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Snapshot: Trademark Enforcement in Bangladesh Part: 12 Article Courtesy - Doulah & Doulah # What can be assigned? Trademark registration: the ownership of a registered trademark can be assigned, meaning the rights to the trademark can be transferred from one party to another. Pending trademark applications: an application for a trademark that has not yet been registered can also be assigned. # What documents are required for assignment and what form must they take? What procedures apply? Agreement: execute a written assignment agreement detailing the terms of the transfer. Record with DPDT: submit the assignment agreement to the Department of Patents, Designs, and Trademarks (DPDT) along with the required forms and fee. Update records: once processed, the DPDT will update the trademark register to reflect the new owner. Requirements - Documentation: provide a signed assignment agreement and any additional documents as required by the DPDT. # Must the assignment be recorded for purposes of its validity? Yes, the assignment must be recorded with the DPDT to be legally valid in Bangladesh. Recording ensures that the new owner’s rights are recognised and provides public notice of the ownership change.

Snapshot: Trademark Enforcement in Bangladesh Part: 01 Article Courtesy - Doulah & Doulah # What is the primary legislation governing trademarks in your jurisdiction? In Bangladesh, the primary legislation governing trademarks is the Trademarks Act, 2009. This Act provides the legal framework for the registration, protection, and enforcement of trademark rights in Bangladesh. Key features of the Act include: Registration of trademarks: the Act outlines the process for registering trademarks, including the application procedure, examination, publication and opposition; Rights conferred by registration: it defines the exclusive rights granted to trademark owners upon registration, including the right to use the trademark and to take legal action against infringement; Infringement and remedies: the Act specifies what constitutes trademark infringement and the remedies available to trademark owners, such as injunctions, damages and accounts of profits; Licensing and assignment: provisions for the licensing and assignment of trademarks are included, allowing trademark owners to permit others to use their trademarks under certain conditions; Offences and penalties: the Act details the offences related to trademarks, such as false representation of a trademark, and prescribes penalties for such offences; and Renewal and removal: it includes provisions for the renewal of trademarks and the removal of trademarks from the register for non-use. The Trademarks Rules 2015, supplement the Trademarks Act, 2009, providing detailed procedural guidelines for the implementation of the Act. There are some other penal jurisdictions under the Penal Code 1860 sections 478–486.

Learn about Trademark Assignment in India, a process that allows the transfer of trademark ownership from one party to another. Understand the steps, legal requirements, and benefits involved in assigning trademarks. #trademark #trademarkassignment #trademarkassignmentinindia #India #blog #blogpost

Snapshot: Trademark Enforcement in Bangladesh Part: 02 Article Courtesy - Doulah & Doulah # Which international trademark agreements has our jurisdiction signed? Bangladesh is a member of several international treaties and agreements related to trademarks and intellectual property. The key international trademark agreements that Bangladesh has signed include: Paris Convention for the Protection of Industrial Property: Bangladesh signed to the Paris Convention on 3 March 1991. This convention provides for the protection of industrial property, including trademarks, and ensures that nationals of member countries have the same protection and legal remedies against any infringement of their rights as nationals of the country. World Trade Organization (WTO) – Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). As a member of the WTO, Bangladesh is bound by the TRIPS Agreement, which sets down minimum standards for many forms of intellectual property regulation, including trademarks. The TRIPS Agreement came into effect for Bangladesh on 1 January 2000. Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to the Madrid Agreement. Bangladesh has not yet acceded to the Madrid Agreement or the Madrid Protocol, which allow for the international registration of trademarks. However, there have been discussions and considerations regarding accession to these agreements to facilitate trademark registration for Bangladeshi businesses in multiple jurisdictions. NICE Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks. Bangladesh is not a member of the NICE Agreement, but it follows the NICE Classification system in practice for the classification of goods and services in trademark applications. These international agreements play a significant role in shaping Bangladesh's trademark laws and policies, ensuring that they are in line with global standards and practices.

Snapshot: Trademark Enforcement in Bangladesh Part: 03 Article Courtesy - Doulah & Doulah #Regulators # Which government bodies regulate trademark law? In Bangladesh, the government bodies responsible for regulating trademark law are primarily under the Ministry of Industries. The key regulators include: Department of Patents, Designs and Trademarks (DPDT): Primary regulator: the DPDT is the main government body responsible for the administration and enforcement of trademark law in Bangladesh. Functions: it handles the registration of trademarks, examination of trademark applications, publication of trademarks, opposition and rectification proceedings, renewal of trademarks, and maintenance of the Trademarks Registry. Enforcement: the DPDT and District Judge Court deals with issues related to trademark infringement and provides necessary support in legal actions concerning trademarks. Ministry of Industries: Supervisory role: the Ministry of Industries oversees the functioning of the DPDT and ensures that trademark regulations are in line with national policies and international agreements. Policy formulation: It is involved in formulating policies and regulations related to intellectual property, including trademarks, to promote industrial growth and innovation. These bodies work together to regulate and enforce trademark laws, ensuring that trademarks are properly registered, maintained and protected in Bangladesh.

Snapshot: Trademark Enforcement in Bangladesh Part: 06 Article Courtesy - Doulah & Doulah #Unregistered_trademarks # Can trademark rights be established without registration? In Bangladesh, trademark rights can be established without registration under certain conditions. This is known as protection of unregistered trademarks through common law principles, primarily based on 'passing off'. Passing off is a legal remedy used to protect the goodwill associated with unregistered trademarks. Here is how it works - Establishing rights through use: Goodwill and reputation: the owner of an unregistered trademark must demonstrate that their mark has acquired goodwill and reputation through extensive use in the market. This means the mark is recognised by the public as identifying the goods or services of the owner; Misrepresentation: the owner must prove that the defendant has made a misrepresentation that leads or is likely to lead the public to believe that the goods or services offered by the defendant are those of the owner. This misrepresentation can be intentional or unintentional; and Damage: the owner must show that they have suffered or are likely to suffer damage as a result of the defendant's misrepresentation. Damage can include loss of sales, dilution of the trademark's distinctiveness or harm to the trademark's reputation. Legal action: Passing off: to enforce rights in an unregistered trademark, the owner can file a passing off action in the appropriate court. The burden of proof in passing off cases is generally on the plaintiff (the owner of the unregistered trademark). Limitations of protection for unregistered trademarks: Evidentiary burden: proving the elements of passing off (goodwill, misrepresentation and damage) can be challenging and requires substantial evidence; Limited scope: protection is typically limited to the geographic area where the unregistered trademark has acquired a reputation; and Proactive enforcement: the owner must actively monitor and enforce their rights, as no official registration exists to provide presumptive nationwide rights. Advantages of registration: Legal presumption: registered trademarks benefit from a legal presumption of ownership and validity, making enforcement easier; Broader protection: registration provides nationwide protection and can serve as a basis for international trademark protection under agreements like the Madrid Protocol (if and when Bangladesh joins); and Deterrence: registered trademarks deter others from using similar marks due to the public record of ownership. While unregistered trademarks can be protected under common law principles like passing off, registration offers significant advantages in terms of legal certainty, ease of enforcement and scope of protection.

Snapshot: Trademark Enforcement in Bangladesh Part: 09 Article Courtesy - Doulah & Doulah # What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings? NICE Classification System: Bangladesh follows the Nice Classification System for the classification of goods and services in trademark applications. This system, established by the Nice Agreement (1957), is an international system used by many countries to categorise goods and services for the purposes of trademark registration; and Multi-class applications availability: Bangladesh does not allow for multi-class applications. # What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office? Examination procedure in Bangladesh - Formal examination Initial check: the Department of Patents, Designs, and Trademarks (DPDT) reviews the application for completeness and compliance with formal requirements (eg, proper classification, representation of the mark, and required documentation). Substantive examination Distinctiveness: the trademark is examined for distinctiveness and whether it meets the criteria for registration. Conflict check: the DPDT examines the application for potential conflicts with existing registered trademarks or pending applications. Potential conflicts and letters of consent - Examination for conflicts Search for similar marks: the DPDT conducts a search to identify any existing marks that could conflict with the applied mark. This includes checking for visual, phonetic and conceptual similarities. Letters of consent: Acceptance: letters of consent from the owner of a conflicting trademark may be accepted to overcome objections. Content requirements: the letter should detail the relationship between the marks, clarify the non-conflicting nature of their coexistence, and be duly signed by the consenting party. Responding to rejections - 1. Office action: Notification: if the DPDT raises objections or issues an office action, the applicant is notified in writing. Grounds for rejection: common grounds include lack of distinctiveness, descriptiveness, conflicts with existing trademarks or non-compliance with formal requirements. 2. Response: Time frame: the applicant typically has a specified period to respond to the objections. Argument submission: the applicant can submit written arguments, evidence or amendments to address the objections. Amendments: changes to the application, such as narrowing the list of goods or services or altering the representation of the mark, can be proposed.

The evolution of trademark cancellation and revocation procedures https://lnkd.in/egpCUJyc Florina Firaru of NNDKP considers the latest updates of the law from Romania. #trademark #cancellation #revocation #nndkp

Navigate the path to trademark success in Thailand with our comprehensive guide. Uncover the criteria for registrability, key requirements, and the step-by-step registration process. Stay ahead of legal difficulties, prohibitions, and distinctiveness requirements. Empower your business with a robust trademark strategy. #TrademarkRegistration #BusinessSuccess #LegalInsights #ThailandBusiness #TrademarkStrategy #IntellectualProperty #LegalCompliance

Snapshot: Trademark Enforcement in Bangladesh Part: 10 Article Courtesy - Doulah & Doulah # Is there an appeal process if the application is denied? Yes, there is an appeal process if a trademark application is denied by the Department of Patents, Designs, and Trademarks (DPDT) in Bangladesh. 1. Initial rejection and office action Notification: if the DPDT examiner finds any issues with the trademark application, the applicant will receive an office action detailing the reasons for the refusal. Response period: the applicant usually has a specified period (typically two months) to respond to the office action with arguments or amendments addressing the examiner's objections. 2. Appeal to the Registrar of Trademarks Filing an appeal: if the response to the office action does not resolve the issues and the application is formally denied, the applicant can file an appeal to the Registrar of Trademarks. Grounds for appeal: the appeal should clearly state the grounds for challenging the refusal and include any additional evidence or arguments supporting the registrability of the trademark. Time frame: the appeal must be filed within a specified period from the date of the refusal notice (typically 30 days, but it is advisable to check the specific regulations for exact deadlines). 3. Hearing before the Registrar Hearing: the Registrar may schedule a hearing where the applicant or their legal representative can present their case in person. Decision: after considering the appeal and any additional submissions, the Registrar will make a decision to uphold the refusal or allow the registration. 4. Further appeal to the High Court Judicial review: if the Registrar’s decision is unfavourable, the applicant can further appeal to the High Court Division of the Supreme Court of Bangladesh. Procedure: this involves filing a petition for judicial review, outlining the legal and factual basis for challenging the Registrar's decision. # What is the procedure for surrendering a trademark registration? The trademark owner must submit a formal request to the Department of Patents, Designs, and Trademarks (DPDT) indicating their intention to surrender the trademark registration. Verification and processing: The DPDT will verify the submitted application and documentation. If the application is in order, the DPDT will process the request for surrender. Notification and record update: Once the surrender is accepted, the DPDT will update the official trademark register to reflect the surrender of the trademark. The trademark owner will receive a formal notification confirming that the trademark registration has been surrendered.