by AP | Jan 6, 2025 | Knowledge Base
Securing a trademark is essential for protecting your brand’s identity and ensuring its recognition in the marketplace. However, the trademark registration process in Bangladesh can be complex, and missteps can lead to delays, rejections, or even legal disputes. To help you direct the process smoothly, here are 10 common mistakes to avoid when registering a trademark in Bangladesh.
1. Choosing a Trademark That Lacks Distinctiveness
One of the most common mistakes is selecting a trademark that is too generic or descriptive. A strong trademark should be unique and capable of distinguishing your goods or services from others. Avoid common phrases or symbols that do not stand out.
2. Failing to Conduct a Thorough Trademark Search
Before applying for trademark registration, conducting a comprehensive trademark search is crucial to ensure your desired mark is not already registered or in use. Overlooking this step can lead to conflicts and application rejections.
3. Not Understanding the Trademark Classification System
Trademarks in Bangladesh are registered under specific classes based on the goods or services they represent. Failing to select the correct class or registering in too few classes can limit your protection and cause issues.
4. Delaying the Filing Process
Delaying the trademark registration process can be risky. A competing business might register a similar trademark during your delay, leading to potential disputes and loss of priority rights.
5. Providing Incomplete or Incorrect Information
Submitting incomplete or inaccurate details in your application can cause unnecessary delays or even outright rejection. Ensure that all required information, including applicant details and a clear representation of the mark, is accurate.
6. Ignoring Local Laws and Practices
Each country has unique trademark laws and practices. In Bangladesh, understanding the Trade Marks Act 2009 and its regulations is essential to avoid procedural errors.
7. Overlooking the Importance of Trademark Renewal
Trademark registration in Bangladesh is valid for 7 years primarily and must be renewed before expiration. Failing to renew your trademark can result in its cancellation, leaving your brand unprotected.
8. Assuming International Protection
Registering a trademark in Bangladesh does not automatically provide international protection. If you plan to expand your business overseas, consider filing for international trademarks through mechanisms like the Madrid Protocol.
9. Skipping Professional Assistance
While it is possible to file a trademark application independently, the process can be intricate. Engaging an experienced trademark attorney or IP law firm, like Alshim & Partners, ensures your application is correctly prepared and reduces the likelihood of errors.
10. Neglecting to Monitor and Enforce Your Trademark
Registering your trademark is only the first step. Regularly monitoring its use in the market and taking action against potential infringements are critical to maintaining its value and integrity.
Final Thoughts
Avoiding these common mistakes can save time, money, and frustration in the trademark registration process. By seeking professional guidance, you can secure your trademark and protect your brand’s identity in Bangladesh’s market. For expert assistance with trademark registration, contact Alshim & Partners today.
by AP | Sep 6, 2024 | Knowledge Base
Businesses and individuals looking to protect their brand identity must conduct a trademark search in Bangladesh. A thorough trademark search ensures that the proposed mark (logo, name, slogan, etc.) is unique and does not infringe on existing trademarks, preventing potential legal disputes. It is highly recommended that a search be conducted before filing a trademark application.
In Bangladesh, one can conduct a trademark search through the Department of Patents, Designs, and Trademarks (DPDT) using a manual procedure since an online database search is currently unavailable. This process requires searching the DPDT database to see if someone has already registered or is in the process of registering a similar or identical trademark. The search offers valuable insights into the likelihood of successfully registering a trademark in Bangladesh.
Consider the following steps when conducting a trademark search in Bangladesh:
1. Preliminary Search: You can perform an informal search to get a basic idea of whether a similar trademark exists in the Trademark Registry. Although not mandatory, conducting a preliminary search is advisable to reduce the chances of rejection. This search typically takes 2-3 business days.
2. Official Search Request: You can submit an official request to the DPDT for a more in-depth or comprehensive search. This process provides a detailed report of any conflicting trademarks and usually takes 10-15 business days.
3. Professional Assistance: Hiring a trademark attorney or intellectual property specialist can be helpful, especially when interpreting search results or dealing with potential conflicts.
Contact us today for a trademark search that suits your needs – whether it’s basic, comprehensive, or completely customized. We offer jargon-free assessments to help you protect your brand.
by AP | May 31, 2024 | Knowledge Base
Introduction
Trademark infringement is a significant concern for businesses and individuals who seek to protect their brand identity. In Bangladesh, trademark laws are designed to protect the rights of trademark owners and to ensure fair competition in the market. This article provides a detailed analysis of trademark infringement in Bangladesh, exploring the legal framework, enforcement mechanisms, common issues, and practical considerations for trademark holders.
Legal Framework
The primary legislation governing trademarks in Bangladesh is the Trademark Act of 2009. This act outlines the procedures for trademark registration, the rights of trademark owners, and the remedies available in case of infringement.
What is Trademark Infringement
According to the Trademark Act, 2009, trademark infringement occurs when a person uses a trademark that is identical or deceptively similar to a registered trademark without the permission of the trademark owner. This includes the unauthorized use of logos, names, symbols, and other identifiers that can cause confusion among consumers.
Criteria for Infringement
For a successful claim of trademark infringement, the following criteria must be established:
- The plaintiff must own a valid registered trademark in Bangladesh.
- The defendant must have used a mark that is identical or similar to the plaintiff’s trademark.
- The unauthorized use must be in connection with goods or services that are identical or similar to those for which the trademark is registered.
- The use must be likely to cause confusion among consumers.
Remedies for Infringement
There are several remedies available for trademark infringement action in Bangladesh. The legal framework provides both civil and criminal remedies to protect trademark owners’ rights, alongside measures involving customs authorities.
Civil Remedies:
1. Injunctions: Trademark owners can seek an injunction to stop the infringer from continuing the unauthorized use of their trademark. This can be either a temporary injunction, in other word ad-interim i, to provide immediate relief, or a permanent injunction, to offer a long-term solution.
2. Damages: The court can award damages to the trademark owner for the losses suffered due to the infringement. This compensation aims to cover the financial impact, including lost profits and harm to the brand’s reputation.
3. Accounts of Profits: Instead of, or in addition to, damages, the court can order the infringer to hand over the profits made from the unauthorized use of the trademark.
4. Delivery Up and Destruction of Infringing Goods: The court may order that all infringing goods, packaging, and related materials be delivered to the trademark owner or destroyed, preventing further misuse.
5. Legal Costs: The court may also order the infringer to pay the legal costs incurred by the trademark owner in pursuing the case.
Criminal Remedis:
1. Fines: The infringer may be subjected to monetary penalties. These fines act as a deterrent to prevent future infringements and are intended to punish the infringing party.
2. Imprisonment: In severe cases, the infringer can face imprisonment. The duration of the sentence varies depending on the nature and extent of the infringement.
3. Seizure of Goods: Authorities can seize counterfeit and infringing goods. This prevents further distribution and sale of these products in the market.
4. Prosecution: Criminal prosecution can be initiated against individuals or entities responsible for trademark infringement, leading to trials and possible convictions.
Additionally, the Penal Code, 1860 of Bangladessh, stipulates that an offender may be punished with either simple or rigorous imprisonment for a term of up to three years, or with a fine, or with both.
Customs Enforcement for Trademark infringement in Bangladesh
The Customs Act, 1969 includes provisions for the prevention of import and export of counterfeit goods.
1. Border Measures: Customs authorities in Bangladesh have the power to inspect goods entering or leaving the country. They can identify and seize counterfeit or infringing goods at the border, preventing them from reaching the market.
2. Recordation with Customs: Trademark owners can register their trademarks with customs authorities. This proactive measure allows customs officials to monitor and intercept infringing goods more effectively.
3. Destruction of Seized Goods: Once infringing goods are seized, customs authorities may order their destruction to ensure they do not re-enter the market.
4. Cooperation with Trademark Owners: Customs authorities often work closely with trademark owners to identify and combat the import and export of counterfeit goods. This collaboration enhances the enforcement of trademark rights at the border.
Common Issues in Trademark Infringement
Counterfeiting
Counterfeiting is a prevalent issue in Bangladesh, where counterfeit goods bearing fake trademarks flood the market. This not only affects the revenues of genuine trademark owners but also poses risks to consumers.
Parallel Imports
Parallel imports, also known as grey market goods, involve the importation of genuine trademarked goods without the authorization of the trademark owner. While not always illegal, this practice can undermine the trademark owner’s control over their brand.
Domain Name Infringement
With the rise of e-commerce, domain name infringement has become a common problem. Cybersquatters register domain names that are identical or similar to well-known trademarks, intending to profit from the trademark owner’s reputation.
Practical Considerations for Trademark Holders
Trademark Registration
To enjoy legal protection, trademark owners must register their trademarks with the DPDT. The registration process involves:
- Filing an application: Submitting the necessary documents and fees.
- Examination: The DPDT examines the application for any conflicts with existing trademarks.
- Publication: If no conflicts are found, the trademark is published in the official gazette.
- Registration: If no opposition is filed within the prescribed period, the trademark is registered.
Monitoring and Enforcement
Trademark owners should actively monitor the market for potential infringements in Bangladesh. This includes:
- Market Surveillance: Regularly checking the market for counterfeit goods.
- Online Monitoring: Keeping an eye on e-commerce platforms and domain name registrations.
- Legal Action: Promptly taking legal action against infringers to prevent damage to the brand.
by AP | May 28, 2024 | Knowledge Base
Trademark rights are crucial for businesses to protect their brand identity and ensure that consumers can distinguish their products and services from those of competitors. In Bangladesh, trademark protection is governed by the Trademarks Act, 2009, and administered by the Department of Patents, Designs, and Trademarks (DPDT). This article provides an in-depth look at the framework for trademark rights protection in Bangladesh, including the registration process, enforcement mechanisms, and recent developments.
Legal Framework
The primary legislation governing trademarks in Bangladesh is the Trademarks Act, 2009. This Act replaced the earlier Trade Marks Act of 1940, modernizing the legal framework in line with international standards such as the TRIPS Agreement (Trade-Related Aspects of Intellectual Property Rights). The Trademarks Rules, 2015, provide detailed procedures for the implementation of the Act.
Definition of Trademark
A trademark is a symbol or sign that identifies the source of goods, distinguishing the goods or services of one entrepreneur from those of another. According to the Trade Mark Act, 2009, a “trademark” refers to a registered mark or a mark used in relation to goods or services, indicating a connection in the course of trade between the goods and the person who has the right to use the mark, either as proprietor or as a registered user (Section 2(8)). In Bangladesh, the term “trademark” also encompasses service marks (Section 2(8)(a)(ii)).
Trademark Protection by Registration
Trademark protection is essential for trademark proprietors, ensuring smooth industrial development and profitability through exclusive usage rights. Article 16.1 of the TRIPS Agreement grants trademark owners the exclusive right to prevent third parties, without the owner’s consent, from using identical or similar signs for goods or services that could cause confusion. If identical signs are used for identical goods or services, confusion is presumed.
In Bangladesh, trademark protection is secured through registration. Besides registered proprietors, others can obtain trademark protection as registered users, through licenses, or via assignment or transmission. Provisions against trademark infringement and falsification also play a critical role in safeguarding trademark rights.
The law prohibits trafficking in trademarks. Some marks and brands, due to their extensive use and popularity, are recognized as well-known marks. Articles 16.2 and 16.3 of the TRIPS Agreement mandate protection for these well-known marks. The 2009 Act extends protection to well-known marks, even if they are unregistered.
Conditions of Trademark Registration
To obtain trademark registration, a mark must be either inherently distinctive or have acquired distinctiveness through use. Any sign capable of distinguishing the goods or services of one entity from those of another, including service marks, is eligible for trademark registration (TRIPS Agreement, Article. 15.1). Trademarks can include words, logos, slogans, colors, and even sounds. In Bangladesh, the fundamental requirements for registering a mark are aligned with international treaties such as the Paris Convention and the TRIPS Agreement.
Besides, the following mark or part of mark shall not be registered as a trademark-
i) which comprises or consists of any scandalous or obscene matter;
ii) the use of which would be contrary to any law for the time being enforce;
iii) the use of which would be likely to deceive or cause confusion; or
iv) which contains any matter likely to hurt the religious susceptibilities of any classes of the citizen of Bangladesh;
v) which is identical with, or is an imitation of, or contains as an element, an armorial bearing, flag or other emblem, a name or abbreviation or initials of the name of, or official sign or hallmarked adopted by, any state or international organization created by an international convention, charter or other instruments under section 8 of the Trademark Act, 2009.
Implementing National Treatment, Priority, and Cross-Border Reputation Principles in Bangladesh
National treatment means that, with respect to the protection of industrial property, each country party to the Paris Convention or the TRIPS Agreement must grant the same protection to nationals of other member countries. This obligation is outlined in Articles 2 and 3 of the Paris Convention and Article 3.1 of the TRIPS Agreement, 1994. Accordingly, Bangladesh also extends the same protection to nationals of the member countries of the Paris Convention and the TRIPS Agreement, as stipulated in Section 119 of the 2009 Act. Similarly, the principle of priority is recognized under Section 120 of the 2009 Act. Consequently, anyone who registers a mark in a member country of the Paris Convention or the World Trade Organization can obtain protection in Bangladesh from the same date, provided they apply for registration in Bangladesh within six months of the initial registration in the other member country.
The principle of cross-border reputation supports the protection of well-known trademarks. International agreements, such as the Paris Convention and the TRIPS Agreement, recognize the importance of safeguarding these trademarks. Article 6bis of the Paris Convention requires member countries to refuse or cancel the registration of trademarks that might cause confusion with an already well-known trademark within the same country for identical or similar goods. Additionally, Articles 16.2 and 16.3 of the TRIPS Agreement extend these protections to include service marks and dissimilar goods. Currently, the legal protection of well-known trademarks is firmly established within the jurisdiction of trademark law.
Bangladesh is a signatory to the Paris Convention and the TRIPS Agreement, adhering to the principles of cross-border reputation and national treatment. The rule of cross-border reputation is outlined in Section 31 of the 2009 Act, which guarantees protection for well-known trademarks and foreign trademarks based on their international reputation. This compliance meets the requirements of Article 16 of the TRIPS Agreement, which advocates for enhanced protection and treatment of trademarks. Consequently, a foreign trademark owner with cross-border reputation can initiate a passing off action in Bangladesh if their mark is used without authorization.
However, it is crucial for overseas traders who hold these marks to act proactively in protecting their internationally established goodwill. This can be achieved by registering their trademarks and taking timely and appropriate legal action to enforce them.
Conclusion
Trademark rights protection in Bangladesh has evolved significantly with the introduction of the Trademarks Act, 2009, and subsequent regulatory improvements. While challenges remain, continued efforts to strengthen the legal framework and enforcement mechanisms promise to provide robust protection for trademark owners, thereby fostering a more secure and vibrant business environment in the country.
by AP | Apr 2, 2024 | Knowledge Base
Establishing a strong brand identity is more important than ever in today’s competitive world. Protecting your business name, logo, or slogan through trademark registration is a key step in protecting your brand. For entrepreneurs and businesses in Bangladesh, securing a trademark gives you exclusive rights to use your mark and prevents others from using it for their own benefit. Registering a trademark not only protects your brand but also adds value to your intellectual property portfolio. If you’re thinking about registering a trademark in Bangladesh, here’s a detailed guide to help you through the process:
Understanding Trademarks
Before you start registering your trademark, you should understand what trademarks are. In Bangladesh, you can use a word, name, symbol, device, or a combination of these elements as a trademark. Trademarks help you identify and distinguish your goods or services from others in the market.
Conduct a Trademark Search
We recommend that you begin by conducting a comprehensive trademark search to ensure your desired mark is unique and doesn’t infringe on any prior marks. You can conduct this search through a local trademark attorney or agent.
Filing an Application
Once you confirm the availability of your trademark, the next step is to file an application online with the Department of Patents, Designs, and Trademarks (DPDT). You must include details such as your name, address, the trademark itself, and the goods or services the mark will represent.
Examination Process
The DPDT will examine the application after receiving it to ensure it complies with the requirements of the Trademarks Act, 2009, and its associated rules. The examination includes assessing whether the mark is distinctive and eligible for registration.
Publication in the Trademark Journal
If the DPDT finds the application in order, it will issue an acceptance notice and instruct the applicant to deposit the requisite publication fees. The DPDT publishes the trademark in the Journal. This publication notifies the public, allowing interested parties to oppose the registration within a specified period, usually 60 days from the publication date.
Opposition Proceedings
If no one opposes or if the opposition fails, the trademark proceeds to registration. However, if someone files an opposition and wins, the trademark office may refuse the application or impose certain conditions.
Registration and Issuance of Certificate
After successfully completing the opposition period, you can register the trademark by paying the requisite registration fees, and then the authority will issue a registration certificate. This certificate proves ownership and grants exclusive rights to use the mark in connection with the specified goods or services.
For any further inquiries regarding trademark registration in Bangladesh, please contact us.
