Step-by-step guide in registering a Trademark

How to file an application for trademark registration with the Department of Patent, Design and Trademark?

The legislation which governs the registration of trademarks in Bangladesh is the Trademarks Act, 2009. The Act lays down the procedure for registration, filing of appeal against the decision for refusal to register a trademark and the remedies that can be sought in case of infringment of a registered trademark.

The procedure of registration of trademark has been streamlined over the years in Bangladesh. There is provision for filing of application online. Prior to submission of application, the applicant can check whether the intended trademark is already registered in the name of another firm by paying a nominal fee. The procedure of registration of trademark is summarized as follows:

STAGE 1: Opening of a user account (Online Application - Department of Patent, Design and Trademark (dpdt.gov.bd)) with the Department of Patents, Designs and Trademark (DPDT). 

STAGE 2: The applicant files an application for searching whether the intended trademark has already been registered or taken by any other firm. If the trademark is not registered earlier, the applicant proceeds to stage 3.

STAGE 3: The applicant files an application with the DPDT for registration of trademark in TM- 1 form. The applicant will be required to submit the trademark and logo in digital form, preferably in the format of a .jpg image of 3 inches x 3 inches. A precise description of the logo has to be given, specifying the word name and device mark. It is imperative to be careful about specifying the class of goods as per the NICE Classification and the goods/services sold/manufactured/offered by the applicant. The applicant's signature has to be in the digital form.

STAGE 4: The applicant completes the TM- 10 form for authorizing a lawyer to deal with the application process. Revenue stamp has to be affixed with the TM- 10 form

STAGE 5: The applicant pays the required fee of Tk. 5,000/- and VAT of Tk. 750 through online payment system.  

STAGE 6: The applicant finally submits the application for trademark registration online. The system will generate a tracking number and File ID.

STAGE 7: The applicant will be required to print the application along with all attachments and physically submit it at the office of the DPDT. The DPDT will accept the application if it is in correct form.

STAGE 8: The DPDT upon receiving the application for registration for a particular class will scrutinize it, and if the application is found to be in order it will proceed for publication in the Trademark journal. 

STAGE 9: Once the application is published in the trademark journal, any aggrieved party may file an objection/opposition against the concerned trademark within 2 months of the publication in the journal.

STAGE 10: If any objection is filed, an opposition case will be instituted and DPDT upon hearing both the parties and receiving evidence will dispose of the case. 

STAGE 11: However, if there is no objection or no objection was filed within 2 months, the DPDT will issue a registration certificate to the applicant.

What are the rights of a registered owner of a trademark?

The rights conferred by registration are specified in section 25 of the Trademark Act, 2009. It states that the registered proprietor of the trademark acquires an absolute right to use the concerned trademark in relation to the goods or services for which registration has been granted and the registered owner can obtain relief if there is an infringement of the trademark.

Suit for infringement of a registered trademark or passing off?

The registered owner of a trademark can file a suit for infringement of a trademark or passing of before the District Court under section 96 of the Trademark Act, 2009.  If an infringement can be proved, the plaintiff will be entitled to the following remedies: injunction, damages or account of profits and order for delivery-up of the infringing labels and marks for destruction or erasure.

What is passing off and can a suit be filed for passing off an unregistered trademark?

Passing off involves selling goods or services as the goods or services of another person. There are dishonest traders who tries to copy the products or services of an well-established and popular brand and sell them in the market as the goods and services of the said popular and well-known brand. In case of passing off, the defendants sell the products to the consumers on the pretext that it is the same product of the well-established and popular brand. 

Even though the brand name is unregistered, the aggrieved traders can bring an action for passing off arising out of the use by the defendant of any trademark which is identical with or deceptively similar to the plaintiff's trademark whether registered or not. 

By section 97 of the Trademark Act, the same remedies are available in a suit for passing off as those provided in a suit for infringement of a registered trademark.