Trademark registration in Bangladesh
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
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.
Applicable fees is required to be paid.
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 chalan/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. Source: ogrlegal.com