Collective trademarks
Collective trademarks are part of the trademarks that are owned by the association and used by the members collectively (https://www.wipo.int/collective-marks/en/, accessed on 15.02.2024). A collective trademark is used by the different enterprises for marketing and selling their products under the auspices of and taking permission from the association or cooperative as members of the cooperative or association. Generally, the association or cooperative owns and retains the control of a collective mark and makes certain standard criteria for using the mark.
After being complied with the standard criteria by members, the association allows the members to use the mark. Collective trademark is a tool for jointly marketing the products of all members of the association, where the individual trademark is not identified by the consumers or managed by the distributors (WIPO publication No. 900.1, 2006). Thus, the collective trademark is the symbol, sign etc. of an association, which is permitted to its members to use the mark after compliance of the standard criteria by the member(s).
Article 7bis of Paris Convention for the Protection of Industrial Property, 1883 does not defined as to what constitutes the collective trademark, rather simply explains the substantive provisions for accepting and protecting the collective trademark not being contrary to the law of the country of origin. Therefore, every country is free to define the collective mark as their own way.
The collective trademark connotes any perceptible sign that could differentiate the origin, quality or other common characteristics of goods or services of various enterprises and such sign, which is controlled by the registered owner is used by numerous enterprises collectively engaged in the same business for goods or services as one legal entity (Section 2(25) of the Trademark Act, 2009, hereafter referred to as the Act, 2009). However, section 2(25) of the Act, 2009 is reproduced below:
“Collective mark” means any visible sign designated as such in the application for registration, which⎯ (a) is capable of distinguishing the origin or any other common characteristic, including the quality, of goods or services of different enterprises; (b) is used by different enterprises under the control of the registered owner of the collective mark; and (c) is used in respect of goods or services by a group of individuals collectively engaged in the same business as one legal entity;
Who can file an application for the collective trademark.
The Trademark Act, 2009 and Trademark Rules, 2015 do not specifically provide any provision as to who can apply for registration of the collective mark. Section 2(25) of the TM Act, 2009 defines the collective mark. Rules 26 and 27 of the TM Rules, 2015 explain only applicable provisions and stipulations contain in the regulation to be submitted with the application.
Therefore, the plain reading of section 2(25) of the TM Act, 2009 and rule 27 of the TM Rules, 2015 does not expose as to who is eligible for filing an application for registration of the collective mark. Rule 27 of the TM Rules, 2015 states the stipulations for making a regulation for using the collective mark, and such regulation must contain the name of the association, the object of the association, details of members of the association and conditions to be a member of the association. Thus, upon perusing the above-mentioned rule, it reveals that an association is eligible to file an application for registration of the collective mark and own the same.
Application for the collective trademark.
An association can apply for registration of the collective mark through the prescribed form and by paying proper government fees. At the same time of filing of an application, a regulation for using the collective mark is to submit with the application (rule 27 of the TM Rules, 2015). As rules 10 to 23 of the TM Rules, 2015 are applicable for filing an application for registration of the collective mark, what provisions are applicable for trademark registration are equally applicable for the registration of the collective mark (rule 26 of the TM Rules, 2015).
Moreover, section 122 of the TM Act, 2009 provides that except as otherwise expressly provided for by this Act or any other law for the time being in force, the provisions of this Act shall as far as may be made applicable apply to a collective mark. Therefore, the provisions of registration of the trademark is applicable for the registration of the collective mark.
Regulation for using the collective trademark.
The Regulation for using the collective mark is to contain (1) the name and address of the association constituting with authorized persons, (2) the object of the association, (3) details of all members of the association, (4) terms and conditions to be a member of the association, (5) the terms and conditions for using the mark, (6) any other information directed by the Registrar (rule 27(2) of the Rule, 2015).
In addition, the Regulation must not be contrary to Public Policy of Bangladesh Government or adopted moral policy (rule 27(7) of Rule, 2015). The Regulation shall be opened for all for inspection as like as Register Book and Documents (rule 27(8) of Rule, 2015). Before the submission of regulation with the application, government approval is required.
Procedure for registration of the collective mark.
According to section 122 of the Trademark Act, 2009 and rules 10-23 of the Trademark Rules, 2015, the provisions for registration of the trademark is applicable for the registration of the collective mark. Additionally, a copy of regulation is to submit by applicant through TM- 8 form. Thus, after submitting the application forms, the examiners examine the application through formalities and substantive examinations (rule 14 of the TM Rules, 2015).
In Bangladesh, formality and substantive examination of trademark applications are performed by the examiner at the same time. After the examination, if the examiner finds any discrepancy in the formality or substantive examination, the examiner serves a show cause notice to the applicant in a proper form to clarify the issues (rule 15 of the TM Rules, 2015). After receiving the show cause notice, the applicant has either can reply in writing or apply for a hearing in proper form with the proper fee.
Upon satisfactory reply or hearing submission of the applicant, the examiner issues a journal order and accordingly, serves a journal notice to the applicant (section 17 of the TM Act and rule 16 of the TM Rules, 2015). Conversely, upon the dissatisfactory reply or hearing submission of the applicant, the examiner may reject the application. After receiving the notification of journal publication, the applicant shall apply for publication of his application in the journal in a proper form and with the proper fee.
After the publication of the journal of the application, any person can file an opposition case to the Registrar within two months from the date of journal publication (section 18 of the TM Act, 2009 and rule 18 of the TM Rules, 2015) and after receiving the said opposition case, the applicant shall submit a counter statement stating the grounds within two months from the date of receiving such opposition case (rule 19 of the TM Rules, 2015). After hearing the parties and considering the evidence on record, the Registrar shall decide the opposition case (rule 22 of the TM Rules, 2015).
If there is no opposition case within this period or the decision of the opposition case is given in favor of the applicant, the applicant shall apply for a registration certificate with the proper form and fee (section 20 of the TM Act, 2009 and rule 30 of the TM Rules, 2015). Initially, the applicant will get a trademark certificate for a period of seven years (section 22 of the TM Act, 2009), after which the applicant can renew his trademark indefinitely subject to renewal every ten years (section 22 of the TM Act, 2009 and rule 36 of the TM Rules, 2015).
The trademark registration process
Any person or legal entity can register their trademarks under the TM Act, 2009 (section 15 of the TM Act, 2009 and rule 10 of the Trademark Rules, 2015 (hereinafter referred to as TM Rules, 2015). Before applying, the applicant is recommended to conduct a trademark search for the mark to be applied for as to whether the TM application has already been applied for the same mark or registered (Rule 67 of TM Rules, 2015). Moreover, before applying, it is compulsorily required to check the legal requirements destined in the TM Act, 2009 particularly sections 6, 8, 10. The fee structure for trademark registration is the same for large companies to small enterprises.
Trademark registration begins with the filing of an application with the appropriate form (section 15 of the TM Act, 2009 and rule 10 of the TM Rules, 2015). After submitting the application forms, the examiners examine the application through formalities and substantive examinations (rule 14 of the TM Rules, 2015). In Bangladesh, formality and substantive examination of trademark applications are performed by the examiner at the same time. After the examination, if the examiner finds any discrepancy in the formality or substantive examination, the examiner serves a show cause notice to the applicant in a proper form to clarify the issues (rule 15 of the TM Rules, 2015). After receiving the show cause notice, the applicant has either can reply in writing or apply for a hearing in proper form with the proper fee.
Upon satisfactory reply or hearing submission of the applicant, the examiner issues a journal order and accordingly, serves a journal notice to the applicant (section 17 of the TM Act and rule 16 of the TM Rules, 2015). Conversely, upon the dissatisfactory reply or hearing submission of the applicant, the examiner may reject the application. After receiving the notification of journal publication, the applicant shall apply for publication of his application in the journal in a proper form and with the proper fee.
After publication of the journal of the application, any person can file an opposition case to the Registrar within two months from the date of journal publication (section 18 of the TM Act, 2009 and rule 18 of the TM Rules, 2015) and after receiving the said opposition case, the applicant shall submit a counter statement stating the grounds within two months from the date of receiving such opposition case (rule 19 of the TM Rules, 2015). After hearing the parties and considering evidences on record, the Registrar shall decide the opposition case (rule 22 of the TM Rules, 2015).
If there is no opposition case within this period or the decision of the opposition case is given in favor of the applicant, the applicant shall apply for a registration certificate with the proper form and fee (section 20 of the TM Act, 2009 and rule 30 of the TM Rules, 2015).
Initially, the applicant will get a trademark certificate for a period of seven years (section 22 of the TM Act, 2009), after which the applicant can renew his trademark indefinitely subject to renewal after every ten years (section 22 of the TM Act, 2009 and rule 36 of the TM Rules, 2015).
