A register search in Bangladesh answers one question well and leaves three important ones open. Knowing which is which is what makes the search worth doing.
Quick reference
| The register | Maintained under section 4; documents open to public inspection under section 116 |
| Indexes | Kept under section 115 |
| Published | Advertisements of accepted applications, and registrations |
| Covered by a search | Registrations, and applications once advertised |
| Not covered | Unregistered use, well-known marks, bad-faith circumstances |
| Also not obvious | A lapsed registration still counts for one year |
| Electronic access | Section 123 provides for notices, advertisements and records by electronic circulation |
What the register holds
Section 4 establishes the Register of Trademarks, section 115 provides for indexes, and section 116 makes documents open to public inspection save as otherwise provided.
Section 123 then provides for the use of information and communication technology — notices, advertisements, orders and other matters may be published in the electronic Gazette, and records to be made available to the public may be made available by electronic circulation.
So the register is a public document, and the advertisement of accepted applications is how pending rights become visible.
What a search is good for
Earlier registrations and advertised applications. This is the section 10(1) ground — a mark identical with or deceptively similar to one already registered in the name of a different proprietor for the same goods or description.
Section 10’s Explanation defines an earlier trademark as a registered mark with an earlier application date, taking account of priorities claimed, and includes a mark for which an application has been made which, if registered, would be an earlier trademark. So pending applications matter, and a search that only looks at registrations is incomplete.
The proprietor, and recorded interests. Assignments and transmissions are entered on the register, and registered users are recorded. Both tell you who you would actually be dealing with, and section 105 provides for a registered user to be impleaded in certain proceedings.
The dates. Because the term runs from the application date and the first term is seven years, the register tells you when a blocking registration falls due for renewal — which is more immediate information in Bangladesh than in a ten-year jurisdiction.
Defensive registrations. A mark registered defensively under section 43 appears on the register for goods its owner does not sell, and it is immune from non-use removal. If your clearance turns up a registration in a class the owner plainly does not trade in, check whether it is defensive before assuming it is vulnerable. See well-known and defensive trademarks.
What a search will not show
Well-known marks. Section 10(4) bars registration of a mark identical with, confusingly similar to, or a translation of a mark or trade description well known in Bangladesh for identical or similar goods of another enterprise — with no requirement that the well-known mark be registered in Bangladesh. Section 10(6) makes the test knowledge in the relevant sector of the public, including knowledge obtained through promotion. None of that is searchable.
Unregistered use and goodwill. Passing off is preserved by section 24(2), and section 96 expressly contemplates passing-off suits based on an unregistered mark. A trader with real goodwill and no registration is invisible to a search and entirely visible in court. See passing off in Bangladesh.
Bad faith and your own history. Section 8(g) bars an application made in bad intention and faith, and section 8(f) bars a mark otherwise disentitled to protection in a court. Whether those apply turns on the applicant’s conduct and dealings, not on the register. If the business has had a distributor, agent or partner in Bangladesh, that history is part of clearance.
The one-year shadow of a lapsed mark
This is the point a search of current registrations misses entirely, and it works in both directions.
Section 10(8): 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 of it during the two years immediately preceding the expiry.
Section 23: where a mark has been removed for failure to pay the renewal fee, it is nevertheless deemed to be a mark already on the register for the purpose of any application to register another mark during one year after the removal — unless the Tribunal is satisfied both that there was no bona fide trade use in the two years immediately preceding removal and that no deception or confusion would be likely.
So spotting a lapse and filing immediately runs into a one-year quarantine, and the way out of it is evidence that the mark was already dead before it lapsed.
A clearance search therefore has to look at what has come off the register in the last year, not only what is on it.
Reading the result
Where something is found, the questions are:
Is it in use? Removal under section 42 needs five years of non-use up to a date one month before the application, or registration without a bona fide intention to use plus no use. Use resumed in that last month does not count. See rectification and cancellation.
Is it defensive? If so, it is immune from non-use removal for those goods.
Will consent work? Section 10(7): nothing in the section prevents registration where the proprietor of the earlier mark or other earlier right consents.
Is honest concurrent use available? Section 10(2) lets the Registrar permit registration by more than one proprietor of identical or nearly resembling marks for the same goods, in cases of honest concurrent use or other special circumstances, subject to limitations and conditions.
Could the office hold things up? Section 10(3) lets the Registrar keep later applications pending until an earlier one is determined.
Before filing
- Search registrations and advertised applications, since pending applications count as earlier marks.
- Check what lapsed or was removed in the last year.
- Check your own dealings in the market, against the bad faith and deception bars.
- Watch the Gazette afterwards, because the opposition window is two months and cannot be extended.
Frequently asked questions
Is the Bangladeshi trademark register public? Yes. Documents are open to public inspection save as otherwise provided, indexes are kept, and the Act provides for publication and records through electronic circulation.
Do pending applications matter to clearance? Yes. The definition of an earlier trademark includes a mark for which an application has been made which, if registered, would be an earlier trademark.
Does a clear search mean I can register? No. Well-known marks need no Bangladeshi registration to block an application, unregistered goodwill supports a passing-off claim, and bad faith is a separate bar.
Why do lapsed marks matter? A mark whose registration has expired or been removed is still taken into account for one year, unless there was no bona fide use in the two years before it went.
What if the blocking registration is not being used? Removal under section 42 needs five years of non-use up to a date one month before the application — unless the registration is a defensive one, which cannot be removed for non-use.
Can two people register the same mark? In cases of honest concurrent use or other special circumstances, the Registrar may permit registration by more than one proprietor, subject to limitations and conditions.
Useful official resources
- Department of Patents, Designs and Trademarks, Bangladesh — the register and the Gazette
- Trademarks Act, 2009 — sections 4, 10, 23, 42, 43, 105, 115, 116, 123
- Trademarks Rules
See our related notes on filing a trademark in Bangladesh, marks that cannot be registered and trademark opposition.
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