If a regional portfolio loses a registration somewhere, it is usually here. Bangladesh runs a term length nobody else in the region uses, measured from a date that is not on the certificate, with a renewal window that opens and closes before expiry rather than after it.
Quick reference
| First term | Seven years |
| Running from | The date of the application — or the Convention filing date where priority was claimed |
| Renewals | Ten years each, from expiry of the original registration or the last renewal |
| Renewal application | Form TM-12, at least three months before expiry |
| Office reminder | Issued at least two months before expiry if no application has been made |
| After expiry | Renewal still possible on the prescribed form within six months of expiry |
| Removal | By the Registrar where the conditions are not complied with |
| Restoration | Within one year from the expiration of the last registration |
| Removed mark as a citation | Treated as still on the register for one year |
The first term, and where it starts
Section 22(1): registration of a trademark is for a period of seven years. Section 22(2): the Registrar renews it for ten years from the expiration of the original registration or, as the case may be, of the last renewal.
So the cycle is seven, then ten, then ten, indefinitely.
The start date is the other half of the problem. Section 20(1) provides that the Registrar registers the mark giving effect to it from the date of the making of the application, and that date shall be deemed to be the date of registration — subject to section 120, which substitutes the Convention filing date where priority was claimed.
Two consequences worth stating plainly:
The certificate date is not the operative date. A registration granted three years after filing has four years of its first term left when the certificate arrives.
A priority claim shortens it further. Where a six-month priority was claimed, the term runs from the earlier Convention filing, so another six months is already gone.
A diary built from certificate dates on a ten-year cycle will be, in a typical case, several years late.
The renewal window opens before expiry
Rule 36(1) requires the registered owner to apply for renewal on Form TM-12 at least three months before the expiration of the registration.
This is the opposite of the pattern elsewhere in the region, where the window runs up to the expiry date and a grace period follows. In Bangladesh the application is expected in hand three months out.
Where no application has been made, rule 36(2) requires the Registrar to issue a notice to the registered owner at least two months before expiry, informing them of the approaching expiration. Section 22(3) is to the same effect — a notice of the date of expiration and the conditions on which renewal may be obtained.
That reminder is only as good as the address on the register. For a foreign owner it goes to the recorded address for service, which is the single most common reason the notice never arrives. See changes to a trademark.
After expiry
The mark is not removed the day the term ends.
Rule 36(3): where the registered owner does not apply for renewal on the prescribed form within a period not exceeding six months from the date of expiration, the Registrar may remove the trademark from the register. Section 22(3) is in the same terms — where the conditions have not been complied with at the expiration of the prescribed time, the Registrar may remove the mark.
So there is a six-month window after expiry in which renewal remains possible. It carries the prescribed additional fee, and it is a window rather than an entitlement.
Restoration
Section 22(4) covers the position after removal.
Where a mark has been removed for non-payment of the prescribed fee, the Registrar may — within one year from the expiration of the last registration, on an application in the prescribed form, and if satisfied that it is just so to do — restore the mark to the register and renew the registration, either generally or subject to conditions or limitations, for ten years from the expiration of the last registration.
Three points on that.
The one year runs from expiry, not from removal. So the six-month late-renewal window and the restoration period overlap; the outer limit for both is one year from the expiration of the last registration.
It is discretionary. “If satisfied that it is just so to do” means the reason for the failure matters, and restoration is not something to plan around.
The renewed term is still measured from the old expiry date. Restoration does not buy ten fresh years from the date of restoration — the ten years runs from the expiration of the last registration, so part of it has already gone.
The year after removal
Removal does not immediately clear the way for a competitor.
Section 23: where a mark has been removed for failure to pay the renewal fee, it is nevertheless deemed to be a trademark already on the register for the purpose of any application to register another trademark during one year after the removal — unless the Tribunal is satisfied both that there was no bona fide trade use of the removed mark during the two years immediately preceding its removal, and that no deception or confusion would be likely to arise.
Section 10(8) says the same thing from the applicant’s side: a trademark whose registration expires continues to be taken into account in determining registrability for one year after the expiry, unless the Registrar is satisfied there was no bona fide use in the two years before expiry.
So a lapse is a one-year quarantine for everybody, and the way out of it is evidence that the mark was already dead before it lapsed.
No evidence of use at renewal
Bangladesh does not ask for proof of use to renew. Use is tested through removal for non-use under section 42 — either registration without any bona fide intention to use plus no use up to one month before the application, or a continuous period of five years or longer with no bona fide use, again up to one month before the application.
That is a separate proceeding brought by a person aggrieved, before the High Court Division or the Registrar. See rectification and cancellation.
One exception worth knowing: a mark registered as a defensive trademark under section 43 is expressly not liable to be removed for non-use in respect of the goods it is defensively registered for. See well-known and defensive trademarks.
Per class, per renewal
Bangladesh requires a separate application for each class, so a brand in four classes is four registrations with four renewal dates.
Filed on the same day they stay in step. Filed months apart — or one delayed by an objection, which does not change the deemed registration date but may change when the certificate arrives — and the dates diverge. Since the term runs from the application date rather than from registration, two classes filed in different months renew in different months whatever their certificates say.
A diary that actually works for Bangladesh
- Record the application date (or priority date) for every registration, and treat the certificate date as decoration.
- Set the first renewal at seven years from that date, with an alert at ten months out.
- Set subsequent renewals at ten years.
- Treat three months before expiry as the filing deadline, not the start of a window.
- Keep a hard backstop at one year from expiry, after which nothing can be recovered.
- Keep the address for service current, because the statutory reminder goes there.
Frequently asked questions
How long does a Bangladeshi trademark registration last? Seven years for the first term, then ten years for each renewal.
When does the term start? On the date the application was made, which the Act deems to be the date of registration — or the Convention filing date where priority was claimed.
When should I file the renewal? At least three months before expiry, under the Rules. The Registrar issues a reminder at least two months before expiry if nothing has been filed.
What if I miss the expiry date? Renewal remains possible within six months of expiry. After that the Registrar may remove the mark, and restoration is available at the Registrar’s discretion up to one year from the expiration of the last registration.
Does restoration give me a fresh ten years? Not from the date of restoration. The renewed registration runs for ten years from the expiration of the last registration, so part of the term has already passed.
Can a competitor register my mark as soon as it lapses? Not straight away. A removed mark is treated as still on the register for one year, unless the Tribunal is satisfied there was no bona fide use in the two years before removal and no likelihood of deception.
Useful official resources
- Department of Patents, Designs and Trademarks, Bangladesh — renewal forms and fees
- Trademarks Act, 2009 — sections 10, 20, 22, 23, 42, 43, 120
- Trademarks Rules — rule 36
See our related notes on trademark protection in Bangladesh, rectification and cancellation and changes to a trademark.
Carrying Bangladeshi renewals on a diary built from certificate dates? Talk to us.