Bangladesh does not have a general trademark licence recordal. It has the registered user system — an older mechanism that puts the licence on the register with a supporting affidavit about control, and makes the licensee’s use count as the proprietor’s.
For a brand owner used to simply signing a licence and filing a short-form recordal, it is a more involved exercise.
Quick reference
| Mechanism | Registration of a registered user |
| Who applies | The registered proprietor and the proposed registered user, jointly |
| With the application | The written agreement or an authenticated copy, and an affidavit |
| The affidavit must show | The degree of control the proprietor will have over the permitted use |
| Permitted use | Deemed to be use by the proprietor |
| Defensive registrations | Cannot have a registered user |
| Trafficking | The Government may make rules preventing trafficking in trademarks |
| Licensee’s right to sue | After calling on the proprietor and three months of refusal or neglect |
| Variation and cancellation | By the Registrar, on several grounds |
The registered user application
Section 44(1): subject to section 45, a person other than the registered proprietor may be registered as the registered user of a trademark in respect of all or any of the goods or services for which it is registered otherwise than as a defensive trademark, and either with or without conditions.
Two points from that sentence.
A defensive registration cannot carry a registered user. That follows from what a defensive registration is — a registration for goods nobody is selling. See well-known and defensive trademarks.
Conditions are contemplated. The registration can be conditional, and the conditions go on the register.
The proviso adds a policy control: the Government may by rules provide that no application shall be entertained unless the agreement between the parties complies with conditions laid down in the rules for preventing trafficking in trademarks. The registered user system exists to permit genuine licensing, not the sale of the right to use a mark detached from any control.
The joint application and the control affidavit
Section 45(1): where it is proposed that a person be registered as a registered user, the registered proprietor and the proposed registered user shall jointly apply in writing to the Registrar in the prescribed manner, and every such application shall be accompanied by:
- the agreement in writing, or a duly authenticated copy of it, entered into between the registered proprietor and the proposed registered user with respect to the permitted use of the mark; and
- an affidavit made by the registered proprietor, or a person authorised to act on their behalf, which shall include:
- particulars of the relationship, existing or proposed, between the proprietor and the proposed registered user, including particulars showing the degree of control by the proprietor over the permitted use which that relationship will confer; and
- whether it is a term of their relationship that the proposed registered user shall be the sole registered user, among the other prescribed particulars.
Three practical consequences.
The licence agreement goes in. Not a summary, not a short-form recordal document — the agreement itself or an authenticated copy. A licensor who wants commercial terms kept out of an official file has to think about that at the drafting stage, including whether the trademark licence should be a separate document from the wider commercial agreement.
Control has to be demonstrated, not asserted. The affidavit must give particulars showing the degree of control. Quality specifications, approval rights, inspection rights, the ability to require changes — these are what the affidavit is describing, and an agreement that contains none of them produces an affidavit with nothing to say.
Exclusivity is declared. Whether the user is to be the sole registered user is part of the application.
Permitted use is the proprietor’s use
Section 44(2): the permitted use of a trademark under subsection (1) shall be deemed to be used by the proprietor thereof.
This is what protects a licensed registration from non-use removal. A mark used in Bangladesh only by a local registered user is being used by the proprietor for the purposes of section 42. See rectification and cancellation.
The corollary is evidential and worth building into the agreement: the licensee’s invoices, packaging and advertising are the proprietor’s proof of use, and the proprietor needs a right to obtain them — particularly once the relationship has ended, which is often when the non-use application arrives.
The licensee’s right to sue
Section 46(1): subject to any agreement subsisting between the parties, a registered user is entitled to call upon the proprietor to take proceedings to prevent infringement — and if the proprietor refuses or neglects to do so within three months after being called upon, the registered user may institute proceedings for infringement in his own name as if he were the proprietor, making the proprietor a defendant.
Section 46(2): a proprietor so added as a defendant is not liable for costs unless they enter an appearance and take part in the proceedings.
So the three-month call-on is the licensee’s lever, and it should be exercised in writing and dated. Note two features: the right is subject to any agreement between the parties, so a licence can modify or exclude it; and the proprietor is joined as a defendant, not a co-plaintiff.
Section 105 separately provides for a registered user to be impleaded in certain proceedings, so a registered user also has a position to protect when the registration itself is attacked.
Variation and cancellation
Section 47 sets out how a registered user entry is changed or removed, without prejudice to the general rectification power in section 51.
Variation — by the Registrar as regards the goods or services covered, or any conditions or restrictions, on the written application of the registered proprietor.
Cancellation on request — by the Registrar on the written application of the registered proprietor, the registered user, or any other registered user of the mark.
Cancellation on grounds, by any person — including that:
- the registered user has used the mark otherwise than by way of the permitted use, or in such a way as to cause or be likely to cause deception or confusion; and
- further grounds concerning the proprietor or the registered user set out in the section.
The first ground is the one that matters commercially. A licensee operating outside the permitted use, or in a way that deceives the public, puts the entry at risk — and any person can apply, not only the parties.
Section 48 completes the picture: a registered user does not have a right of assignment or transmission of the permitted use.
Associated and substantially identical marks
Section 49 allows use of one of several associated or substantially identical trademarks to be treated as equivalent where use has to be shown, and section 50 covers use for export trade and use where the form of the mark differs.
Both widen what counts as use, and both are relevant to a licensed portfolio where the licensee uses a variant.
What a Bangladeshi licence should contain
Drawing the statutory requirements together:
- Real quality control — specifications, approval and inspection rights, and a remedy if standards are not met. The affidavit has to describe the degree of control.
- A clear statement of permitted use — goods or services, territory, term, and whether exclusive. Use outside it is a cancellation ground.
- An obligation to supply use records, surviving termination.
- Allocation of enforcement — whether the section 46 right to call on the proprietor is preserved, modified or excluded.
- No assumption of sub-licensing, and no assumption that the registered user can assign.
- A plan for the registered user entry on termination, since cancellation needs an application.
Frequently asked questions
How are trademark licences recorded in Bangladesh? Through the registered user system. The proprietor and the proposed user apply jointly, with the written agreement or an authenticated copy and an affidavit about the relationship and the degree of control.
Does my licensee’s use keep the registration alive? Yes. Permitted use of a trademark by a registered user is deemed to be use by the proprietor.
Do I have to file the licence agreement itself? The application must be accompanied by the agreement in writing or a duly authenticated copy of it.
Can my licensee sue infringers? A registered user may call on the proprietor to take proceedings and, if the proprietor refuses or neglects for three months, may sue in their own name making the proprietor a defendant — subject to any agreement between the parties.
Can a registered user assign the licence? No. A registered user does not have a right of assignment or transmission of the permitted use.
Can a registered user entry be cancelled? Yes — on the application of the proprietor or a registered user, and by any person on grounds including that the registered user has used the mark otherwise than by way of the permitted use or in a way likely to deceive or confuse.
Useful official resources
- Department of Patents, Designs and Trademarks, Bangladesh — forms and fees
- Trademarks Act, 2009 — sections 42 to 51, 105
- Trademarks Rules — rule 44 onwards
See our related notes on trademark assignment in Bangladesh, rectification and cancellation and trademark infringement.
Licensing a brand into Bangladesh, or recording a registered user? Talk to us.