The Trademarks act 2009 inBD

1. TRADEMARKS
THE TRADE MARKS ACT, 2009

2. Trademarks
A trademark is a word, phrase, symbol, and design that identifies and design that
identifies and distinguishes the goods of one party from another. Any person
claiming to be the proprietor of a trademark already in use or proposed to be used
in Bangladesh may apply for registration of a Trademark. Any name, individual or
firm represented in a distinctive manner, signature or photograph, one or more
invented words, one or more words having no direct reference to the character or
quality of the goods, a mark distinctive of the goods to which it is to be applied,
marks consisting of letters, numerals or combinations thereof may be registered.

3. REQUIREMENTS
To enable us to complete the Application Form we need the following information:
 Full name, street address and nationality of applicants.
 Whether applicants are manufacturers/merchants/provider of services.
 Goods or Services for which the mark is to be registered.
 Whether the mark is:- Being used in Bangladesh by the proprietors, Proposed to be
used in Bangladesh by the proprietors, Proposed to be used in Bangladesh by a
body corporate to be constituted, Proposed to be used in Bangladesh by a
registered user (in which case an application for registration of registered user must
be filed simultaneously).
 Status of Applicant, whether the applicant is manufacturer, merchant, service provider
etc.

4. AUTHORIZATION
 Signed by applicant or by an officer of the applicant company, whose position in
the company should be stated including the corporate seal. It is not necessary to
notarize or legalize the authorization. You can download the authorization from
this web by clicking download forms. Please note, without the Authorization it is
not possible to file the Trademark Application. We will request to provide scanned
copy of the Authorization at the time of instruction. Otherwise, we will not be able
to file the application.

5. Time limit for proceeding with application
 Applications are required to be completed within 12 months. This regulation is not
likely to be strictly enforced until the registry is functioning normally. however,
application for a time extension may be made in the prescribed manner to assure
that the trademark application is kept alive.
 Response time for the main office action is three months. In subsequent actions,
registrar usually fixes 30 days for reply. Reasonable extensions of time are
available, sometimes up to two years if regularly applied for Applications are rarely
abandoned by the Registrar, and only after issuing a final notice.

6. Assignment and recordation
 Assignments must be recorded with the authority. Registered marks may be
assigned with or without the goodwill of the business. In the latter case the
Registrar directions should be sought within six months of execution of the
assignment. Unregistered marks should ordinarily be assigned with the goodwill
of the business. Assignment without the goodwill is permitted

7. Publication and Opposition
 Every application accepted by the Registrar will be published in the Trade Marks
Journal together with any limitations, disclaimers, etc.
 Under the new law opposition may be lodged within 60 days from the date of
advertisement of the application in the Trade Marks Journal stating the grounds
therefore. The applicant may file a counterstatement and offer evidence by way
of affidavits; the Registrar will render a final decision after hearing the parties.
Appeal to High Court available to applicant or respondent upon adverse
decision.

8. Limitation and renewal
 Trademarks are registered for a term of seven years from the date of application
and may be renewed for 10-year. Renewal fees must be paid at least three months
before the expiry. In case registration of a mark is still pending seven years after
filing the application, registration and renewal fees must be paid simultaneously.
Late renewals available, normally up to four months after expiry date, with
payment of late fees. Extensions at the direction of registrar are liberally granted
with payment of additional fees.

9. if…………………………..
 (a) at the time of assignment or transmission the mark is used in the same business as
a registered trademark;
 (b) the registered trademark is assigned or transmitted at the same time and to the
same person as the unregistered mark; and
 (c) the unregistered mark relates to goods for which the registered mark is assigned or
transmitted.
 The Registrar’s advice should be sought prior to execution of an assignment that
creates multiple exclusive rights, or that creates multiple exclusive rights in different
parts of the country, since such an assignment may be invalid. Associated trademarks
are assignable only as a whole; assignment of certification marks requires government
approval. Documents required for assignment: Legalized Deed of Assignment and
power of attorney from the assignee.

10. Licensing and Registered Use
 licenses must be recorded with the authority to be effective. Application for
recordable must be made within one year of date of document for effective date,
whichever is earlier. Documents for license: Legalized license deed; power of
attorney from registered proprietor; power of attorney from proposed licensee;
affidavit from registered proprietor.