Trademark Assignment in Bangladesh: The Six-Month Advertisement Rule

Bangladesh allows a registered mark to move freely, with or without the business. What it attaches to an assignment without goodwill is a procedure with a deadline, and the consequence of missing it is not a penalty — the assignment simply does not take effect.

Quick reference

Who can assign

Section 33: the person for the time being entered in the register as proprietor has power to assign the mark and to give effectual receipts for the consideration — subject to the Act and to any rights appearing from the register to be vested in another person.

So the register is the starting point for a transaction, and recorded interests — registered users, earlier assignments — qualify the proprietor’s power.

Registered marks

Section 34: notwithstanding anything in any other law, a registered trademark is assignable and transmissible whether with or without the goodwill of the business concerned, and in respect either of all the goods or services for which it is registered or of some only of them.

That is a broad power. The limits come afterwards.

Unregistered marks

Section 35(1): an unregistered trademark shall not be assignable or transmissible except along with the goodwill of the business concerned.

Section 35(2) creates one exception. An unregistered mark may be assigned without the goodwill where:

• at the time of the assignment it is used in the same business as a registered trademark;
• the registered mark is assigned at the same time and to the same person; and
• the unregistered mark relates to goods or services in respect of which the registered mark is assigned.

So an unregistered mark can travel in the slipstream of a registered one in the same business, and not otherwise.

The advertisement requirement

Section 38 is the provision to plan around, and it applies to an assignment of a mark whether registered or unregistered made otherwise than in connection with the goodwill of the business in which it has been or is used.

The assignment shall not take effect unless:

• the assignee, not later than six months from the date the assignment is made — or within such extended period, not exceeding three months in the aggregate, as the Registrar may allow — applies to the Registrar for directions with respect to the advertisement of the assignment; and
• advertises it in the form, manner and within the period the Registrar directs.

Three things follow.

The obligation is the assignee’s. Not the assignor’s, and not jointly. In a transaction document, that is worth allocating expressly along with who pays for it.

The clock runs from the date of the assignment, not from completion of the wider deal or from the recordal application. Six months passes quickly in a group reorganisation where the IP schedule is tidied last.

The sanction is non-effect, not a fine. The assignment does not take effect. That is a title problem discovered on the next transaction, or when the new owner tries to sue.

Two things that are not caught. Section 38(2) deems the following not to be assignments made otherwise than in connection with goodwill:

• an assignment of the mark for only some of the goods or services for which it is registered, accompanied by the transfer of the goodwill of the business in those goods or services only; and
• an assignment of a mark used for goods or services exported from Bangladesh, where it is accompanied by the transfer of the goodwill of the export business only.

So a partial assignment with the matching slice of goodwill, and an export-business assignment with the export goodwill, both stay outside the advertisement requirement.

Multiple exclusive rights

Section 36 restricts assignment or transmission where, as a result, exclusive rights would subsist in more than one person to the use of nearly identical or resembling marks in relation to the same goods or services, and people may thereby be deceived or confused.

This is the control on splitting a mark between owners in a way that would put confusingly similar rights into different hands. It sits alongside section 37, which imposes further restrictions on assignment or transmission in defined circumstances.

The practical reading: carving a Bangladeshi registration between two unrelated owners is not a free choice, and the deception test is where that is assessed.

Certification and associated marks

Certification trademarks. Section 39(1): assignable or transmissible only with the prior consent of the Government, and on an application made in the prescribed manner through the Registrar.

Associated trademarks. Section 39(2): assignable and transmissible only as a whole and not separately — though for all other purposes they are deemed to have been registered as separate marks.

That second rule bites in two places people do not expect. Marks the Registrar required to be associated under section 13 cannot be split. And a defensive registration under section 43 is deemed to be associated with the main registration, so a defensive portfolio moves with the mark it protects and cannot be sold off separately.

Recording the assignment

Section 40(1): where a person becomes entitled by assignment or transmission to a registered mark, they shall apply in the prescribed manner to the Registrar to register their title. On receipt and on proof of title to the Registrar’s satisfaction, the Registrar registers them as proprietor for the goods or services the assignment has effect for, and enters particulars of the assignment on the register.

The proviso matters in a contested situation: where the validity of an assignment or transmission is in dispute between the parties, the Registrar may refuse to register it until the dispute is settled by a competent court.

So a disputed chain of title parks at the Registry until a court resolves it. That is a reason to get the documentation clean rather than to rely on the recordal to cure it.

Assignment to a company to be formed

Section 41 deals with the use of a proposed trademark by a company to be formed — the position where an application is made on the basis that a company about to be incorporated will use the mark. It interacts with the non-use provisions, since section 42(1)(a) expressly contemplates use by the company concerned in a case to which section 41 applies.

A short checklist

• List registration numbers. One class per application means a brand is several registrations.
• Check for associations, including defensive registrations, which move only as a whole.
• Decide goodwill, in writing. If any part of the transfer is without goodwill, diary the six months from the date of the assignment for the directions application.
• Allocate the section 38 obligation to the assignee in the document, with who bears the advertisement cost.
• Check for registered users on the register before completing, since their position is recorded against the mark.
• Record promptly, with proof of title in a form the Registrar will accept.

Frequently asked questions

Can a Bangladeshi trademark be assigned without the business? Yes for a registered mark. But where the assignment is made otherwise than in connection with the goodwill of the business, it does not take effect unless the assignee applies for the Registrar’s directions within six months and then advertises the assignment as directed.

What is the deadline for the advertisement procedure? Six months from the date the assignment is made, extendable by up to three months in the aggregate at the Registrar’s discretion.

Can an unregistered mark be assigned on its own? Only with the goodwill of the business, unless it is used in the same business as a registered mark and both are assigned at the same time to the same person for the same goods.

Can I assign a certification mark? Only with the prior consent of the Government, on an application made through the Registrar.

Can associated marks be split up? No. They are assignable and transmissible only as a whole. Defensive registrations are deemed associated with the main registration.

What if the other side disputes the assignment? The Registrar may refuse to register the assignment or transmission until the dispute is settled by a competent court.

Useful official resources

• Department of Patents, Designs and Trademarks, Bangladesh — recordal forms and fees
• Trademarks Act, 2009 — sections 13, 33 to 41, 43
• Trademarks Rules — rules 38 to 43

See our related notes on registered users and licensing, changes to a trademark and well-known and defensive trademarks.

Moving Bangladeshi marks as part of a transaction or a group reorganisation? Talk to us.