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Filing and registration

Filing procedure

Do agents filing for registration of a mark on behalf of the owner require power of attorney? If so, is notarisation or legalisation required?

Yes, the agents filing for registration of a mark on behalf of the owner require power of attorney. Notarisation or legalisation is not required. A power of attorney on plain A4 size paper suffices for these purposes.

What information and documentation must be submitted in a trademark registration application?

The following information and documentation must be submitted in a trademark registration application:

  • the name of the mark, logo or device (prints or representations);
  • the applicant’s name and address;
  • the class and specification of the goods or services;
  • the usage date for the mark (ie, whether the mark is in use or proposed to be used in Bangladesh);
  • general or specific power of attorney, which subsequently may be filed; and
  • where a priority claim is being made, a certified copy of the priority document together with a certified English translation (if the priority document is not in English); the priority document must be filed within three months of the date of filing the application.

What rules govern the representation of the mark in the application?

The representation of the mark in an application is governed by Rule 19 of the Trademark Rules 1963.

Are multi-class applications allowed?

Multi-class trademark applications are prohibited.

Is electronic filing available?

No, electronic filing is unavailable.

What are the application fees?

The official fee for filing a trademark application is Tk3,500.

Priority

How are priority rights claimed?

The priority rights in an application for registration of a trademark are claimed by specifying the date and application number allotted to the application and furnishing a certified copy of priority application along with the applicable fees. 

Searches

Are trademark searches available or required before filing? If so, what procedures and fees apply?

Yes, there is a provision for trademark searches. Although there is no legal mandate, it is advisable to conduct a trademark search before filing a trademark application, as it is helpful for brand owners to evaluate the chance of successful registration of their mark in Bangladesh and plan a course of action against potential conflicts, if any.

A trademark search can be conducted by filing a search request in Form TM-4 and submitting the official fees, which amount to Tk1,000.

Examination

What factors does the authority consider in its examination of the application?

In its examination of the application, the authority considers:

  • the distinctiveness of the proposed marks;
  • any similarity with existing trademarks; and
  • other factors mentioned in Sections 8, 9 and 10 of the Trademarks Act. 

Does the authority check for relative grounds for refusal (eg, through searches)?

In its examination of the application, the authority considers:

  • the distinctiveness of the proposed marks;
  • any similarity with existing trademarks; and
  • other factors mentioned in Sections 8, 9 and 10 of the Trademarks Act. 

If the authority raises objections to the application, can the applicant take measures to rectify the application? If so, what rules and procedures apply?

Yes. If the authority raises objections against a trademark application, an applicant has three months to file a reply with the registrar and rectify the defects therein.

Can rejected applications be appealed? If so, what procedures apply?

Yes. Under Section 100(2) of the Trademarks Act 2009, rejected applications can be appealed before the High Court Division.

Registration

When does a trademark registration formally come into effect?

According to Section 20(c) of the Trademarks Act 2009, a trademark is registered with retrospective effect from the date on which the application is filed.

What is the term of protection and how can a registration be renewed?

The term of trademark protection is seven years and it can be renewed for 10 years.

What registration fees apply?

The registration fees payable for registration of a trademark (after it is accepted by the registry and overcomes third-party opposition, if any) and issuance of the registration certificate is Tk15,000.

What is the usual timeframe from filing to registration?

The usual timeframe for registering a mark is 24 to 30 months, depending on the registry’s backlog.

Opposition

Can third parties formally oppose an application? If so, on what grounds and what rules and procedures apply?

Yes, a third party can formally oppose an application.

Grounds of opposition A trademark application can be opposed on the following grounds:

  • the descriptiveness of the proposed mark;
  • its similarity with earlier marks; and
  • it lacks distinctiveness and hence is likely to cause confusion and deception among the general public and trade.

What is the usual timeframe for opposition proceedings?

As per Section 18(8), the usual timeframe for opposition proceedings is 120 days. Notice of opposition must be filed within two months of the date of the applicant’s advertisement. As per Section 18(8), the proceedings must be concluded within 120 working days of giving notice of opposition.

This timeframe is indicative and subject to change depending on the registry’s backlog.

Are opposition decisions subject to appeal? If so, what procedures apply?

Yes, decisions made by the registrar of the Department of Patents, Designs and Trademarks are subject to appeal before the High Court Division under Section 100(2) of the Trademarks Act 2009.

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