The A to Z of registering a trademark in Bangladesh
Rubiaat Hasan Sawon
Trademark means the trade name or name, domain name, word, phrase, logo, symbol, color, design, image, slogan, or combination of such elements. It is the representation of an enterprise's name, goodwill, or reputation via symbol, sign or otherwise. A registered trademark is identifiable with the circled R whereas the unregistered ones are often identified by signs like TM or SM. Below are the steps involved in registering a trademark.
Filing Application for Registration
The process of registration initiates by filing an application to the 'Trademarks Registry Wing' of Department of Patents, Designs and Trademarks (DPDT). Application for registration could be filed in head office or branch offices. Point to be kept in mind during application is, which are registrable as trademark and which are not. Sections 8, 9, 10 lays down certain matters that are not registrable.
Trademark for certain class of goods or services is permitted too and for every class of goods or services there should be separate application. Distinctiveness being the core criteria of having registration, the Act explained "Distinctive Mark" as, "a trademark which distinguishes the goods or services, as the case may be, of the proprietor from the goods or services, of the same kind in another enterprise's trade or business".
Acceptance or Refusal by the Registrar
Upon application, the Registrar is at liberty to accept the application absolutely or conditionally (subject to amendments, modifications, limitation as Registrar thinks fit) or refuse the same along with recording grounds for doing so. Even after acceptance, the Registrar can withdraw the acceptance if he finds any error or circumstances making the application conditional. But the applicant is given a chance of hearing for such withdrawal.
Advertisement
Next step of the process is "Advertisement" where Registrar advertises the application after acceptance (sometimes exceptionally even before acceptance). Within two months of such advertisement there could be "opposition claim" against which the applicant is required to file "counter-statement" within two months of receiving notice for doing so. The proceeding is to be concluded within 120 days. Registrar would communicate with both parties and upon hearing claim of both, may permit the registration absolutely or conditionally. For applicant or opposer residing outside Bangladesh, security for costs of the proceeding needs to be given without which the opposition or application maybe abandoned. Registrar is vested with the power of correcting errors in application as well as opposition claim or counter-statement.
Final Decision
Finally, upon unconditional acceptance or unopposed application or opposed and decided application, the Registrar would register the trademark in the concerned Register giving effect of the trademark from the date of the making the application. A certificate is issued as proof of registration in Trademarks Registry and Registrar is empowered to mend "clerical errors or obvious mistakes" even after issuance of certificate.
Term of registration
The initial registration subsists for seven years after which there could be renewal of the same for 10 years (again and again) upon fulfilling the conditions of paying fees and others. In default of fulfilling these conditions, the registrar can remove the trademark from the register. The applicant can apply for restoration of such removal within 1 year of removal.
An unregistered Trademark is protectable too via common law tort known as "passing off". Our Act expressly saves this right through 24(2) along with mandating the general bar in bringing actions for unregistered trademark. Registration vests the proprietor with exclusivity in regard to that good or service as well as right to transmit/assign the same. Whereas for transfer or assignment of unregistered trademark, vesting of goodwill is needed. So, it is advisable to have the registration of Trademark in order to enforce the claim over any goods or service easily in a hassle-free manner and for ease of assignment or transmission.
The writer is an LLM student at the University of Dhaka.