized.
►Licensing of Trademarks (Registered User)
There is provision under the Trademark Law for the registration of a person other than the registered proprietor of a trademark as a Registered User.
In order to file application for Registered User in Bangladesh, the following documents are required –
(i) Registered User/License Agreement
(ii) TM Form -28
(iii) Statement of Case by an Affidavit.
(iv) Authorisation of Agent
►Change of Name/Address of the proprietor
If there is a change in the name and/or address of the proprietor, such change must be recorded against the trade mark. The proprietor may make application in the prescribed manner to alter its name and/or address on the Register of Trade marks.
The Registrar, if satisfied with the application, will issue a Proof of record of Change of Name/Address evidencing the recordal of such change in the Register.
To apply for the change of name of the proprietor of a trademark in Bangladesh, a Certified True Copy of the Certificate of Change of Name/Address or any equivalent document (e.g. Extract of Company Register) issued by the appropriate authority in the proprietor’s country of origin attesting to the change of name/address. Where such document is not in the English language, a certified English translation will be required.
►Foreign Priority/Convention Applications
The Law makes provision for an Applicant to claim priority of a foreign trademark within 6 months from the date of application to the member country of Paris Convention or WTO in Bangladesh.
Service Marks can be registered in Bangladesh. Applicants can now apply for registration of service marks in Bangladesh in International Classes 35 to 45. The International Nice Classification of Services is applicable for this purpose.
Patents and design
►Legal Basis: Patents and Designs Act, 1911
►Application: An application for a patent may be made by any person alone or jointly with any other person. The application must be made in the prescribed form, and must be filed at the Patent Office in the prescribed manner. The application must contain a declaration to the effect that the applicant is in possession of an invention, whereof he, or in the case of a joint application one at least of the applicants, claims to be the true and first inventor or the legal representative or assign of such inventor and for which he desires to obtain a patent, and must be accompanied by complete specification.
►Specifications: A complete specification must particularly describe and ascertain the nature of the invention and the manner in which the same is to be performed. The specification must commence with the title, and in the case of a complete specification must end with a distinct statement of the invention claimed. The drawings can be supplied at any time before the acceptance of the application, but we suggest filing drawings at the time of application printed on tracing papers.
►Convention & Priority: Bangladesh is a member of the Paris Convention (The Paris Convention for the Protection of Industrial Property of March 20, 1883) and priority can be claimed within one year from first of the applications filed in any Member country. Priority cannot be claimed from PCT application even if it designates one of these countries. In case of claiming priority the applicant must supply the certified copy of the foreign patent upon which the inventor is claiming priority.
►Filing Requirement: To file a Patent Application we need the followings:
(a) Name of the inventor (applicant),
(b) Address(s) and nationality of the inventors,
(c) Two sets of specification and one set of drawing on tracing paper (transparent),
(d) One set Legalized Deed of Assignment (if any),
(e) Power of Attorney [Form - 31],
(f) Certified copy of the foreign patent (in case of claiming priority)
►Advertisement on acceptance of application: On the acceptance of an application the Controller shall give notice thereof to the applicant and shall advertise the acceptance and with the drawings (if any) shall be open to public inspection.
Opposition: Any person may, at any time within four months from the date of the advertisement of the acceptance of an application, give notice at the Patent Office of his/her opposition to the grant of the patent. The opponent must state the grounds of his/her opposition.
►Requirements for Filing:
►Duration of Registration: The Registration of an industrial design is valid five (5) years from the date of the application and renewable for two (2) further consecutive periods of five (5) years on payment of the prescribed fee.
A: Primary legislation: i) Copyright Act 2000, and ii) Copyright Rules 2006 B: International instruments:
i) Convention establishing the World Intellectual Property Organisation (WIPO), entered in to force with regard to Bangladesh on May 11, 1985.
ii) Universal Copyright Convention, 1952 (revised at Paris on 24 July 1971, hence the 1971 Convention) (accepted by Bangladesh on May 5, 1975)
iii) Berne Convention for the Protection of Literary and Artistic Works 1886 (Paris 1971), May 4, 1999 and
iv) The Paris Convention for the Protection of Industrial Property of March 20, 1883.
v) Trade Related Aspects of Intellectual Property Rights (TRIPS) under WTO, Jan. 1, 1995
C: The Penal Code of Bangladesh. Registration Section 56 of the Copyright Act 2000 lays down the procedure for registration of a work. Ownership of the copyright of a work The author of the work will be the first owner of the copyright, provided that, the owner of the magazine, newspaper etc, as far as publication and reproduction of the work in that magazine is concerned, where the author produced the work for that magazine etc being an employee or internee of therein. Transfer of copyright Copyright may be assigned, transferred or licensed. Tenure of a copyright The general rule is that copyright of a work will remain till the 60th year from the death of the author. Infringement of copyright When any person without a licence issued by the owner or the Registrar, or in contravention of any condition of a valid licence or any conditions imposed by an authority does anything the exclusive right to do which is given to the owner of the copyright. Exceptions to the infringement law Exceptions include:i) fair dealing without commercial benefits,ii) reproduction for use in academic purpose or judicial proceedings and for use of members of the legislature,iii) reproduction of an article on current economic, political, social or religious matters in newspapers, magazines etc. Remedies for infringement of copyright There are both civil and criminal remedies for infringement of copyright.Civil remedy: where a copyright is infringed, the owner of such right will get all the civil remedies including injunctions and compensation.Criminal remedy is also available.