For Your Information
How to register a trademark?
It is commonly misconceived that TRIPS, the agreement on trade related aspects of Intellectual Property Rights,has made it compulsory for Bangladesh to provide trademark protection on a larger scale (effective from 1st January 1995). Though TRIPS should be marked as a new era, references can be drawn from 150 years backin Bangladesh i.e. the Penal Code, 1860 which contains specific provisions for protecting trademark rights. Another law that was supplementing Penal Code in protecting merchandise marks from fraudulent use was the Merchandise Marks Act, 1889. Nevertheless, as time was pressing for a self-standing separate law for governing trademark related affairs, the Trade Marks Act, 1940 [Act No. V of 1940] was passed to provide more effective trademark right protection subject to obtaining registration.
After liberation (1971), the said three major laws i.e. Penal Code, 1860, Merchandise Marks Act, 1889 and Trade Marks Act, 1940 continued to be in operation to govern the affairs relating to trademarks until the enactment of the Trademarks Act, 2009 (Trademarks Ordinance was promulgated in 2008 complying with the requirements of the TRIPS). At present, the entire trademarks governance mechanism is dominantly governed by the Trademarks Act, 2009 (as amended in 2015) along with the Trademarks Rules, 2015. However, the provisions of Penal Code, 1860 still exist to give an extra hand to the 2009 Act.
Despite repeated changes in trademark related laws, the legal draftsmen were always predominantly concerned on the issue of obtaining trademark registration before seeking legal protection. Therefore, it is worth emphasizing on the significance of a registered trademark. This article is aimed to draw a simple and clear map in the readers' mind so that they can find this article practically effective.
Necessary steps in registering a trademark in Bangladesh are as follows:
Step 1: Trademark Filling
Any person who wants to be an owner of a trademark, may apply in writing to the Registrar, Department of Patents, Designs& Trademarks (DPDT) Bangladesh in the prescribed manner. All Trademark Forms (TM Forms) are available on the website of DPDT. Upon receipt of the application, DPDT usually issues Official filing receipt. The receipt copy contains all relevant filing details of the trademark e.g. application number, date of application, the amount of remittance, sample of the trademark, name of receiving officer and other necessary information. Multi-class (one application covering more than one class) trademark filing is not allowed in Bangladesh.
Step 2: Examination
New Trademark applications are examined by a trademark examiner within 2-4 months of filing. If TM application satisfies all requirements then the respective examiner, on behalf of Registrar, shall issue a letter of acceptance for the mark to be advertised in the "Trademarks Journal". If TM application does not satisfy all requirements, then the examiner will issue objection notice in this respect.
Step 3: Reply of objection or objection hearing
Any objection given by the examiner may be dissolved in two ways i.e. reply of objection and objection hearing. If the authority is satisfied after the representation or hearing, then the next step will be publication of the trademark to "Trademark journal". Otherwise, the original TM application will be treated as rejected and the trademark is denied to be registered by the authority.
Step 4: Trademark Journal Publication
Subject to the deposition of publication fees, the accepted mark is to be published in Trademark Journal provided the trademark has been accepted by the examiner.
Step 5: Opposition (If required)
When a trademark is advertised in the Trademark Journal, any person may oppose on Form TM-5 within 2 (two) months from the date of the publication.
Step 6: Registration
If no opposition is filed against the journal published trademark, then the applicant will be asked for depositing registration fees. Upon receiving the registration fee, the Registrar will issue the Registration Certificate within 2-6 months from the date of depositing of registration fees.
Step 7: Rectification:
Any person, who is aggrieved, may file rectification case in the prescribed manner against the impugned registered trademark either before the Registrar of Trademarks or before the Hon'ble High Court Division of the Supreme Court of Bangladesh to cancel its registration.
Validity of Trademark
Initially, a registered trademark is valid for 7 (Seven) years from the date of filing. On expiry, it is renewable for the period of 10 (Ten) years in each term to an indefinite period, subject to deposition of renewal fee.
Please be informed that you may find the trademark office making undue delays in forwarding the files than the processing time stipulated for each step. This is because of the shortage of employees that is causing huge workload on each of the office staffs.
Shaleh Akram Somrat is Advocate,
Supreme Court of Bangladesh.