Bangladesh is not a member of the Madrid Protocol. There is no international registration designating Bangladesh, and a Bangladeshi business cannot use a Bangladeshi mark as the basis for one.
What Bangladesh has is the Paris Convention, in force since 1991, and WTO membership — and the Act builds its priority provisions around both.
Quick reference
| Paris Convention | Member — in force since 1991 |
| WTO | Member |
| Madrid Protocol | Not a member |
| Route in | A national application |
| Convention country | A Paris or WTO member declared as such by notification |
| Priority period | Six months from the Convention application |
| Priority documents | Full particulars and a certified copy, with the application |
| Effect | The Convention filing date is deemed to be the date of registration |
| Damages | Not recoverable for infringement before the Bangladeshi application date |
| Reciprocity | Nationals of a non-reciprocating notified country may be barred entirely |
What a Convention country is
Section 119: with a view to fulfilling a treaty, convention or arrangement with a country which is a member of the Paris Convention or the World Trade Organization and which affords Bangladeshi citizens privileges similar to those it gives its own nationals in respect of registration and protection of trademarks, the Government may, by notification in the official Gazette, declare that country to be a Convention Country.
So Convention status in Bangladesh operates through notification rather than automatically. In practice that is a formality for Paris and WTO members, but it is the mechanism the Act uses.
Claiming priority
Section 120(1): where a person has applied to register a mark in a Convention country, and that person, their legal representative or assignee applies in Bangladesh within six months of that application together with the full particulars and a certified copy of the priority application, the mark — if registered — shall be registered as of the date on which the application was made in the Convention country, and that date is deemed for the purposes of the Act to be the date of registration.
Three consequences worth separating.
The documents go in with the application. The Act contemplates the particulars and certified copy accompanying the Bangladeshi filing, and the Rules require supporting documents for a priority claim to be submitted with the application. Priority documents are a pre-filing item, not a follow-up.
Multiple Convention filings. Section 120(2): where applications have been made in two or more Convention countries, the six months runs from the date of the earliest of them.
Priority shortens your term. Because the Convention date is deemed to be the date of registration, and the first term in Bangladesh is seven years from that date, a six-month priority claim means six months of the first term has already run when you file. That is a real cost against a real benefit, and it is worth being conscious of rather than surprised by. See renewal and restoration.
What priority does not give you
Section 120(3): nothing in the Act entitles the proprietor of a trademark to recover damages for infringement which took place prior to the date of application for registration under the Act.
So the priority date governs registrability and precedence. It does not back-date the damages claim to the Convention filing. Combined with the innocent infringer rule in section 97(2) — no damages or account against a defendant who was unaware and stopped on learning — the message is consistent: in Bangladesh, monetary relief starts when you apply and when you give notice, not before. See trademark infringement in Bangladesh.
The reciprocity bar
Section 121 is unusual and worth knowing about, even though it operates only on notification.
Where the Government specifies by notification that a country does not accord to citizens of Bangladesh the same rights in respect of the registration and protection of trademarks as it accords its own nationals, no national of that country shall be entitled, either solely or jointly:
- to apply for registration of, or be registered as the proprietor of, a trademark;
- to be registered as the assignee of the proprietor of a registered trademark; or
- to be registered as a registered user of a trademark under section 45.
It is a bar operating at the level of nationality, reaching ownership, assignment and licensing alike. It depends on a notification having been made, so it is a check rather than an assumption.
Filing into Bangladesh
A foreign brand owner protects a mark by filing a national application on Form TM-1, in triplicate, one class per application, at the office with territorial jurisdiction over the address for service in Bangladesh where the applicant carries on no business there.
An application may be made by a person claiming to be the proprietor of a mark used or proposed to be used, so prior use in Bangladesh is not required. See filing a trademark in Bangladesh.
Protection without filing
Two provisions do work for a foreign owner with no Bangladeshi registration.
Well-known marks. Section 10(4) bars registration of a mark identical with, confusingly similar to, or a translation of a mark or trade description well known in Bangladesh for identical or similar goods of another enterprise, with no requirement that the well-known mark be registered there. Section 10(6) makes knowledge in the relevant sector of the public — including knowledge obtained through promotion in Bangladesh — the test.
Bad faith. Section 8(g) bars an application made in bad intention and faith, which is the provision for the local distributor or former partner who filed first.
Neither is a substitute for filing, but both are available to someone who has not. See well-known and defensive trademarks.
Filing out of Bangladesh
A Bangladeshi business expanding abroad has no central route either. Each country of interest needs its own application under local law.
The Paris Convention gives the same six-month priority in that direction, so a Bangladeshi application establishes a date claimable in any Convention country for six months. That is usually the window in which the expansion plan is still being settled, which is the argument for settling it faster.
A South Asian programme does not have one shape
- India — Madrid member since 2013.
- Pakistan — Madrid member since 24 May 2021.
- Bangladesh — not a Madrid member.
- Sri Lanka — not a Madrid member.
- Nepal — not a Madrid member.
An international registration reaches India and Pakistan. Bangladesh, Sri Lanka and Nepal each need a direct national filing through local agents.
The terms differ too, which is the part that breaks a shared diary: Bangladesh starts at seven years then renews at ten, Nepal runs seven-year cycles, Sri Lanka and Pakistan run ten. Several of them measure the term from the application date rather than the certificate. A single regional assumption will be wrong in most of these countries.
Frequently asked questions
Can I designate Bangladesh in a Madrid application? No. Bangladesh is not a member of the Madrid Protocol, so protection requires a national application.
Is Bangladesh in the Paris Convention? Yes, in force since 1991, and it is also a WTO member. The Act gives Convention status to Paris and WTO members declared as such by notification.
How long do I have to claim priority? Six months from the Convention application, with the full particulars and a certified copy submitted with the Bangladeshi application. Where there were applications in several Convention countries, the six months runs from the earliest.
Does a priority claim affect my registration term? Yes. The Convention filing date is deemed to be the date of registration, and the first term of seven years runs from it — so part of the term has already passed when you file.
Can I recover damages from the priority date? No. The Act does not entitle a proprietor to recover damages for infringement which took place before the date of the Bangladeshi application.
Is there any restriction based on my nationality? Potentially. Where the Government notifies that a country does not give Bangladeshi citizens equivalent rights, nationals of that country cannot apply for, be registered as proprietor of, be registered as assignee of, or be a registered user of a Bangladeshi trademark.
Useful official resources
- Department of Patents, Designs and Trademarks, Bangladesh
- WIPO Paris Convention — contracting parties
- Trademarks Act, 2009 — sections 8, 10, 15, 97, 119 to 121
See our related notes on filing a trademark in Bangladesh, well-known and defensive trademarks and renewal and restoration.
Planning a South Asian programme that has to cover Madrid and non-Madrid countries? Talk to us.