Md Jumon Ali
Trademark and Patent Attorney
Dhaka, Bangladesh
1. Trademark.
Section 2(8) of the Trademark Act, 2009 (hereinafter referred to as the TM Act, 2009) states that the trademark is the registered trademark in connection with chapter X of the TM Act, 2009 or the mark used to indicate the connection between the goods or services and its owner having the right to use it in the course of trade. The mark used or proposed to use the goods or services that indicates a connection between the goods or services having the right to use the goods or services either as the owner or registered user and it also includes the certification mark. The section 2(23) of the TM Act, 2009 defines the mark as “mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, symbol, numeral, figurative elements, combination of colours or any combination thereof.”
2. Registrable trademark in Bangladesh
To be a good trademark for registrable, it must comply with the formalities stated in the TM Act, 2009 and be one or more innovative words and a distinctive mark. However, it must not be connected with the word(s) which are the name of the geographical place, or a surname or a personal name or any common abbreviation thereof or the name of a sect, caste or tribe in Bangladesh (section 6 of the TM Act, 2009). Generally, said names are not registrable in the Register; otherwise, they must pass the test of distinctiveness, which connotes distinguishing the goods or services of one undertaking from another undertaking (section 6 of the TM Act, 2009). In addition, section 8 of the TM Act, 2009 states certain prohibitions for which the trademarks are not registrable. Thus, the trademark does not contain any scandalous or obscene matter, contrary to the law time being in force, use of the mark likely to be deceitful or caused confusion, hurt the religious feelings of the citizens of Bangladesh, disentitling to seek the remedy from the court for any other cause and bad or dishonest intention in filing application and it is further stated that the trademark is not registrable which is identical with, or is an imitation of, or contains as an element, an armorial bearing, flag or other emblem, a name or abbreviation or initials of the name of, or official sign or hallmark adopted by, any state or international organization created by an international convention, charter or other instruments, unless authorized by the competent authority of that state or organization (section 8 of the TM Act, 2009). The words which are commonly used and accepted names of any single chemical element or single chemical compound shall not be registered as a trademark in respect of a chemical substance or preparation (section 9 of the TM Act, 2009).
When the trademark is similar with or deceptively similar with the registered trademark of any other proprietor, the later mark is not registrable. However, the Register may allow to use the similar mark in the name of one or more persons subject to terms and limitations set out in the registration (section 10 of the TM Act, 2009). Moreover, to be a registrable trademark, it must not be similar to or confusingly similar to the well-known mark or the registered well-known mark in Bangladesh (section 10 of the TM Act, 2009). Similarity may be the visual, phonetic, or similarity in idea.
3. Procedure for registration of the trademark.
(a) Filing an application for registration of trademark.
In accordance with section 15 of the TM Act, 2009 and rule 10 of the Trademark Rules, 2015 (shortly TM Rules, 2015), an application (TM Form-1) for registration of the trademark is to be filed with the Department of Patents, Industrial-Design and Trademark (DPDT), Ministry of Industries, Dhaka, Bangladesh. It is to be noted that currently, the trademark application is to be filed compulsorily through online.
(b) Examination.
After submitting the application form, the examiners will examine the application within two months through formalities and substantive examinations (rule 14 of TM Rules, 2015). In Bangladesh, formality and substantive examination of the trademark applications are performed by the examiner at the same time. The examiner will examine the trademark application as to whether the provisions stated in sections 6, 8, 9, 10, 11, 67(1), and 120 of the TM Act, 2009 are violated. After examination of the application, if the examiner does not find any discrepancy in the formality or substantive examination, the examiner will give the order for journal publication of the trademark.
(c) Objection and its reply/hearing.
If the examiner, after completing the examination, finds any discrepancy in the formality or substantive examination, he, within 10 days from the date of completing the examination, serves a show cause notice in writing to the applicant in a proper form to clarify the issues raised in the notice (rule 15 of the TM Rules, 2015). After receiving the show cause notice, the applicant can either reply to the notice in writing or file an application for a hearing in proper form with the proper fee. The applicant can apply to extend the time for a further period of two months to reply to the notice or hear. However, in the absence of a reply in writing or an application for hearing, the application will be deemed to be abandoned by the applicant. Nevertheless, the application can be restored within five years by paying fixed government fees from the date of the abandonment notice. In case of an application for a hearing, the examiner will fix the date of the hearing within one month, and the DG or the examiner will hear the application. The applicant or his appointed advocate will appear in the hearing. After concluding the hearing and considering the submission or the reply of the applicant, the DG or the examiner will either refuse or accept the trademark application.
(d) Journal Publication.
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). After receiving the notification of journal publication, the applicant is to apply for publication of his application in the journal in a proper form and with the proper fee. If journal fees are not submitted within one month from the date of receipt of the journal notice, the application shall be deemed to be abandoned.
(e) Refusal of the trademark application.
Upon the dissatisfactory reply or hearing submission of the applicant, the examiner may refuse the application.
(f) Opposition case.
After the publication of the journal of the application, any person can file an opposition case to the Director General (DG) within 2 (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 within two months from the date of receiving such opposition case stating the grounds in support of the application and the statements against the allegations brought in the opposition case (rule 19 of the TM Rules, 2015) and send a copy of the counter statements to the opponent. After receiving the counter statements, the opponent shall submit the evidences in the form of an affidavit to the DG within two months from the date of receiving the counter statements and send a copy of the same to the applicant and in absence of submission of the evidence in form of affidavit, opposition case shall be deemed to be abandoned (rule 20 of the TM Rules, 2015). The applicant, after receiving the evidence of the opponent, shall submit the evidence in the form of an affidavit in support of the application, and not submitting the evidence is considered to be abandoned the application. The opponent, after receiving the evidence of the applicant, may submit the reply evidence within one month from the date of receiving of the reply evidence. The DG shall fix the date of hearing and serve a notice to the parties, giving one month’s time to appear in the hearing and after hearing the parties and considering the evidence on record, the DG or authorized officer shall refuse or accept the opposition case (rule 22 of the TM Rules, 2015).
(g) Registration.
After the journal publication of the trademark, if there is no opposition case within two months, 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). However, if in case of the filing opposition case within two months, the DG refuses the opposition case and the opponent does not prefer the appeal to the High Court Division (HCD) within sixty days from the date of the decision of the refusal of the opposition case, the applicant shall apply for a registration certificate with the proper form and fee. Furthermore, in case of preferring the appeal to the HCD, the applicant obtains the judgment and order affirming the decision of refusal of the opposition case from HCD or from both the High Court Division and Appellate Division in case filing Civil Petition for Leave to Appeal to Appellate Division of the Supreme Court of Bangladesh.
(h) Duration and renewal.
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 their trademark registration indefinitely subject to renewal after every ten years (section 22 of the TM Act, 2009 and rule 36 of the TM Rules, 2015).
(i) Remedies for the Decision of Refusal of the Trademark Application and Opposition Case.
Appeal to the High Court Division and Appellate Division of the Supreme Court of Bangladesh.
The applicant being aggrieved by the decision of the refusal of the trademark application or acceptance of the opposition case by the DG or the examiner, can prefer an appeal before the High Court Division (HCD) of the Supreme Court of Bangladesh within two months from the date of the decision (rule 50 of TM Rules, 2015). After hearing and considering the evidence, the HCD may allow or dismiss the appeal. In case of allowing the appeal, the applicant communicates the judgment and order to the DG for registration of the trademark if the respondent does not file the Civil Petition for Leave to Appeal (CPLA) within sixty days to the Appellate Division or CPLA is filed within sixty days, but the CPLA is dismissed. In case of the dismissal of the appeal by the HCD, the applicant can file the CPLA within sixty days from the date of the judgment and order to the Appellate Division of the Supreme Court of Bangladesh, and the Appellate Division may order the granting of leave or dismiss the CPLA, and thereafter, the Civil Appeal (CA) number is given in case of leave granting. After hearing the CA, the Appellate Division may allow or dismiss the CA. If the CA is allowed, the applicant shall communicate the judgment and order to the DG in case of filing no review petition and obtaining the stay order, or the review petition is filed, but the review is dismissed. The judgment and order of the review petition is the final order.
Conversely, the opponent can also prefer an appeal against the refusal of the opposition case within sixty days from the date of the refusal order of the opposition case to the HCD. If the appeal is allowed by the HCD, the applicant can file the CPLA to the Appellate Division within sixty days from the date of the judgment and order. The Appellate Division may order the granting of leave or dismiss the CPLA, and thereafter, the Civil Appeal (CA) number is given in case of leave granting. After hearing the CA, the Appellate Division may allow or dismiss the CA. If the CA is allowed, the applicant shall communicate the judgment and order to the DG in case of filing no review petition and obtaining the stay order by the opponent or the review petition is filed, but the review is dismissed. The judgment and order of the review petition is the final order.
