Bangladesh recognises more categories of mark than most of its neighbours, including two that modern statutes have largely dropped — associated marks and defensive registrations. One of them you apply for; the other the office can impose.
Quick reference
| Type | Chosen or imposed | What makes it different |
|---|---|---|
| Ordinary trademark | Chosen | Must meet the essential particulars test |
| Series of marks | Chosen | Several closely resembling marks in one registration |
| Associated marks | Imposed by the Registrar | Assignable only as a whole |
| Certification trademark | Chosen | The proprietor certifies; Government consent to assign |
| Collective mark | Chosen | For members of an association |
| Textile mark | By the goods | Separate classification and restrictions |
| Defensive registration | Chosen | For goods you do not sell; immune from non-use removal |
Ordinary marks and the essential particulars
Before anything else, a Bangladeshi mark has to satisfy section 6 — it must contain or consist of at least one of five essential particulars: a company, individual or firm name represented in a special or particular manner; a signature; invented words; words with no direct reference to character or quality and not being a geographical name, surname, personal name or the name of a sect, caste or tribe in Bangladesh; or any other distinctive mark.
A name, signature or word outside the first four is registrable only on evidence of distinctiveness. See marks that cannot be registered.
Colour. Section 7: a mark may be limited wholly or in part to specified colours, and the limitation is taken into account in assessing distinctive character. A mark registered without a colour limitation is deemed registered for all colours — so black and white is generally the broader filing.
Parts of marks and series
Section 12 covers the registration of parts of trademarks and of trademarks as a series.
The part provision lets a proprietor who claims exclusive rights in a part of a mark apply to register the whole and the part as separate marks, each standing on its own.
The series provision allows several marks for the same goods that resemble each other in their material particulars and differ only in limited respects to be registered together. It is the route for a logo in several colourways or with minor variants — not for marks that differ in their distinctive elements, which are separate marks needing separate applications.
Associated marks
Section 13 gives the Registrar power to require registration of trademarks as associated, where marks of the same proprietor so nearly resemble each other, for the same goods or description of goods, that use by different people would be likely to deceive or cause confusion.
Two consequences, pulling in opposite directions.
They cannot be split. Section 39(2): associated marks are assignable and transmissible only as a whole and not separately, though for all other purposes they are deemed registered as separate marks. A brand family that has been associated cannot be sold off piece by piece.
Use of one can count as use of another. Section 49 allows the use of one of several associated or substantially identical trademarks to be treated as equivalent where use has to be proved. For a family of marks where only some are actively used, that is valuable against a non-use attack.
Association is imposed by the office rather than chosen, so it is worth anticipating when filing a brand in several closely related forms.
Certification trademarks
Sections 56 to 65 deal with certification marks in detail — registration, the determination of whether a mark is a certification mark, the application and its consideration by the Government, opposition, the deposit of regulations governing use, the rights conferred, infringement, acts not constituting infringement, and cancellation or variation.
Three features to note.
Government involvement. The application is considered by the Government, and section 39(1) requires the prior consent of the Government before a certification mark may be assigned or transmitted, on an application made through the Registrar.
Regulations governing use must be deposited, as in other systems. They are the substance of the filing.
No damages or account for infringement. Section 97(2)(a) provides that the Court shall not grant damages or an account of profits where the infringement complained of relates to a certification trademark. Injunctive relief and delivery up remain. That is a significant limitation on the value of enforcing a certification mark and it should shape expectations before a claim is brought.
Collective marks
Section 122 provides that, except as otherwise expressly provided by the Act or any other law, the provisions of the Act apply as far as may be made applicable to a collective mark.
The Rules treat collective marks and guarantee marks alongside trademarks and certification marks on the standard application form, so the filing route is the same, with the differences coming through the conditions of use.
Textile marks
Chapter provisions in sections 66 to 70 govern textile goods: the Government prescribes the classes of goods concerned, restrictions on registration for textile goods apply, and there are rules on the stamping of piece goods and cotton yarn, the declaration of piece goods, and the determination of the character of textile goods by the office.
Classification is separate too — the Fifth Schedule to the Rules rather than the Fourth. See trademark classes in Bangladesh.
Defensive registrations
Section 43 allows a mark consisting of an invented word, which has become so well known for the goods it is registered and used for that use on other goods would be taken as indicating a connection with the proprietor, to be registered for those other goods as a defensive trademark — notwithstanding that the proprietor does not use or propose to use it there, and notwithstanding section 42.
The point of it: while so registered, a defensive trademark cannot be removed for non-use in respect of those goods.
Defensive registrations are deemed associated with the main registration, cannot carry a registered user, and may be cancelled if the underlying registration goes or the connection is no longer likely to be indicated.
See well-known and defensive trademarks.
Well-known marks
A mark well known in Bangladesh is a status rather than a registration category, and it blocks later applications for identical or similar goods without any Bangladeshi registration. Knowledge in the relevant sector of the public, including knowledge obtained through promotion in Bangladesh, is the test.
Unregistered marks
Worth stating as a category, because of what it cannot do. Section 24(1) bars any proceeding to prevent or recover damages for infringement of an unregistered mark; section 24(2) preserves passing off. And section 35 restricts the assignment of an unregistered mark to assignments with the goodwill, subject to one exception.
See passing off in Bangladesh.
Frequently asked questions
What is an associated trademark? Closely resembling marks of the same proprietor that the Registrar requires to be registered as associated. They can be assigned only as a whole, but use of one can be accepted as use of another.
What is a defensive registration? A registration of an invented-word mark for goods the proprietor does not sell, available where the mark is so well known that use on those goods would indicate a connection with the proprietor. It cannot be removed for non-use.
Can I register a series of marks? Yes, where the marks are for the same goods and resemble each other in their material particulars, differing only in limited respects.
Is there anything special about enforcing a certification mark? Yes. The Court shall not grant damages or an account of profits where the infringement relates to a certification trademark, so the remedies are injunctive.
Do I need consent to assign a certification mark? Yes, the prior consent of the Government, on an application made through the Registrar.
Should I file my logo in colour? Usually not. A mark registered without a colour limitation is deemed registered for all colours.
Useful official resources
- Department of Patents, Designs and Trademarks, Bangladesh
- Trademarks Act, 2009 — sections 6, 7, 12, 13, 24, 35, 39, 43, 49, 56 to 70, 97, 122
- Trademarks Rules — rules 9, 10 and the Fourth and Fifth Schedules
See our related notes on marks that cannot be registered, well-known and defensive trademarks and trademark classes.
Not sure which form of protection fits the mark you are taking into Bangladesh? Talk to us.