Bangladesh has two distinct mechanisms for famous marks and they do different jobs. One is a status you establish when you need it. The other is a registration you apply for in advance, for goods you have no intention of selling.
The second has largely disappeared from modern trademark statutes. It survives here, and for the right brand it is worth using.
Quick reference
| Well-known status | Defensive registration | |
|---|---|---|
| Section | 10(4) to (6), 26(7) | 43 |
| What it is | A status established on the evidence | A registration for other goods |
| Bangladeshi registration needed? | No — for identical or similar goods | It is a registration |
| What it blocks | Later applications; infringement where the mark is registered | Later applications, as a registration |
| Non-use exposure | Not applicable | Immune — expressly not removable under section 42 |
| Requirement | Knowledge in the relevant sector of the public | An invented word, so well known that use on other goods would indicate a connection |
Well-known status
Sections 10(4) and (5) put well-known marks inside the registration bars.
Identical or similar goods. No trademark shall be registered if it is identical with, confusingly similar to, or constitutes a translation of a mark or trade description which is well known in Bangladesh for identical or similar goods or services of another enterprise.
There is no requirement that the well-known mark be registered in Bangladesh. For a brand with reputation and no local filing, this is the ground to rely on.
Dissimilar goods. No mark shall be registered for goods or services where the earlier mark is well known and registered in Bangladesh for goods or services that are not identical or similar, if the mark is used in such a way that may create a false conception that there is a connection between those goods and the owner of the registered mark, and the interests of the registered trademark are likely to be damaged.
Note the difference. Cross-category protection requires the well-known mark to be registered in Bangladesh as well as well known. That is the practical argument for registering a famous mark here even where it is not yet traded: registration is what unlocks protection beyond your own goods.
The same split appears in enforcement. Section 26(7) gives an infringement action to the owner of a well-known mark which is registered, covering both identical or similar goods and dissimilar goods where use would indicate a connection and the owner’s interests are likely to be damaged.
How well-known status is established
Section 10(6) is short and it tells you what the evidence has to go to:
In determining whether a mark referred to in subsections (4) and (5) is well known, the knowledge of the mark in the relevant sector of the public, including knowledge which has been obtained in Bangladesh as a result of the promotion of the mark, shall be taken into account.
Two things to take from that.
The test is knowledge, not sales. Promotion-derived knowledge counts expressly. A brand advertised into Bangladesh, visible through regional media, online presence or cross-border exposure, is building the material the section asks for even without a distributor.
The relevant sector of the public is the measure, not the population at large. For a business-to-business brand, a component brand or one sold through a specialist channel, the relevant sector is that trade — which is a far easier case than general fame.
Bangladesh does not maintain a published list of well-known marks. Status is established in the proceeding where it is relied on, which means the file has to be built for each matter.
Where you can use it
- As an objection in examination, where the Registrar cites the earlier well-known mark.
- As a ground of opposition, within the two months from advertisement — which is not extendable, so the evidence has to be ready.
- As a basis for rectification under section 51, as an entry made without sufficient cause or wrongly remaining on the register.
- As an infringement action under section 26(7), where the well-known mark is registered in Bangladesh.
See trademark opposition in Bangladesh.
Defensive registration
Section 43 is the unusual one, and it solves a specific problem: a famous mark that cannot be registered for goods outside its own sector because the owner has no intention of using it there, and which would be vulnerable to non-use removal if it were.
The conditions. Where a trademark consisting of any invented word has become so well known in respect of the goods or services for which it is registered and has been used, that use of it on other goods or services would be likely to be taken as indicating a connection in the course of trade between those other goods and a person entitled to use the mark on the first goods — then, notwithstanding that the proprietor does not use or propose to use the mark on those other goods, and notwithstanding section 42, the mark may be registered in the proprietor’s name for those other goods as a defensive trademark.
The key consequence. While so registered, a defensive trademark shall not be liable to be taken off the register in respect of those goods under section 42 — the non-use provision.
So a defensive registration is a registration that cannot be attacked for the thing it is obviously vulnerable to. That is its entire point.
Three conditions worth noting.
It must be an invented word. Section 43(1) says so expressly. A descriptive or ordinary-language mark, however famous, does not qualify. Nor, on the face of it, does a device mark.
The main registration has to be real. The mark must be well known in respect of goods for which it is registered and has been used. A defensive registration is parasitic on a genuine, used registration.
It may be applied for even where the mark is already registered for those goods otherwise than defensively — section 43(2).
Association. Section 43(3): a mark registered as a defensive trademark, and the same mark otherwise registered in the name of the same proprietor, are deemed to be and shall be registered as associated trademarks, notwithstanding that the registrations are for different goods.
Cancelling a defensive registration
Section 43(4): on application by any person aggrieved to the High Court Division or the Registrar, a defensive registration may be cancelled on the ground that:
- the requirements of section 43(1) are no longer satisfied in respect of the goods for which the mark is registered otherwise than defensively; or
- in respect of the goods it is defensively registered for, there is no longer any likelihood that use of the mark on those goods would be taken as indicating the connection.
And section 43(5): the Registrar may at any time cancel a defensive registration of a mark for which there is no longer any registration in the same proprietor’s name otherwise than as a defensive trademark.
So the defensive registration lives and dies with the main one. Let the underlying registration lapse — and Bangladesh’s seven-year first term makes that easier than it sounds — and the defensive registrations go with it. See renewal and restoration.
Registered users
One further point, because it interacts. Section 44(1) allows a person other than the proprietor to be registered as a registered user of a mark in respect of all or any of the goods for which it is registered otherwise than as a defensive trademark.
A defensive registration cannot be licensed through the registered user machinery. That follows from what it is — a registration for goods nobody is selling.
Which to use
If you have no Bangladeshi registration, well-known status under section 10(4) is your route against a later application for similar goods, and the evidence is knowledge in the relevant sector of the public.
If you have a Bangladeshi registration and want protection beyond your own goods, you need either well-known status plus that registration under section 10(5), or defensive registrations under section 43 — and the second is more certain, because it puts the position on the register rather than leaving it to be proved.
If your mark is an invented word with real fame in its own sector, defensive registration is available and worth costing. The constraint is that each class is a separate application and a separate renewal, so a defensive programme is a recurring commitment. See trademark classes in Bangladesh.
Frequently asked questions
Do I need a Bangladeshi registration to rely on well-known status? Not to block a later application for identical or similar goods. You do need one for the cross-category protection in section 10(5) and for the infringement action in section 26(7).
How is a mark shown to be well known in Bangladesh? By knowledge of the mark in the relevant sector of the public, including knowledge obtained in Bangladesh as a result of promotion of the mark. Sales in Bangladesh are not the test.
What is a defensive trademark registration? A registration of an invented-word mark for goods or services the proprietor does not sell, available where the mark is so well known that use on those other goods would indicate a connection with the proprietor.
Can a defensive registration be removed for non-use? No. Section 43 expressly provides that while so registered it is not liable to be taken off the register under section 42.
Can any mark be registered defensively? No. Section 43 requires a trademark consisting of an invented word, and the mark must already be well known for goods for which it is registered and has been used.
What happens to my defensive registrations if the main registration lapses? The Registrar may cancel a defensive registration of a mark for which there is no longer any registration in the same proprietor’s name otherwise than as a defensive trademark.
Useful official resources
- Department of Patents, Designs and Trademarks, Bangladesh
- Trademarks Act, 2009 — sections 10, 26, 42, 43, 44, 51
- Trademarks Rules
See our related notes on marks that cannot be registered, rectification and cancellation and trademark infringement.
Protecting a famous mark in Bangladesh, or weighing defensive registrations? Talk to us.