Trademark Registration & Patent Act 2023 Guide Bangladesh

Introduction to Intellectual Property in Bangladesh

For foreign investors and multinational corporations operating in Bangladesh, safeguarding Intellectual Property (IP) is a paramount concern. As the Vice President of Legal Affairs & Company Secretary at Nagad Limited, and an Advocate of the Supreme Court of Bangladesh, I frequently advise corporate boards on navigating the intricacies of the Department of Patents, Designs and Trademarks (DPDT). This pillar article elucidates the statutory frameworks governing trademarks and patents, specifically focusing on the Trademarks Act 2009 and the newly enacted Patent Act 2023.

Trademark Registration: Statutory Framework

The registration and protection of trademarks in Bangladesh are governed by the Trademarks Act 2009 and the Trademarks Rules 2015. Section 15 of the Act mandates that any person claiming to be the proprietor of a trademark used or proposed to be used in Bangladesh may apply for registration.

Procedural Steps for Trademark Registration

1. Clearance Search: Conduct a search at the DPDT to ensure no identical or deceptively similar marks exist under Section 10.
2. Filing the Application: Submit the application under Section 15 with the prescribed fee. Foreign entities must file through a local legal representative.
3. Examination: The Registrar examines the application under Section 16 to check for absolute and relative grounds of refusal (Sections 8 and 10).
4. Publication: If accepted, the mark is published in the Trademarks Journal under Section 17.
5. Registration: If no opposition is filed within the statutory period, the certificate is issued under Section 20.

Madrid Protocol Alternatives for Foreign Investors

Bangladesh is not a signatory to the Madrid Protocol. Consequently, international registrations designating Bangladesh via the WIPO Madrid System are not legally recognized. Foreign investors must file national applications directly with the DPDT.

However, under Section 73 of the Trademarks Act 2009, priority can be claimed if the application is filed in Bangladesh within six months of the first filing in a Paris Convention member country. This is the primary alternative for foreign corporations seeking to synchronize their global IP strategy with local protection.

Opposition Proceedings (Section 18)

Once a trademark is published in the Journal, any person may give notice of opposition to the Registrar within two months (extendable by one month) under Section 18 of the Trademarks Act 2009. The opposition process involves filing a Notice of Opposition (Form TM-5), followed by the applicant's Counter-Statement (Form TM-6), and subsequent evidentiary hearings.

Landmark Principle: In the case of Sony Kabushiki Kaisha vs. Registrar of Trademarks, the High Court Division established that well-known international marks enjoy cross-border reputation protection in Bangladesh, even if they are not physically trading within the territory, thereby preventing local entities from registering deceptive variants.

The Patent Act 2023: A New Era of Protection

The Patent Act 2023 repealed the antiquated Bangladesh Patent Act 2023, bringing Bangladesh's patent regime closer to TRIPS compliance. This is a critical development for foreign investors in pharmaceuticals, technology, and manufacturing.

Key Provisions of the Patent Act 2023

1. Term of Patent: Section 23 establishes a 20-year term of protection from the date of filing, aligning with international standards.
2. Patentability Criteria: Section 14 strictly defines patentable inventions as those that are novel, involve an inventive step, and are capable of industrial application.
3. Compulsory Licensing: To balance public interest, Section 30 allows the government to issue compulsory licenses in cases of national emergency, public health crises, or anti-competitive practices.

Comparative Analysis: Trademarks vs. Patents in Bangladesh