Legislation
Acceptability of Trade Marks
Registration
Assignments
Application Process/Filing Requirements
Post Application Process
Registration Process
Term of Registration
Removal/cancellation of a registered trade marks
Infringement
Remedies
Legislation
The Trade Marks Act, 1940.
Acceptability of trade marks
The basic requirements for a mark to be registrable, are
Distinctiveness, inherent or acquired,
Should not consist or otherwise refer to the kind, quality, characteristics, purpose or value or geographical origin of the goods,
By reason of its being likely to deceive or to cause confusion or otherwise, be disentitled to protection in a Court of justice; or
Be likely to hurt the religious susceptibilities of any class of 1[the citizens of Bangladesh]; or
Be contrary to any law for the time being in force or to morality
Should not contain any scandalous design or matter,
Should not be likely to deceive or cause confusion,
OR likely to hurt religious susceptibilities of public
Should not have been applied for in bad faith and
Must not be identical or similar to earlier marks whether for identical or similar goods. Here it is pertinent to mention that the trade marks in respect of any goods or description of goods which is identical with a trade marks belonging to a different proprietor and in respect of the same goods or description of goods or which so nearly resembles such trade marks as to be likely to deceive or cause confusion.In case of honest concurrent use or of other special circumstances which, in the opinion of the Registrar, make it proper so to do he may permit the registration by more than one proprietor of trade marks which are identical or nearly resemble each other in respect of the same goods or description of goods. Where separate applications are made by different persons to be registered as proprietors respectively of trade marks which are identical or nearly resemble each other, in respect of the same goods or description of goods, the Registrar may refuse to register any of them until their rights have been determined by a competent Court.
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Registration
Any person claiming to be the proprietor of a trade marks used or proposed to be used by him who is desirous of registering it can apply in writing to the Registrar in the prescribed manner.
Assignments
Registered trade marks in Bangladesh can be assigned with or without the goodwill of a business. An unregistered trade marks can also be assigned and transmitted with or without the goodwill of a business or not.
Provided that, except in connection with the goodwill of a business, assignment or transmission shall be permissible only if -
At the time of assignment or transmission of the unregistered trade marks it is used in the same business as a registered trade marks, and
The registered trade marks is assigned or transmitted at the same time and to the same person as the unregistered trade marks, and
The unregistered trade marks relates to goods in respect of which the registered trade marks is assigned or transmitted.
Application Process/Filing Requirements
In order to prepare a trade-marks application we need to know several details as given below
The full name, state of incorporation and the registered office address of the applicant.
The details of the proposed trade marks. If the mark is in design form, then an accurate rendition of the trade-marks in respect of which registration is to be sought.
An accurate description of the specific goods in respect of which trademark protection is required. Bangladesh does not recognise service marks. It is also not possible to file multi class applications in Bangladesh.
If the mark has been used in association with any of the goods and/or services, we need to know the first date of use in Bangladesh. In the alternative, the application may be filed on a 'proposed to be used' basis.
A Power of Attorney is required.
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Post Application Process
Pursuant to filing, the Registrar may refuse the application or may accept it absolutely or subject to such amendments, modifications, conditions or limitations, if any, as he may think fit.
Assuming that the Examiner does not raise any insurmountable objections, the mark is published in the Trade-marks Journal. Upon publication, any person may oppose registration of the mark by filing a Notice of Opposition. In Bangladesh, oppositions may be filed within four months of the publication in the Trade Marks Journal. If the applicant wishes to contest the opposition, it files a Counter statement within two months of his receipt of a copy of the Notice of Opposition. Thereafter, both parties have an opportunity to file their evidence by way of affidavits. Once evidence is closed, the parties may file written arguments and there is an opportunity for an oral hearing.
Registration Process
A trade-marks application is allowed if there is no opposition or if the opposition has been finally decided in the Applicant's favour. Once the application has been allowed, a certificate of registration is issued automatically.
Term of Registration
If an application for registration of a trade-marks does not run into difficulty at the examination stage, and if it is not opposed following publication, registration is obtained and the registration is given for a period of seven years, subject to the mark being cancelled due to non-use. The registration is renewable for successive fifteen year terms.
Removal/cancellation of a registered trade marks
Only an "aggrieved person" can make an application to a High Court or to the Registrar for the removal/cancellation of a trade marks
Any person aggrieved by the absence or omission from the register of any entry, or by any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to a High Court or to the Registrar, and the tribunal may make such order for making, expunging or varying the entry as it may think fit.
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Infringement
The registration of a person in the register as proprietor of a trade marks in respect of any goods shall give to that person the exclusive right to the use of the trade marks in relation to those goods and, that right shall be deemed to be infringed by any person who, not being the proprietor of the trade marks or a registered user thereof using by way of the permitted use, uses a mark identical with it or so nearly resembling it as to be likely to deceive or cause confusion, in the course of trade, in relation to any goods in respect of which it is registered, and in such manner as to render the use of the mark likely to be taken either -
As being used as a trade marks; or
To import a reference to some person having the right either as a proprietor or as registered user to use the trade marks or to goods with which such a person as aforesaid is connected in the course of trade.
Remedies
Bangladesh law provides a remedy under the civil law. The proprietor of a registered trademark can seek reliefs of injunction, damages, accounts as well as all other protections which may be available in respect of infringement of any other property right. The suit for infringement of a registered trademark can be filed before the Court of District Judge.
No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade marks unless such trade marks has been continuously in use since before the 25th day of February, 1937, by such person or by a predecessor in title of his and unless an application for its registration, made within five years from the commencement of this Act, has been refused; and the Registrar shall, on application in the prescribed manner, grant a certificate that such application has been refused.
Nothing in the trade marks law affects the common law rights of action against any person for passing off goods as the goods of another person or the remedies in respect thereof.
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