A trademark is a symbol, word, or phrase that identifies and distinguishes a company’s products or services from those of its competitors. Trademarks are valuable assets that can help businesses establish and maintain their brand identity. It also builds customer loyalty and prevents others from using similar marks that could cause confusion about the brand. A trademark registration certificate is an important step in protecting your brand in Bangladesh. A registered trademark provides legal protection against unauthorized use of the mark. It also allows the trademark owner to take legal action against infringers. In this guide, we will provide a step-by-step guide to the trademark registration process in Bangladesh. If you’re a business owner or entrepreneur, it will help you with obtaining a trademark registration certificate.
Eligibility & Requirements
Any individual, company, partnership firm, or legal entity can apply for trademark registration in Bangladesh. The applicant must be either the owner of the trademark or authorized to use it. If the applicant is a foreign entity, they must provide evidence of their legal presence in Bangladesh. Such a document could be a power of attorney from a local agent.
In Bangladesh, trademarks can be registered for any sign or combination of signs that can distinguish the goods or services of one enterprise from those of another. This includes words, names, symbols, logos, shapes, colors, and even sounds. However, the trademark must not be identical or similar to an existing trademark. Moreover, it also should not be used for identical or similar goods or services.
To apply for trademark registration, the applicant must provide the following documents and information:
- A completed application form
- A representation of the trademark in JPEG or PNG format
- A list of goods or services covered by the trademark
- Proof of payment of the application fees
- If the applicant is a foreign entity, a power of attorney from a local agent, or a certificate of incorporation or registration.
Additionally, the applicant must ensure a few things. Such as the trademark complies with the county regulations and does not contain any offensive or immoral content.
Before applying for trademark registration, it is important to conduct a preliminary search to ensure that the trademark you intend to register is available and does not infringe on any existing trademarks in Bangladesh. This search can save you time and money by identifying potential conflicts and avoiding unnecessary rejections or oppositions to your application.
The Bangladesh Trademark Database is available online where you can check Patents, Designs, and Trademarks. You can conduct a search by entering the proposed trademark name or image, or by using the class or description of goods and services related to your trademark. The database will show a list of registered and pending trademarks that are similar or identical to your proposed trademark.
After conducting a preliminary search, you should analyze the search results to determine the availability of your proposed trademark. If there are no identical or similar trademarks, your trademark may be eligible for registration. However, if there are any identical trademarks, you may need to modify your proposed trademark to avoid potential conflicts. It is recommended to seek the advice of a trademark attorney to help you interpret the search results and make informed decisions about your trademark.
Application Process Of Trademark Registration Certificate
Preparing the application form
You can file an application once you confirm your trademark’s eligibility and conduct a preliminary search for conflicts. The applicant can check if the mark is registered by filing an application in the TM-4 form. The check takes two weeks and costs BDT 1000.
Remember, separate applications should be made for goods or services in different categories. Mention the category of goods/services in the application form which will be found under Resource > NICE Classification.
Visit the DPDT website to find the trademark registration form (TM-1). Provide basic trademark information and a representation. Tips to simplify the application process:
- Application forms should be filled in ISO A4 size and a minimum of 80gsm paper.
- Details of Marks or Labels: Labels of moderate size and durable paper should be affixed at the specified place in the application form for affixing the label. No wrapper/packet/photocopy will be accepted as a label. The label must clearly identify (TM) which trademark is applied for. (R), BSTI, ISO, or any such organization’s logo shall not appear on the label without appropriate attestation. If there is any language other than Bengali/English in the label/logo, its translation and transliteration should be given in column 6 of the application form. If any person’s picture is used in the label/logo, no objection letter from the concerned person/guardian should be submitted.
- The description of the mark should be submitted in column 3 of the application form.
- Product/Service Details: The product/service details should be given in the prescribed space in the application form.
- In column 7 of the application form, the name and details of the individual (in case of Proprietorship) and the name and details of the company (in the case of Ltd.) should be mentioned in part B of the application form. If the applicant is a company, state the law under which the company is incorporated. For example- A company organized and existing under the laws of Bangladesh.
- The type of business of the company should be mentioned in part c of column 7 of the application form. Such as – exporters, importers and service providers.
- The full correspondence address of the applicant should be mentioned in Part A or Part B of Column No. 7 of the application form.
- Column No. 10 of the application form should mention the specific date of validity of the candidate mark. If the mark applied for is not already in use, write “Proposed to be used” in that space.
- Applicant’s full name, signature, designation, e-mail, and mobile/telephone number should be mentioned in the prescribed space of the application form.
- If the applicant makes a “Priority Claim”, he/she has to submit the necessary documents in support and fill column 11 of the application properly.
- If the applicant does not pay the journal fee within 01 (one) month of receiving the notice, the applied-for mark is declared abandoned by notice.
- On payment of the appropriate journal fee, the candidate mark is sent for printing to BG Press for publication in the journal.
- A period of 2 (two) months is fixed for opposition after printing from BG Press.
Submitting The Application
After completing the application form, you must submit it to the DPDT along with the required supporting documents, which include a power of attorney (if filing through an agent), a copy of the applicant’s national ID card or passport, and a priority document (if claiming priority from a foreign application). If the application is being filed by a legal entity, such as a corporation, then additional documentation, such as a copy of the company registration certificate and a board resolution authorizing the application, may also be required.
Paying The Application Fees for Trademark Registration Certificate
To apply for a trademark, you need to submit the application and required documents. Then, pay BDT 3500 application fee online or in-person at DPDT, which varies based on the number of goods or services covered. Note that the fee is non-refundable, regardless of the outcome. You’ll receive an acknowledgment receipt after submission. The Registrar will examine your application and issue a report either accepting it or raising objections. You can respond to objections and provide additional evidence to support your application. After acceptance, your trademark will be published in the Trademark Journal, and you’ll receive a registration certificate unless there is any opposition.
Examination & Publication
After submitting the trademark application and required documents, the Registrar will conduct an examination of the application to determine whether the trademark is eligible for registration. The Registrar will check for any similarities with existing trademarks, and whether the trademark complies with the requirements under the Trade Marks Act, 2009, and its rules. If there are any issues, the Registrar may raise objections or queries.
If the Registrar raises any objections or queries regarding the trademark application, the applicant will have an opportunity to respond and provide additional information or evidence to address the issues. This can include submitting a statement explaining why the trademark should be registered or providing evidence of prior use or ownership of the trademark.
If the Registrar determines that the trademark application meets all the requirements, the trademark will be published in the Trademark Journal. This publication serves as public notice of the application and allows any interested parties to file an opposition to the trademark registration within a certain timeframe.
The trademark will be published in the Trademark Journal for a period of four months. If no oppositions are filed during this time, the trademark will proceed to registration.
It is important to note that, A trademark can still be canceled or invalidated if it violates the Trade Marks Act, 2009, or other laws.
Opposition & Registration
After publication in the Trademark Journal, interested parties can file an opposition to the trademark application within 60 days. Grounds for opposition include similarity to an existing trademark, likelihood of deception or confusion, and conflict with existing law or morality.
If an opposition is filed, the Registrar will notify the applicant and provide an opportunity to file a counter-statement within two months. If the applicant fails to respond or the opposition is successful, the application will be refused. However, if the applicant successfully defends the opposition or the opposition is withdrawn, the Registrar will proceed with the registration process.
If the Registrar refuses the application, the applicant can appeal to the Intellectual Property Tribunal within 90 days. The Tribunal will conduct a hearing and decide whether to allow the registration or uphold the refusal.
The Registrar will issue the certificate to the applicant if there’s no opposition or if the opposition is successfully defended. The certificate is valid for seven years from the registration date and can be renewed indefinitely for ten-year periods.
After receiving the trademark registration certificate, the applicant has exclusive rights to use the trademark for specified goods or services. The trademark can be enforced against any third party that uses an identical or similar mark without the owner’s consent.
It is important to note that obtaining a trademark registration certificate is not the end of the process. Trademark owners must continue to use and maintain their marks to avoid losing their rights. Additionally, monitoring and enforcing trademark rights is crucial to prevent infringement and protect the brand’s reputation.
After obtaining a trademark registration certificate, there are several post-registration requirements you should be aware of to maintain your trademark protection in Bangladesh.
To keep your trademark registration active and enforceable, you must use your trademark while doing business in Bangladesh. Non-use of a trademark for five years can result in its cancellation by a third party. You should also monitor your trademark and take legal action against any infringers to protect your trademark rights.
Trademark registrations in Bangladesh are valid for an initial period of seven years. After which they must be renewed to remain in force. You can renew your trademark registration by filing a renewal application with a fee. You can file a renewal application up to six months before the expiration date of your trademark registration. However, you can also apply up to six months after the expiration date with a late fee.
Trademark owners should monitor their trademarks to prevent others from using confusingly similar marks or counterfeiting their products. You can take legal action against infringers by filing a trademark infringement lawsuit. The remedies available to trademark owners include injunctive relief, damages, and seizure of infringing goods.
Overall, post-registration requirements are essential to maintain and enforce your trademark rights in Bangladesh. By using your trademark, you can protect your brand and maintain its value.