Rectification and Cancellation in Bangladesh

Bangladesh keeps two separate routes for attacking a registration, and a forum rule that decides where a validity fight is actually held. Getting the forum right matters more here than the choice between the routes.

Quick reference

Non-use removal

Section 42(1) gives two grounds, and they are different claims.

No bona fide intention to use. The mark was registered without any bona fide intention on the applicant’s part that it should be used for those goods or services, and there has in fact been no bona fide use of it by any proprietor for the time being up to a date one month before the date of the application.

Five years of non-use. Up to a date one month before the application, a continuous period of five years or longer elapsed during which the mark was registered and during which there was no bona fide use of it for those goods or services by any proprietor for the time being.

The “one month before the application” formula appears in both, and it is the anti-gaming device. Use started after that date does not count, so a proprietor who resumes trading on receiving the application is a month too late.

When the Tribunal must refuse. Section 42(2) says the Tribunal shall not refuse an application except where:

• the applicant has been permitted under section 10 to register an identical or nearly resembling mark for those goods — in other words the applicant already has what they are asking for; or
• the Tribunal is of opinion that there has been bona fide use of the mark by a proprietor for the time being before the relevant date or during the relevant period.

That is an unusually directive provision. Outside those two situations, a made-out non-use application is to be granted.

Special circumstances. Section 42(4): an applicant is not entitled to rely on non-use which is shown to have been due to special circumstances, and which is not due to any intention to abandon the business or not to use the mark. So the proprietor’s answer is special circumstances plus a continuing intention.

Limitations instead of removal. Section 42(3) gives a middle outcome. On an application by an aggrieved person, the Tribunal may impose limitations on the registration — to secure that it ceases to extend to use in a particular place in Bangladesh, or for goods to be exported to a particular market, where there has been no bona fide use there for five years or more after registration; or where more than one person has been permitted under section 10 to register identical or nearly resembling marks.

A geographically or export-limited registration is a result worth asking for where total removal is not available.

What saves a registration from non-use

Three provisions work together here.

Permitted use counts. Section 44(2): the permitted use of a trademark by a registered user shall be deemed to be used by the proprietor. See registered users and licensing.

Associated and substantially identical marks. Section 49 allows use of one of several associated or substantially identical marks to be treated as equivalent where use has to be shown.

Export use. Section 50 deals with use of a trademark for export trade, and use when the form of the mark differs — so trade conducted entirely for export is still use.

And defensive registrations are immune. A mark registered defensively under section 43 is expressly not liable to removal under section 42 for the goods it is defensively registered for. See well-known and defensive trademarks.

General rectification

Section 51 is the broader power — to cancel or vary a registration, or to rectify the register, on the application of a person aggrieved.

It is the route for an entry made without sufficient cause or wrongly remaining on the register, which is where the registrability grounds come back in: a mark that offended section 6, 8, 9, 10 or 11 at the outset is an entry that should not have been made.

Section 9 points at it directly: a registration of a chemical element or compound name is deemed, for the purposes of section 51, to be an entry made without sufficient cause or wrongly remaining on the register — notwithstanding section 29.

Section 52 deals separately with correction of the register — the administrative tidying of errors, as distinct from attacking the entry.

The conclusiveness provision

Section 28 makes registration prima facie evidence of validity. Section 29 goes further and makes it conclusive as to validity after a period.

That is why section 9 had to say “notwithstanding section 29” for chemical names — the conclusiveness rule would otherwise have protected the registration.

The practical reading: a challenge to a Bangladeshi registration on registrability grounds is strongest early and gets harder with time. Opposition, at two months from advertisement, is the cheap moment. Rectification is the expensive one. And after the conclusiveness period, the grounds narrow considerably.

Where these applications go

This is the part to get right.

Section 42 and section 51 applications may be made to the High Court Division or the Registrar, by a person aggrieved. Section 43(4) applications to cancel a defensive registration are the same.

But section 98 imposes a rule that overrides the choice. Where, in a suit for infringement, the defendant questions the validity of the plaintiff’s registration and the plaintiff questions the validity of the defendant’s, the issue of validity shall be determined only on an application for rectification — and notwithstanding sections 42, 43(4) or 51, every such application shall be made to the High Court Division.

Section 98(3) adds that where an application is made to the Registrar under those sections, the Registrar may refer it to the High Court Division.

Section 99 then applies the Code of Civil Procedure to those applications and appeals, and requires certified copies of orders of the High Court Division or the Appellate Division to be communicated to the Registrar, who gives effect to them and amends or rectifies the register accordingly.

Section 102 provides for a stay of the infringement suit where validity is in issue.

So a defendant with a credible invalidity case can move the centre of gravity of the dispute out of the District Court and into the High Court Division, and can usually stay the suit while it is decided.

Registered users must be joined

Section 105 provides for a registered user to be impleaded in certain proceedings. A registered user whose rights depend on the registration has an interest in defending it, and a party attacking a registration should check the register for recorded users before starting.

Which route

• The mark is not being used — section 42, prepared quietly, and note that use resumed within a month of the application does not count.
• The mark should never have been registered — section 51, as an entry made without sufficient cause, and move early because of section 29.
• It is a defensive registration that no longer qualifies — section 43(4).
• The register contains an error — section 52 correction, which is not an attack at all.
• You are defending an infringement suit — raise validity, and expect it to be determined on a rectification application in the High Court Division, with the suit stayed.

Frequently asked questions

How much non-use removes a Bangladeshi registration? A continuous period of five years or longer, up to a date one month before the application. There is also a ground where the mark was registered with no bona fide intention to use it and has not in fact been used.

Can the proprietor save the registration by resuming use? Not by resuming in the last month — the statutory period runs to a date one month before the application. Use before that, or special circumstances not amounting to an intention to abandon, are the answers.

Does use by a licensee count? Yes. Permitted use by a registered user is deemed to be use by the proprietor.

Where do I file a cancellation application? With the High Court Division or the Registrar. But where validity is raised in an infringement suit, the application must be made to the High Court Division, and the Registrar may in any event refer an application there.

Can a registration become unchallengeable? Section 29 makes registration conclusive as to validity after a period, so registrability challenges get harder with time. Specific provisions, such as the chemical names bar, are expressed to operate notwithstanding it.

Is there an alternative to total removal? Yes. The Tribunal may impose limitations on a registration — for example confining it geographically or excluding a particular export market — where there has been no bona fide use there.

Useful official resources

• Department of Patents, Designs and Trademarks, Bangladesh
• Trademarks Act, 2009 — sections 28, 29, 42, 43, 44, 49 to 52, 98, 99, 102, 105
• Trademarks Rules

See our related notes on trademark infringement in Bangladesh, well-known and defensive trademarks and trademark opposition.

Facing a cancellation action in Bangladesh, or blocked by a registration that is not in use? Talk to us.