Trade mark registration process and conditions for trademark

registration

Trade mark registration process according to trademark act 2009

The Trade Marks Act, 2009 of Bangladesh outlines the process for the registration
of trademarks. Here is a step-by-step guide to the trademark registration process
according to this act:
Step-by-Step Trademark Registration Process:
1. Pre-Filing Considerations:
• Conduct a Trademark Search: Before filing a trademark application, it is
advisable to conduct a search to ensure that the trademark is not already
registered or pending registration.
• Choose the Right Class: Determine the appropriate class for the goods or
services associated with the trademark. The classification follows the Nice
Classification.
2. Filing the Application:
• Submission: File the trademark application with the Department of Patents,
Designs, and Trademarks (DPDT) in Bangladesh. The Department of
Patents, Designs and Trademarks
• Details Required: The application must include:
o The name and address of the applicant.
o A clear representation of the trademark.
o A list of goods or services for which the trademark is to be used.
o The class of goods or services.
o Date of first use of the trademark, if any.
• Forms and Fees: Submit the application using the prescribed forms along
with the appropriate fees.
3. Examination of the Application:
• Formal Examination: The DPDT conducts a formal examination to ensure the
application is complete and correct.
• Substantive Examination: The DPDT examines the trademark for
distinctiveness and checks for any conflicts with existing trademarks.
4. Publication and Opposition:
• Publication: If the trademark application passes the examination, it is
published in the Trademarks Journal.
• Opposition Period: There is a three-month period from the date of
publication during which third parties can file an opposition to the
registration.
5. Opposition Proceedings (if any):
• Notice of Opposition: If an opposition is filed, the DPDT notifies the
applicant.
• Counter-Statement: The applicant must file a counter-statement within a
specified time.
• Hearing: Both parties may be called for a hearing.
• Decision: The Registrar decides on the opposition.
6. Registration:
• No Opposition or Successful Defense: If no opposition is filed, or if the
opposition is decided in favor of the applicant, the trademark proceeds to
registration.
• Issuance of Registration Certificate: The DPDT issues a registration certificate
to the applicant.
• Duration: The registration is valid for ten years from the date of filing the
application.
7. Renewal:
• Renewal Application: The trademark can be renewed indefinitely for
subsequent ten-year periods.
• Renewal Fee: A renewal fee must be paid within the prescribed time to keep
the trademark registration in force.
8. Post-Registration Considerations:
• Use of Trademark: The registered trademark must be used in commerce to
avoid cancellation for non-use.
• Infringement Protection: The trademark owner has the exclusive right to use
the trademark and can take legal action against any unauthorized use.

conditions for trademark registration

The Trademarks Act, 2009 is the governing legislation for the registration and
protection of trademarks in various jurisdictions. The general conditions for
trademark registration under such an act typically include the following:
1. Definition of a Trademark
• A trademark must be a mark capable of being represented graphically and
capable of distinguishing the goods or services of one person from those of
others.
• It may include devices, brands, headings, labels, tickets, names, signatures,
words, letters, numerals, shapes of goods, packaging, or combinations of
colors.
2. Distinctiveness
• The mark must be distinctive, meaning it must be capable of distinguishing
the applicant's goods or services from those of others.
• Generic or descriptive terms that directly refer to the goods or services or
their characteristics cannot be registered.
3. Non-Deceptive
• The trademark should not be deceptive or likely to cause confusion regarding
the nature, quality, or geographical origin of the goods or services.
4. Not Contrary to Public Order or Morality
• The mark should not be scandalous or contrary to public policy or accepted
principles of morality.
5. Not Prohibited by Law
• The trademark should not include elements prohibited by law, such as
national flags, emblems, or names of international organizations without
appropriate authorization.
6. Use or Intent to Use
• The applicant must either be using the trademark in commerce or have a
bona fide intention to use it in commerce.
7. Prior Use and Registration
• The mark should not be identical or similar to an earlier registered trademark
for the same or similar goods or services, to avoid confusion among
consumers.
8. Application Process
• The application must include the name and address of the applicant, a
representation of the trademark, a list of the goods or services for which the
trademark is to be used, and the class(es) of those goods or services.
9. Examination and Publication
• After filing, the trademark application undergoes examination by the
trademark office to ensure it meets all legal requirements.
• If the application is accepted, it is published in the official trademark journal
to allow for opposition by third parties.
10. Opposition and Registration
• If no opposition is filed or if any opposition is resolved in favor of the
applicant, the trademark is registered.
• The registration certificate is issued, granting the trademark owner exclusive
rights to use the mark in connection with the registered goods or services.
11. Duration and Renewal
• A trademark registration is typically valid for ten years from the date of
application, subject to renewal for additional ten-year periods upon payment
of the required fees.
12. Use and Maintenance
• The trademark must be used in commerce to maintain its registration. Non-
use for a continuous period (usually five years) can result in cancellation.

trademark offences ,penalties and procedure

Here is an overview of the offenses, penalties, and procedures:

Trademark Offenses
1. Infringement:

➢ Unauthorized use of a registered trademark in a manner that is likely to

cause confusion, deception, or misunderstanding regarding the source
of goods or services.
➢ Use of a mark that is identical or similar to a registered trademark for
identical or similar goods or services.

2. Counterfeiting:

➢ Manufacturing, distributing, or selling goods that bear a trademark

identical to or substantially indistinguishable from a registered
trademark, without the trademark owner's consent.
 3. Passing Off:

➢ Misrepresentation made by a trader to the public that his goods or

services are those of another trader, causing damage to the goodwill of
the trademark owner.

4. False Representation:

➢ Making false representations about the nature, characteristics, or

quality of goods or services under a registered trademark.

Penalties
Penalties for trademark offenses under the Trademark Act of 2009 can include:

• Trademark Infringement:

➢ Imprisonment for a term not exceeding 2 years.

➢ Fine not exceeding 2 lakh BDT (Bangladeshi Taka).
➢ Both imprisonment and fine.

• False Representation:

➢ Fine which may extend to 50,000 BDT.

• Falsification of Entries:

➢ Imprisonment for a term not exceeding 2 years.

➢ Fine not exceeding 2 lakh BDT.
➢ Both imprisonment and fine.

• Repeat Offences:

➢ Enhanced punishment for repeat offences

Procedure
1. Filing a Complaint:

➢ Trademark owners can file a complaint with the appropriate authorities

or courts if they suspect infringement.

2. Investigation:

➢ Authorities may conduct investigations, including raids and seizures, to

gather evidence of infringement.

3. Legal Proceedings:

➢ Civil or criminal proceedings can be initiated against the alleged

infringer. The trademark owner can file a lawsuit seeking relief, such
as damages or an injunction.

4. Court Orders:

➢ Courts can issue orders to stop the infringing activities, seize

counterfeit goods, and award damages to the trademark owner.

5. Appeals:

➢ Both parties have the right to appeal the court's decision if they believe
there has been a miscarriage of justice.