A trademark is a distinctive sign which identifies certain goods or services as those produced or provided by a specific person or enterprise. Its origin dates back to ancient times when craftsmen reproduced their signatures or “marks” on their artistic or utilitarian products. Over the years these marks evolved into today’s system of trademark registration and protection. The system helps consumers identify and purchase a product or service because its nature and quality, indicated by its unique trademark, meets their needs.
A trademark provides protection to the owner of the mark by ensuring the exclusive right to use it to identify goods or services or to authorize another to use it in return for payment. The period of protection varies, but a trademark can be renewed indefinitely beyond the time limit on payment of additional fees. Trademark protection is enforced by the courts, which in most systems have the authority to block trademark infringement.
In a larger sense, trademarks promote initiative and enterprise worldwide by rewarding the owners of trademarks with recognition and financial profit. Trademark protection also hinders the efforts of unfair competitors, such as counterfeiters, to use similar distinctive signs to market inferior or different products or services. The system enables people with skill and enterprise to produce and market goods and services in the fairest possible conditions, thereby facilitating international trade.
Following marks can be registered as a Trademark in Bangladesh under the Bangladesh Trademarks Law:-
• Invented / Coined Words
• Combination of colors
• Shape of goods
In addition to trademarks identifying the commercial source of goods or services, several other categories of marks exist. Collective marks are owned by an association whose members use them to identify themselves with a level of quality and other requirements set by the association. Examples of such associations would be those representing accountants, engineers, or architects. Certification marks are given for compliance with defined standards but are not confined to any membership. They may be granted to anyone who can certify that the products involved meet certain established standards. The internationally accepted “ISO 9000” quality standards are an example of such widely-recognized certifications.
In a nutshell, first, an application for registration of a trademark must be filed with the appropriate national or regional trademark office. The application must contain a clear reproduction of the sign filed for registration, including any colors, forms, or three-dimensional features. The application must also contain a list of goods or services to which the sign would apply. The sign must fulfill certain conditions in order to be protected as a trademark or other type of mark. It must be distinctive so that consumers can distinguish it as identifying a particular product, as well as from other trademarks identifying other products. It must neither mislead nor deceive customers or violate public order or morality.
Finally, the rights applied for cannot be the same as, or similar to, rights already granted to another trademark owner. This may be determined through search and examination by the national office, or by the opposition of third parties who claim similar or identical rights.
Here are the details description in stage by stage,
Trademark application in Bangladesh can be filed in two categories:
(1) Ordinary Applications
(2) Convention Application (claiming priority from a convention country)
Ordinary trademark applications filed in Bangladesh are applications without claiming any priority. Ordinarily a trademark application is filed on form TM-1. Multi class trademark applications cannot be filed in Bangladesh. However, the Trademarks Act also lays down provisions regarding the filing of priority applications, wherein priority of the mark can be claimed in the said mark filed in a convention country.
A priority trademark application/convention trademark application should be filed in Bangladesh within 6 months after the date on which the application was made in the convention country. A certified copy of the priority documents needs to be filed within 3 months from the date of filing of the convention application in Bangladesh.
A trademark application in Bangladesh can be filed in the prescribed manner for a single class only to the Registrar of Trademarks and obtaining the application number. Multi-class trademark applications cannot be filed in Bangladesh. Application for a Trademark or a Priority Trademark Application claiming priority from a convention country can also be filed in Bangladesh within 6 months from the priority date.
Filing Requirements of a Trademark in Bangladesh
An application for the registration of a trademark shall include the following;
1. Name and full address of the Applicant, if the applicant is a company the name and position (like Director, Chairman) of the signatory also be required
2. Status of the applicant whether the applicant Merchandisers/ Manufacturers/Service Providers or both.
3. Mark/Logo/Device prints or representation and it’s description whether it is word mark or device mark or combined mark.
4. Specification of Goods/Services and Class, Specification should be given as per international ‘NICE classification’ agreement.
5. Use date of the mark in Bangladesh (whether the mark is in use or proposed to be used in Bangladesh).
6. Power Of Attorney (Original or Notarization or Legalization does not require, only SCANNED copy is sufficient)
7. Prescribe fee
8) Priority: There is a provision for priority application in Bangladesh. In this respect the applicant for registration of a trademark who desires to avail himself of the priority of an earlier application filed in a convention country shall, within 6 months of the date of such earlier application, append to his application a written declaration indicating the date and number of the earlier application. Furnish a copy of the earlier application certified as correct by the appropriate authority of the country where such application was filed earlier. Verified/ notarized English translation of the priority document if priority document is in any language other than English.
Who Can Apply?
Anyone claiming to be the proprietor of a trademark may apply to the Registrar for the registration of the mark. Both National and foreigners have equal right in this regard but a foreign applicant must be represented by a local agent.
Substantive and Formalities Check of a trademark in Bangladesh
After an application is filed, the Registrar examines the trademark for distinctiveness, identical or similarity with existing registered trademarks and general compliance with the requirements of the Law. If the Registrar is satisfied, he issues a Letter of Acceptance for the mark to be advertised in the Trademarks Journal for opposition purposes (smooth case). Otherwise, the Registry raised objection/ refusal notice (OFFICE ACTION) and seeking written reply regarding objections or refusal notice (non-smooth case).
Timeline: in a smooth case the acceptance will be published 6 to 8 months from the date of filing.
If there is no office action or notice
After examination, if the Examiner is satisfied as above (in stage-2), the Registrar accepts the mark for advertisement in the Trademarks Journal for opposition purposes.
8 to 12 months from the date of the publication fee deposited.
Two Months from the date of publication.
Where no opposition is received or the opposition is determined and resolved in favor of the Applicant, the Registrar is obliged to issue a Certificate of Registration for the trademark on payment of the Prescribed fee. A registered trademark is valid for an initial period of seven (7) years from the date of filing and renewable thereafter for successive periods of Ten (10) years.
6 to 8 months from the date of publication if there is no opposition.
Term of Registration
A registered trademark is valid for an initial period of seven (7) years from the date of filing
Term of Renewal
A registered trademark is renewable thereafter for successive periods of Ten (10) years.
Trademark Renewal in Bangladesh
A trademark can be renewed in Bangladesh from time to time for an unlimited period upon payment of the renewal fees, failing which the mark becomes liable to be removed from the Register on account of non-renewal. Each renewal term is for a period of 10 years.
Application for renewal of a trademark may be made to the Registrar in the prescribed manner, not more than six (6) months before the expiration of the last renewal. Renewal is for Ten (10) years. A Certificate of Renewal is issued by the Registrar as evidence of payment of the renewal fee due at that period.
How extensive is trademark protection?
Almost all countries in the world register and protect trademarks. Each national or regional office maintains a Register of Trademarks which contains full application information on all registrations and renewals, facilitating examination, search, and potential opposition by third parties. The effects of such a registration are, however, limited to the country (or, in the case of a regional registration, countries) concerned.
In order to avoid the need to register separately with each national or regional office, WIPO administers a system of international registration of marks. This system is governed by two treaties, the Madrid Agreement Concerning the International Registration of Marks and the Madrid Protocol. A person who has a link (through nationality, domicile or establishment) with a country party to one or both of these treaties may, on the basis of a registration or application with the trademark office of that country, obtain an international registration having an effect in some or all of the other countries of the Madrid Union.