Filing a Trademark in Bangladesh: Form TM-1 and the Date That Counts

The Bangladeshi application itself is straightforward. What is worth understanding before filing is that the date you file is the date your registration will bear — and the date the seven-year first term starts running from.

Quick reference

Who can apply

Section 15(1): any person claiming to be the proprietor of a trademark used or proposed to be used by them may apply in writing in the prescribed manner.

So an intent-to-use filing is available, and no prior use in Bangladesh is required. That said, use and intention both matter later — section 42 allows removal where a mark was registered without any bona fide intention to use it and there has in fact been no use. A speculative filing is registrable and vulnerable.

The form

The Rules require an application on Form TM-1 in three copies, with the applicable fee, for a trademark, certification trademark, collective mark or guarantee mark.

Every application must relate to one of the classes in the Fourth Schedule, and separate applications are filed for the same mark in different classes. Where an application covers different goods or services within the same class, it must contain detailed information about the use of the mark.

Where priority is claimed, the supporting documents go in with the application.

Where it is filed

Section 15(3) and (4) set the filing office by territorial jurisdiction:

• at the head office of the Department, or at the branch office having jurisdiction over the applicant’s principal place of business in Bangladesh — or, for joint applicants, over the principal place of business of the first-named applicant with a place of business in Bangladesh; and
• where the applicant does not carry on business in Bangladesh, at the office having jurisdiction over the place given in the address for service in Bangladesh disclosed in the application.

For a foreign applicant, the address for service therefore does more than receive post — it determines which office handles the file.

The date, and why it matters twice

Section 20(1) is the provision to hold on to. On registration, the Registrar registers the mark giving effect to it from the date of the making of the application, and that date is deemed to be the date of registration — subject to section 120, which substitutes the Convention filing date where priority was claimed.

So the filing date is doing two jobs:

It fixes priority against later applicants, in the ordinary way.

It starts the seven-year term. The clock does not wait for the certificate. See renewal and restoration.

Priority

Section 120(1): where a person has applied to register a mark in a Convention country — a Paris Convention or WTO member declared as such by notification — and that person, their legal representative or assignee applies in Bangladesh within six months of the Convention application, together with the full particulars and a certified copy of the priority application, the mark is registered as of the date of the Convention application, and that date is deemed to be the date of registration.

Where applications were made in two or more Convention countries, the six months runs from the earliest of them.

Two practical notes.

The Act contemplates the particulars and the certified copy going in with the Bangladeshi application rather than being supplied later, and the Rules require supporting documents for a priority claim to be submitted with the application. Priority documents are therefore a pre-filing item.

And section 120(3) is a limit worth knowing: nothing entitles the proprietor to recover damages for infringement which took place before the date of the application for registration in Bangladesh. The priority date fixes registrability and precedence; it does not back-date the damages claim.

See international protection.

Reciprocity

Section 121 is unusual enough to flag. Where the Government notifies that a country does not accord Bangladeshi citizens the same rights in respect of registration and protection of trademarks as it gives its own nationals, no national of that country is entitled to apply for or be registered as proprietor of a mark, to be registered as an assignee, or to be registered as a registered user.

It is a reciprocity bar operating at the level of nationality, triggered by notification.

What the Registrar does with it

Section 15(5) gives three outcomes. The Registrar may:

• accept the application absolutely;
• refuse it, recording the grounds for refusal; or
• accept it subject to such amendments, modifications, conditions or limitations as thought fit.

Acceptance is not final. Section 16 lets the Registrar withdraw the acceptance — after giving the applicant an opportunity to be heard — where satisfied that the application was accepted in error, or that the mark should not be registered or should be registered subject to different conditions. The application then proceeds as if it had not been accepted.

Language

The Rules provide for the prescribed forms in Bangla and allow documents to be submitted in both Bangla and English, with transliteration and translation dealt with separately where the mark contains words in another language or script.

Corrections

Section 19 lets the Registrar, on such terms as thought fit, permit at any time — before or after acceptance — the correction of any error in or in connection with the application, and also the correction of an error in a notice of opposition or a counter-statement.

That is a usefully broad correction power, but it is a correction power. What it is not is a route to change the mark or to add goods. See changes to a trademark.

What to have ready before filing

• The mark, and three copies of Form TM-1.
• The class, and a separate application for each further class.
• An address for service in Bangladesh if the applicant has no business there — it fixes the filing office.
• The priority documents, if a Convention claim is being made, in time to go in with the application.
• A decision on use or proposed use, since the statement affects the later non-use position.

Frequently asked questions

Can I file one application covering several classes in Bangladesh? No. The Rules require every application to relate to one class, with separate applications for the same mark in different classes.

Do I need to have used the mark in Bangladesh? No. An application may be made by a person claiming to be the proprietor of a mark used or proposed to be used. But a registration obtained without a bona fide intention to use it is exposed to removal.

What date will my registration bear? The date of the application, which the Act deems to be the date of registration — or the Convention filing date where priority was claimed.

When do priority documents have to be filed? With the application. The Act requires the Bangladeshi application to be made within six months of the Convention filing together with full particulars and a certified copy, and the Rules require supporting documents to accompany the application.

Can the Registrar take back an acceptance? Yes. Section 16 allows the Registrar to withdraw an acceptance, after hearing the applicant, where it was given in error or the mark should not be registered or should carry different conditions.

Does the filing office matter? Yes. It is determined by the applicant’s principal place of business in Bangladesh, or by the address for service where the applicant has no business there.

Useful official resources

• Department of Patents, Designs and Trademarks, Bangladesh — forms and fees
• Trademarks Act, 2009 — sections 15, 16, 19, 20, 119 to 121
• Trademarks Rules — rules 9, 10

See our related notes on trademark protection in Bangladesh, examination and objections and trademark classes.

Preparing a Bangladeshi filing with a priority date to protect? Talk to us.