Trade Marks/Service Marks

The primary function of a trade mark is to distinguish your business from other businesses and identify your business as the source of particular goods and/or services.
The law sets out what it considers to be a trade mark that can be registered. Typically, a trade mark is made up of words or logos or a combination. There are a few other unusual possibilities which can be considered as trade marks, because they too serve to distinguish one business or product from another and these include the shape of goods or packaging. Often these unusual trade marks need careful consideration as to the likelihood of success and the form for application before applying to register them.

To be registerable a trade mark must fulfil all of the following criteria:

• The primary function of a trade mark,
• Must not be descriptive of the goods and/or services that it is being used with, and
• Must not consist of words or other representations that traders in the same area of business may legitimately wish to use to identify the origin of their goods, for example, a surname or a geographical location.

In general, it is not possible to register as a trade mark any word or that does not satisfy these requirements. Occasionally it is possible to show that what may appear to be a descriptive trade mark on the face of it may be registerable after all, because you are able to provide evidence of the historical use of the mark and the way that customers see it as an identification of your business. However, as a general rule, the more unusual your trade mark is, the greater the chance that it will be considered to be a good trade mark that is registerable.
A registered trade mark gives you the exclusive right to use your trade mark for the goods and/or services that you have registered.

To obtain a registered trade mark in Bangladesh, a trade mark application will need to be filed. For it to be acceptable, a trade mark application must meet specific legal requirements. Each application must list the goods or services on which the mark is to be used by reference to a pre-defined classification system consisting of 45 different classes.

The procedure for the registration of trade marks which involves filing an application with the Department of Patents, Designs & Trademarks, Bangladesh, which is then searched and examined for registerability under the Trademarks Act, 2009. Should any objections be raised by the DPDT there is often an opportunity to respond. However, once your trade mark has been deemed acceptable for registration it is published in order to allow interested third parties to object to the registration. If a third party has an identical or similar trade mark registered for identical or similar goods or services for
which you are seeking registration, then they may be able to prevent your registration. If no further objection is raised or the potential conflict has been overcome, then your trade mark will be registered by the DPDT. For an outline of the stages, time scales and typical costs involved in obtaining a registered trade mark, please communicate with us at our email address: info@munshiandassociates.com .

In Bangladesh, a trade mark registration initially lasts for 7 years after which it becomes renewable for further 10 year periods upon the payment of a fee

There are a number of benefits to owning a registered trade mark. Firstly, registration may deter people from using your trade mark without your permission. Secondly, it is easier to take legal action against anyone who uses your trade mark without your permission.
You are allowed to use the ® symbol next to your registered trade mark to warn others against using it. However, using this symbol for an unregistered trade mark or a mark that is still going through the application procedure is an offence.

If you would like to register your trade mark, or have a problem or matter concerning a registered trade mark, we would be happy to help you.

We have expertise in:

• Trademark availability search
• Filing,  prosecution and registration of trademarks.
• Opposition, Revocation, Rectification and Litigation
• Recording of assignment and license
• Recording of change of name or address
• Portfolio management
• Investigation
• Renewals of trademark registration & maintenance of IP matters.
• Post-registration services
• Trademark watch
• Domain name search and registration
• Journal watch services

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