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Legal framework

Domestic law

What is the primary legislation governing trademarks in your jurisdiction?

The primary legislation governing trademarks in Bangladesh is the Trademarks Act 2009.

International law

Which international trademark agreements has your jurisdiction signed?

Bangladesh is a signatory to the following international agreements:

  • the Paris Convention for the Protection of Industrial Property; and
  • the Agreement on Trade-Related Aspects of Intellectual Property Rights.

Regulators

Which government bodies regulate trademark law?

In Bangladesh, the Department of Patent, Designs and Trademark (established under the Ministry of Industries) administers all activities relating to industrial property, including trademarks.

Rights and protection

Ownership

Is ownership of a trademark in your jurisdiction determined on a first-to-file or first-to-use basis?

The ownership of a trademark is usually determined on first-to-use basis, subject to adducing evidence of prior use of the mark in Bangladesh.

Unregistered trademarks

What legal protections are available to unregistered trademarks?

The rights in an unregistered trademark can be enforced through the common law remedy of passing off.

How are rights in unregistered marks established?

The rights in an unregistered mark are established through the use of the mark in commerce. This can be demonstrated by providing evidence of the existence of goodwill of the mark among the public and trade and the damage suffered to it due to misrepresentation by the infringing party.

Are any special rights and protections afforded to owners of well-known and famous marks?

In addition to injunctions, damages and accounts of profits, together with the delivery or destruction of infringing materials, Section 42 of the Trademarks Act permits defensive filing for a well-known mark even in respect of goods or services which are not covered or propose to be covered by the mark.  

To what extent are foreign trademark registrations recognised in your jurisdiction?

In accordance with international obligations under the Paris Convention for the Protection of Industrial Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights, foreign trademark registrations are recognised in Bangladesh to establish well-known marks.

Registered trademarks

What legal rights and protections are accorded to registered trademarks?

In accordance with Section 25 of the Trademarks Act, only the registered owner of a trademark can use the same and, in case of infringement of the registered mark, the owner reserves the right to initiate an infringement suit against the infringer before the court and obtain relief as enumerated in Section 97 of the act. Relief in this regard may include injunctions, damages or accounts of profits, together with delivery of the infringing material for destruction or erasure.

Who may register trademarks?

Any person or body corporate claiming to be the proprietor of a trademark may apply to the Department of Patent, Designs and Trademarks for registration of the mark.

What marks are registrable (including any non-traditional marks)?

As per Section 2(23) of the Trademarks Act, trademarks may comprise the following:

  • devices;
  • brands;
  • headings;
  • labels;
  • tickets;
  • names;
  • signatures;
  • words;
  • letters;
  • symbols;
  • numerals;
  • figurative elements; and
  • a combination of any of the above.

Can a mark acquire distinctiveness through use?

Yes, a mark can acquire distinctiveness through use.

On what grounds will a mark be refused registration (ie, absolute and relative grounds)?

Trademarks may be refused on absolute or relative grounds, as enumerated under Sections 8, 9 and 10 of the Trademarks Act.

Absolute grounds for refusal  Absolute grounds for refusal under Sections 8 and 9 of the act include the following:

  • The mark comprises or consists of any scandalous or obscene matter.
  • Use of the mark would be contrary to law.
  • Use of the mark would likely deceive or cause confusion.
  • The mark contains matter likely to hurt the religious susceptibilities of any class of Bangladeshi citizens.
  • The mark is identical to, an imitation of or contains as an element an armorial bearing, flag or other emblem; a name, abbreviation or initials; or an official sign or hallmark adopted by any state or international organisation created by an international convention, charter or other instruments, unless authorised by the competent authority of that state or organisation.
  • The mark would otherwise be denied protection in court.
  • The trademark application is made in bad faith.
  • The trademark is for a name which is commonly used and accepted as single chemical element or single chemical compound, and the applicant intends to use the same in respect of a chemical substance or preparation.

Relative grounds for refusal  The relative grounds for refusal under Section 10 of the act include the following:

  • The mark resembles a well-known trademark belonging to someone else.
  • The mark is incapable of distinguishing the goods or services of one enterprise from those of another enterprise.
  • The mark resembles a third-party mark or a mark in prior use that may or may not be used in connection with identical or similar goods.

Are collective and certification marks registrable? If so, under what conditions?

Collective marks are registerable by virtue of Section 122 of the act; certification marks are registerable by virtue of Section 58 of the act.  

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.

Removal from register

Non-use cancellation

Can a mark be cancelled for non-use? If so, what term of non-use applies and what is the procedure for cancellation?

Yes, a mark can be cancelled for non-use if it is not used consecutively for a five-year period from the date of registration.

Revocation

On what grounds can a trademark registration be revoked (eg, loss of distinctiveness, incorrect registration)?

A trademark registration can be revoked on the grounds that the impugned mark was registered without any genuine intention to use the mark and that up to one month before the date of the application, a continuous period of five years or longer elapsed during which:

  • the trademark was registered; and
  • there was no genuine use in relation to those goods or services by the proprietor.

Who may file a request for revocation and what is the statute of limitations for filing a request?

As per Section 42 of the Trademarks Act 2009, anyone can file a revocation request before the registrar or the High Court Division. However, the Trademarks Act 2009 does not prescribe a time limit for applying for revocation. Notably, if the proprietor of an earlier right acquiesces in the use of a later trademark for a five-year successive period, he or she can no longer file an application for invalidity on relative grounds (limitation in consequence of acquiescence).

What are the evidentiary and procedural requirements for revocation proceedings?

Anyone may approach the registrar or the High Court Division seeking cancellation of a registered trademark on the following grounds:

  • The petitioner company’s mark is well known and enjoys commercial reputation and goodwill across various jurisdictions in Bangladesh.
  • The registered owner has failed to use the mark for a five-year consecutive period following registration.
  • The registered owner was aware of the impugned mark’s goodwill and reputation and had thus filed an application for registration of the mark with a genuine intent to encash on the commercial reputation and goodwill.
  • The mark is devoid of distinctive character because it is similar or identical to the petitioner’s mark.

In addition to the above, various documents can be adduced as evidence to substantiate the claims (including copies of worldwide registrations).

Appeal

What is the appeal procedure for cancellations or revocations?

As per Section 100(2) of the Trademarks Act 2009, appeals against a registrar order or decision can be made with the High Court Division. The Code of Civil Procedure applies to applications and appeals to the High Court Division under Section 100(2).

Surrender

What is the procedure for surrendering a trademark registration?

A trademark registration can be surrendered by filing the request with the Department of Patents, Designs and Trademarks.

Enforcement

Jurisdiction

Which courts are empowered to hear trademark disputes?

According to Section 96, the district courts are empowered to hear trademark disputes.

Actions

What actions can be taken against trademark infringement (eg, civil, criminal, administrative), and what are the key features and requirements of each?

The following remedies are available for trademark infringement.

Civil remedies Civil remedies include:

  • an injunction restraining further use of the infringing mark;
  • damages or an account of profits; and
  • an order for delivery up of infringing labels and marks for destruction or erasure.

Criminal remedies Under the Penal Code, the punishment for infringement is imprisonment for up to two years but no less than six months, a fine of up to Tk200,000 but no less than Tk50,000 or both. For a second or subsequent conviction, the punishment is imprisonment up to three years but no less than one year, a fine of up to Tk300,000 but no less than Tk100,000 or both. The courts also have the power to set the prison term and the amount of any fine.

Who can file a trademark infringement action?

Registered trademark owners may file trademark infringement actions.

What is the statute of limitations for filing infringement actions?

The Limitation Act 1908 sets out the statute of limitations for filing infringement actions.

What is the usual timeframe for infringement actions?

As per Section 86 of the Trademarks Act, the usual timeframe for infringement actions is three years from the date on which the cause of action arose.

Injunctions

What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?

The Specific Relief Act 1877 sets out the rules and procedure governing the issuance of injunctions to prevent imminent or further infringement.

Remedies

What remedies are available to owners of infringed marks? Are punitive damages allowed?

The following remedies are available for trademark infringement.

Civil remedies Civil remedies include:

  • an injunction restraining further use of the infringing mark;
  • damages or an account of profits; and
  • an order for delivery up of infringing labels and marks for destruction or erasure.

Criminal remedies Under the Penal Code, the punishment for infringement is imprisonment for up to two years but no less than six months, a fine of up to Tk200,000 but no less than Tk50,000 or both. For a second or subsequent conviction, the punishment is imprisonment up to three years but no less than one year, a fine of up to Tk300,000 but no less than Tk100,000 or both. The courts also have the power to set the prison term and the amount of any fine.

Customs enforcement

What customs enforcement measures are available to halt the import or export of infringing goods?

In Bangladesh, all trading activities are regulated by the Ministry of Commerce under the Imports and Exports (Control) Act 1950. Upon receiving a complaint from a rights holder, the relevant customs authority may take steps against any person or entity that imports goods in violation of Sections 15 and 16 of the Customs Act. Section 15 of the Customs Act prohibits the import of goods, whether by air, land or sea, that fall within the following categories:

  • goods marketed under a counterfeit trademark or false trade description;
  • goods made or produced outside Bangladesh and intended for sale under a copyrighted design under the Patents and Designs Act in respect of the class to which the goods belong or any fraudulent or obvious imitation of such design without a licence or the rights holder’s written consent; and
  • goods made or produced outside Bangladesh and marketed under any name or trademark being or purporting to be the name or trademark of any manufacturer, dealer or trader in Bangladesh.

As per Section 17 of the Customs Act:

if any goods bearing registered trademarks are imported into or attempted to be exported out of Bangladesh in violation of the provision of Section 15 or of a notification under Section 16, such goods shall, without prejudice to any other penalty to which the offender may be liable under this act or any other law, be liable to be detained and confiscated and shall be disposed of in such a manner as may be prescribed.

A rights holder may also approach the High Court Division to obtain an order directing Customs to detain or seize the counterfeit goods. 

Defence

What defences are available to infringers?

In case of infringement of a trademark, the defendant may use the following defences:

  • doctrine of laches (if applicable);
  • doctrine of estoppel (if applicable);
  • dissimilarity between the marks (in cases where the plaintiff alleges similarity between the marks);
  • the nature of the defendant’s goods are entirely different from that of the plaintiff;
  • the defendant’s customer base is entirely different from that of the plaintiff; and
  • the defendant’s goods and services are distinguishable from the plaintiff’s goods and services.

Appeal

What is the appeal procedure for infringement decisions?

Anyone aggrieved by the district judge order may appeal to the High Court Division.

Assignment and licensing

Assignment

What rules and procedures govern the assignment of trademark rights? Must an assignment be recorded to have legal effect?

Sections 33 to 40 of the Trademarks Act 2009 set out the rules and procedures governing the assignment of a trademark. The assignment must be recorded to have legal effect.

Licensing

What rules and procedures govern trademark licensing? Must a licensing agreement be recorded to have legal effect?

Sections 44 to 45 of the Trademarks Act 2009 provide for the licensing of trademarks. The license agreement must be recorded in writing to have legal effect.

What provisions are typically included in a licensing agreement (eg, quality control clauses)?

The Trademark Act 2009 does not expressly mention the provisions that should be included in a licensing agreement. 

Security interest

Can a security interest be registered over a trademark? If so, what rules and procedure apply?

No specific provision governs the registration of a security interest over a trademark.

Related rights

Related IP rights

Can trademarks be protected under other IP rights (eg, copyright, designs)?

Yes, trademark logos can be protected under copyright law.

Online issues

Trademarks online and domain names

What regime governs the protection of trademarks online and domain names?

No specific law governs the protection of trademarks online.