Trademark Opposition in Bangladesh: Two Months, Not Extendable

Two deadlines in Bangladeshi opposition proceedings are absolute, and each one ends a party’s case without a decision on the merits. Both are two months.

Quick reference

The window, and why it is hard

Section 18(1): any person may, within two months from the date of the advertisement of an application and on payment of the prescribed fee, give notice in writing of opposition. The Rules repeat it — two months from publication in the Gazette, on the prescribed form.

Then section 93, which governs extensions generally. The Registrar may extend time on an application showing sufficient cause, provided that no extension of time shall be granted where time is expressly provided in this Act or the rules made thereunder.

The two-month opposition period is expressly provided in both. It is not extendable.

For a brand owner watching a market from abroad, that makes the watch itself the whole of the protection. Two months from advertisement, with no mechanism to buy more, means an opposition has to be instructed on sight of the advertisement rather than when the file reaches the top of someone’s list.

What you can oppose on

The grounds are those on which the mark could have been refused — the essential particulars requirement in section 6, the prohibitions in section 8, the chemical names bar in section 9, the identical and deceptively similar marks ground in section 10 including its well-known mark limbs, and the names of persons rule in section 11.

See marks that cannot be registered.

The notice shall state the grounds on which the opponent opposes the registration.

Two grounds deserve particular attention from a foreign opponent.

Well-known marks. Section 10(4) does not require the opponent to hold a Bangladeshi registration — a mark well known in Bangladesh for identical or similar goods is enough, and section 10(6) says knowledge in the relevant sector of the public, including knowledge obtained through promotion in Bangladesh, is what establishes it.

Bad faith. Section 8(g) bars a mark where the application is made in bad intention and faith, which is the provision for the distributor or former partner who filed first.

The counter-statement

Section 18(2): the Registrar serves a copy of the notice on the applicant within one month of receiving it, and the applicant must send a counter-statement of the grounds relied on within two months from receipt of that copy — and if he does not do so, he shall be deemed to have abandoned his application.

That is automatic. No hearing, no decision on the merits, no appeal from a decision that was never made.

It is also, in practice, the way most Bangladeshi oppositions end. For an applicant, the counter-statement deadline is the single most important date in the file. For an opponent with a strong case and a thinly-represented applicant, it is why a well-grounded opposition is worth filing.

Evidence and hearing

Section 18(3): where the applicant sends a counter-statement, the Registrar serves a copy on the opponent within one month.

Section 18(4): any evidence on which either party relies is submitted in the prescribed manner and within the prescribed time, and the Registrar gives an opportunity to be heard if the parties so desire.

Section 18(5) and (6): after hearing the parties and considering the evidence, the Registrar decides whether registration is to be permitted and whether subject to conditions or limitations — recording the decision on any conditions imposed.

Security for costs

Section 18(7) is a provision foreign parties should plan for in both directions.

Where a person giving notice of opposition, or an applicant sending a counter-statement, neither resides nor carries on business in Bangladesh, the Registrar may require security for the costs of the proceedings — and in default, may treat the opposition or the application as abandoned.

So an overseas opponent may have to put up security to maintain the opposition, and an overseas applicant may have to put up security to defend one. Either way it is a cost to budget at the outset, not a surprise mid-proceeding.

The 120-working-day rule

Section 18(8): notwithstanding anything else in the section, all opposition-related activities for registration shall be concluded within 120 working days after the notice is given.

That is a statutory timetable on the proceeding as a whole. Whether it is met in every case is a separate question, but it signals that the evidence rounds are expected to be compressed, and a party planning a leisurely evidential programme is planning against the Act.

Corrections

Section 19 lets the Registrar, on such terms as thought fit, permit the correction of any error in a notice of opposition or a counter-statement — alongside the power to correct errors in the application itself.

So a defect in the document can be corrected. A missed deadline cannot.

After the decision

An appeal lies to the High Court Division from an order or decision of the Registrar that finally determines the rights of the parties, within the prescribed period.

On an appeal by an applicant against a decision under section 18, neither the Registrar nor an opposing party may advance grounds other than those recorded in the decision or already argued, without the express permission of the Court. If additional grounds are allowed, the applicant may withdraw the application on notice without liability for the costs of the Registrar or the opposing parties.

If the window closes

Where no opposition is filed and the period has expired, section 20 requires the Registrar to register the mark.

A registration can still be attacked afterwards — through rectification and cancellation under sections 42, 43(4) and 51, before the High Court Division or the Registrar, with the Registrar able to refer the application to the Court. But section 29 provides that registration becomes conclusive as to validity after a period, so a post-registration attack is on a tighter footing than an opposition.

See rectification and cancellation.

Frequently asked questions

How long is the opposition period in Bangladesh? Two months from the date of advertisement, and it cannot be extended — section 93 bars extending a period expressly provided for in the Act or the rules.

Who can oppose? Any person. There is no requirement to hold a Bangladeshi registration, and the well-known mark and bad faith grounds are available to a party with no registration at all.

What happens if the applicant does not file a counter-statement? The application is deemed abandoned. The consequence is automatic and there is no decision on the merits.

How long does the applicant have to answer? Two months from receiving the copy of the notice of opposition, which the Registrar serves within one month of receipt.

Will I have to put up security for costs? Possibly, if you neither reside nor carry on business in Bangladesh. The Registrar may require security from an opponent or from an applicant, and may treat the proceeding as abandoned if it is not given.

How long should an opposition take? The Act requires all opposition-related activities to be concluded within 120 working days of the notice.

Useful official resources

• Department of Patents, Designs and Trademarks, Bangladesh — the Gazette and forms
• Trademarks Act, 2009 — sections 17 to 20, 29, 93, 100
• Trademarks Rules — rules 17 to 23

See our related notes on marks that cannot be registered, rectification and cancellation and well-known and defensive trademarks.

Watching a Bangladeshi advertisement with two months to act? Talk to us.