Marks That Cannot Be Registered in Bangladesh

Bangladesh asks a question most modern trademark statutes have dropped. Before anything else, a mark has to contain or consist of at least one of five essential particulars. Only then do the prohibitions and conflict grounds come into play.

For a brand arriving from a jurisdiction that simply asks whether a mark is distinctive, that first gate is the unfamiliar one.

Quick reference

The essential particulars

Section 6(1): a trademark shall not be registered unless it contains or consists of at least one of the following:

• the name of a company, individual or firm, represented in a special or particular manner;
• the signature of the applicant for registration or of some predecessor in their business;
• one or more invented words;
• one or more words having no direct reference to the character or quality of the goods or services, and not being, in their ordinary signification, a geographical name, a surname, a personal name or a common abbreviation of one, or the name of a sect, caste or tribe in Bangladesh; or
• any other distinctive mark.

Section 6(2) then supplies the route through: a name, signature or word that does not fall within the first four categories — the fifth, “any other distinctive mark”, is excluded from this proviso — shall not be registered except upon evidence of its distinctiveness.

And section 6(3) defines a distinctive mark, in relation to the goods or services applied for, as one which distinguishes the proprietor’s goods or services from others of the same kind in the trade.

Three practical consequences.

A plain company name is not enough. The first category requires representation in a special or particular manner, which is a presentation requirement, not merely a naming one. The stylised form is what gets filed.

Surnames, personal names and geographical names start outside. They are expressly carved out of the fourth category, so they come in either as a distinctive mark or on evidence of distinctiveness.

Evidence of distinctiveness is the standard route, not an exception. Where a mark depends on section 6(2), the proof of use is part of the application strategy from the outset rather than a response to an objection.

There is a procedural signal attached: section 17 allows the Registrar to advertise an application before acceptance where it relates to a mark to which section 6(2) applies. Marks resting on evidence of distinctiveness are expected to be exposed to the market earlier.

Colour

Section 7 handles colour in the familiar way, and the default catches people out.

A trademark may be limited wholly or in part to one or more specified colours, and any such limitation is taken into consideration by the Tribunal in deciding on the distinctive character of the mark. But so far as a mark is registered without limitation of colour, it is deemed to be registered for all colours.

So filing in black and white is generally broader than filing in the brand palette.

The prohibitions

Section 8 bars registration of a mark or part of a mark:

• comprising or consisting of any scandalous or obscene matter;
• the use of which would be contrary to any law for the time being in force;
• the use of which would be likely to deceive or cause confusion;
• containing matter likely to hurt the religious susceptibilities of any class of the citizens of Bangladesh;
• identical with, an imitation of, or containing as an element an armorial bearing, flag or other emblem, a name or abbreviation or initials of the name of, or official sign or hallmark adopted by, any State or international organization created by international convention, charter or other instrument, unless authorised by the competent authority;
• which would otherwise be disentitled to protection in a court; or
• where the application is made in bad intention and faith.

The religious susceptibilities ground is the one most often missed by a foreign applicant, and it is not curable by evidence. It is a question to settle before the brand is committed to.

The “disentitled to protection in a court” limb is the old equitable catch-all, and it is wide enough to carry arguments about the applicant’s conduct that do not fit neatly elsewhere.

Chemical names

Section 9 bars any word that is the commonly used and accepted name of a single chemical element or single chemical compound from registration for a chemical substance or preparation. Such a registration is deemed, for the purposes of section 51, to be an entry made without sufficient cause or wrongly remaining on the register — so it is vulnerable to rectification notwithstanding the seven-year conclusiveness provision in section 29.

The proviso saves a word used only to denote a brand or make of the element or compound as made by the proprietor or a registered user, as distinguished from the element or compound as made by others, and used in association with a suitable name or description open to public use.

For pharmaceutical filings this is the first check.

Identical and deceptively similar marks

Section 10(1): no mark shall be registered for goods or services, or a description of them, which is identical with or deceptively similar to a mark already registered in the name of a different proprietor for the same goods or services or the same description.

Three ways through or around it.

Honest concurrent use. Section 10(2) lets the Registrar, in the case of honest concurrent use or other special circumstances making it proper to do so, permit registration by more than one proprietor of identical or nearly resembling marks for the same goods or services, subject to such limitations and conditions as thought fit.

Consent. Section 10(7): nothing in the section prevents registration where the proprietor of the earlier trademark or other earlier right consents.

Waiting. Section 10(3): where separate applications are made by different persons for identical or nearly resembling marks for the same goods, the Registrar may hold the later applications pending determination of the earlier one.

The Explanation defines an earlier trademark as a registered mark with an earlier application date, taking account of priorities claimed — and includes a mark for which an application has been made which, if registered, would be an earlier trademark.

Expired marks still count. Section 10(8): a mark whose registration expires continues to be taken into account for one year after expiry, unless the Registrar is satisfied there was no bona fide use of it during the two years immediately preceding the expiry.

Well-known marks

Sections 10(4) and (5) put well-known marks inside the conflict ground.

No mark shall be registered if it is identical with, confusingly similar to, or constitutes a translation of a mark or trade description which is well known in Bangladesh for identical or similar goods or services of another enterprise.

And no mark shall be registered where the earlier mark is well known and registered in Bangladesh for goods or services not identical or similar to those applied for, if the mark is used in a way that may create a false conception of a connection and the interests of the registered mark are likely to be damaged.

Section 10(6) states the test for well-known status: the knowledge of the mark in the relevant sector of the public, including knowledge obtained in Bangladesh as a result of the promotion of the mark.

That last phrase matters for a brand with reputation but no sales in Bangladesh — promotion counts. See well-known and defensive trademarks.

Names of people

Section 11 covers an application for a mark which falsely suggests a connection with a living person, or with a person whose death took place within twenty years before the date of the application. Consent of that person, or of their legal representative, is required.

Twenty years is a long tail, and it catches heritage branding built on a founder or a historical figure.

Disclaimers

Not every weak element means refusal. Section 14 allows registration subject to a disclaimer where a mark contains matter that is not separately registrable, or matter common to the trade or otherwise non-distinctive — the proprietor disclaims the exclusive right to that part as a condition of the registration standing.

A disclaimer narrows what you own without losing the registration, and it is often the sensible resolution of an objection to a descriptive element inside an otherwise registrable mark.

Answering an objection

Objections are notified in writing, and the applicant has two months to reply or request a hearing, extendable by a further two months. Failure to do either abandons the application — recoverable, under the Rules, within five years. See examination and objections.

Frequently asked questions

What are the essential particulars? Five categories in section 6: a company, individual or firm name represented in a special or particular manner; a signature; invented words; words with no direct reference to character or quality and not being a geographical name, surname, personal name or the name of a sect, caste or tribe; or any other distinctive mark.

Can I register a surname in Bangladesh? Not as a word within the fourth category, from which surnames are expressly excluded. It comes in as a distinctive mark or on evidence of distinctiveness under section 6(2).

Should I file my logo in colour? Usually not. A mark registered without a colour limitation is deemed registered for all colours, so limiting it narrows the protection.

Can a mark be refused for religious reasons? Yes. Section 8(d) bars a mark containing matter likely to hurt the religious susceptibilities of any class of citizens of Bangladesh, and it is not curable by evidence.

My mark was cited against an earlier registration. What are my options? Honest concurrent use or other special circumstances under section 10(2), consent from the earlier proprietor under section 10(7), or a narrower specification.

Can I use a historical figure’s name as a brand? Not where it falsely suggests a connection with a living person, or with a person who died within the twenty years before the application, without the required consent.

Useful official resources

• Department of Patents, Designs and Trademarks, Bangladesh
• Trademarks Act, 2009 — sections 6 to 11, 14, 17, 29, 51
• Trademarks Rules

See our related notes on examination and objections, well-known and defensive trademarks and trademark opposition.

Holding a Bangladeshi objection and deciding whether to argue it? Talk to us.