- CHAPTER I
- CHAPTER II
- CHAPTER III
- CHAPTER IV
- CHAPTER V
- CHAPTER VI
- CHAPTER VII
- CHAPTER VIII
- CHAPTER IX
- CHAPTER X
- CHAPTER XI
THE TRADE MARKS ACT, 1940
(ACT NO. V OF 1940).
[ 11th March, 1940 ]
An Act to provide for the registration and more effective protection of Trade Marks. 1 WHEREAS it is expedient to provide for the registration and more effective protection of trade marks; It is hereby enacted as follows:- CHAPTER I PRELIMINARY Short title, extent and commencement
1. (1) This Act may be called the Trade Marks Act, 1940. (2) It extends to the whole of Bangladesh. (3) This section and section 85 shall come into force at once; the remaining provisions of the Act shall come into force on such date as the Government may, by notification in the official Gazette, appoint in this behalf.
Definitions
2. (1) In this Act, unless there is anything repugnant in the subject or context,- (a) “associated trade marks” means trade marks deemed to be, or required to be registered as, associated trade marks under this Act; (b) “certification trade mark” means a mark adapted in relation to any goods to distinguish in the course of trade goods certified by any person in respect of origin, material, mode of manufacture, quality, accuracy or other characteristic, from goods not so certified and registrable as such under the provisions of Chapter VIII in respect of those goods in the name, as proprietor of the certification trade mark, of that person; (c) “District Court” means the Court of the District Judge and includes the Court of an Additional District Judge 2[ * * * ]; 3[ * * * ] (e) “limitations” (with its grammatical variations) means any limitations of the exclusive right to the use of a trade mark given by the registration of a person as proprietor thereof, including limitations of that right as to mode of use, as to use in relation to goods to be sold or otherwise traded in within Bangladesh, or as to use in relation to goods to be exported to any market outside Bangladesh; (f) “mark” includes a device, brand, heading, label, ticket, name, signature, word, letter or numeral or any combination thereof; (g) “permitted use” means the use of a trade mark by a registered user thereof in relation to goods with which he is connected in the course of trade and in respect of which for the time being the trade mark remains registered and he is registered as a registered user, being use such as to comply with any conditions or restrictions to which his registration is subject; (h) “prescribed” means prescribed by rules made, in relation to proceedings before the High Court Division, by 4[ the Supreme Court], and in other cases, by the Government; (i) “registered” (with its grammatical variations) means registered under this Act; (j) “registered trade mark” means a trade mark which is actually on the register; (k) “registered user” means a person who is for the time being registered as such under section 41; (l) “trade mark” means a mark used or proposed to be used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some person having the right, either as proprietor or as registered user, to use the mark whether with or without any indication of the identity of that person; (m) “transmission” means transmission by operation of law, devolution on the personal representative of a deceased person and any other mode of transfer, not being assignment; (n) “tribunal” means the Registrar or, as the case may be, the Court before which the proceeding concerned is pending. (2) References in this Act to the use of a mark shall be construed as references to the use of a printed or other visual representation of the mark, and references herein to the use of a mark in relation to goods shall be construed as references to the use thereof upon, or in any other relation whatsoever to such goods.
Application of other laws not barred
3. The provisions of this Act shall be in addition to, and not in derogation of the provisions of any other law for the time being in force.
CHAPTER II THE REGISTER AND CONDITIONS FOR REGISTRATION The register of trade marks
4. 5[ (1) For the purposes of this Act, there shall be established a Trade Marks Registry which shall be the Trade Marks Registry Wing referred to in sub-section (3) of section 55 of the Patents And Designs Act, 1911 (II of 1911); and a record called the Register of Trade Marks, in this Act referred to as the register, shall be kept thereat wherein shall be entered all registered trade marks with the names, addresses anddescriptions of their proprietors, notifications of assignments and transmissions, the names, addresses and descriptions of registered users, disclaimers, conditions, limitations, and such other matters relating to registered trade marks as may be prescribed, but there shall not be entered in the register any notice of any trust express, implied or constructive, nor shall any such notice be receivable by the Registrar.] 6[ (2) There shall be a Registrar of Trade Marks to be called the Registrar for the purposes of this Act, and the Registrar of Patents, Designs and Trade Marks appointed under sub-section (1) of section 55 of the Patents And Designs Act, 1911 (II of 1911) shall be the Registrar; and subject to the superintendence and direction of the Government, the register shall be kept under the control and management of him.] (2A) and (2B) [Omitted by section 2 of the Trade Marks (Amendment) Act, 2003 (Act No. XIV of 2003).] (3) The register shall at all convenient times be open to the inspection of the public, subject to such conditions and restrictions as may be prescribed. (4) [Omitted by section 2 of the Trade Marks (Amendment) Act, 2003 (Act No. XIV of 2003).]
[]
4A. [Branch of Trade Marks Registry.- Inserted by section 2A of the Trade Marks (Amendment) Act, 1943 (Act No. XV of 1943) and subsequently omitted by section 3 of the Trade Marks (Amendment) Act, 2003 (Act No. XIV of 2003).]
Registration to be in respect of particular goods
5. (1) A trade mark may be registered only in respect of particular goods or classes of goods. (2) Any question arising as to the class within which any goods fall shall be determined by the Registrar whose decision in the matter shall be final.
Distinctiveness requisite for registration
6. (1) A trade mark shall not be registered unless it contains or consists of at least one of the following essential particulars, namely:- (a) the name of a company, individual, or firm, represented in a special or particular manner; (b) the signature of the applicant for registration or some predecessor in his business; (c) one or more invented words; (d) one or more words having no direct reference to the character or quality of the goods, and not being according to its ordinary signification, a geographical name or surname or the name of a sect, caste or tribe in Bangladesh; (e) any other distinctive mark, provided that a name, signature, or any word, other than such as fall within the descriptions in the above clauses, shall not be registrable except upon evidence of its distinctiveness. (2) For the purposes of this section, the expression “distinctive” means adapted, in relation to the goods in respect of which a trade mark is proposed to be registered, to distinguish goods with which the proprietor of the trade mark is or may be con¬nected in the course of trade from goods in the case of which no such connection subsists, either generally or, where the trade mark is proposed to be registered subject to limitations, in rela¬tion to use within the extent of the registration. (3) In determining whether a trade mark is adapted to distinguish as aforesaid, the tribunal may have regard to the extent to which¬- (a) the trade mark is inherently so adapted to distinguish, and (b) by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact so adapted to distinguish: Provided that in the case of a trade mark which has been con¬tinuously used (either by the applicant for registration or by some predecessor in his business, and either in its original form or with additions or alterations not substantially affecting its identity) in relation to the same goods as those in relation to which registra¬tion is applied for, during a period from a date prior to the 25th day of February, 1937, to the date of application for registration, the Registrar shall not refuse registration by reason only of the fact that the trade mark is not adapted to distinguish as afore¬said, and may accept evidence of acquired distinctiveness as entitling the trade mark to registration.
Limitation as to colour
7. (1) A trade mark may be limited wholly or in part to one or more specified colours, and any such limitation shall be taken into consideration by any tribunal having to decide on the distinctive character of the trade mark. (2) So far as a trade mark is registered without limitation of colour it shall be deemed to be registered for all colours.
Prohibition of registration of certain matter
8. No trade mark nor part of a trade mark shall be registered which consists of, or contains, any scandalous design, or any matter the use of which would- (a) by reason of its being likely to deceive or to cause confusion or otherwise, be disentitled to protection in a Court of justice; or (b) be likely to hurt the religious susceptibilities of any class of the citizens of Bangladesh; or (c) be contrary to any law for the time being in force or to morality.
Use of names of chemical elements barred
9. No word which is the commonly used and accepted name of any single chemical element or single chemical compound (as distinguished from a mixture) shall be registered as a trade mark in respect of a chemical substance or preparation, and any such registration shall, notwithstanding anything in section 24, be deemed for the purposes of section 46 to be an entry made in the register without sufficient cause or an entry wrongly remaining on the register, as the circumstances may require: Provided that this section shall not apply to a word which is used to denote only a brand or make of the element or compound as made by the proprietor or a registered user of the trade mark, as distinguished from the element or compound as made by others, and in association with a suitable name or description open to the public use.
Prohibition of registration of identical or similar trade mark
10. (1) Save as provided in sub section (2), no trade mark shall be registered in respect of any goods or description of goods which is identical with a trade mark belonging to a different proprietor and 7[ already on the register] in respect of the same goods or description of goods or which so nearly resembles such trade mark as to be likely to deceive or cause confusion. (2) In case of honest concurrent use or of other special circumstances which, in the opinion of the Registrar, make it proper so to do he may permit the registration by more than one proprietor of trade marks which are identical or nearly resemble each other in respect of the same goods or description of goods, subject to such conditions and limitations, if any, as the Registrar may think fit to impose. (3) Where separate applications are made by different persons to be registered as proprietors respectively of trade marks which are identical or nearly resemble each other, in respect of the same goods or description of goods, the Registrar may refuse to register any of them until their rights have been determined by a competent Court.
Registration of parts of trade marks and of trade marks as a series
11. (1) Where the proprietor of a trade mark claims to be entitled to the exclusive use of any part thereof separately, he may apply to register the whole and the part as separate trade marks. (2) Each such separate trade mark shall satisfy all the conditions applying to, and have all the incidents of, an independent trade mark. (3) Where a person claiming to be the proprietor of several trade marks in respect of the same goods or description of goods which, while resembling each other in the material particulars thereof, yet differ in respect of- (a) statements of the goods in relation to which they are respectively used or proposed to be used; or (b) statements of number, price, quality, or names of places; or (c) other matter of a non-distinctive character which does not substantially affect the identity of the trade mark; or (d) colour; seeks to register those trade marks, they may be registered as a series in one registration.
Associated trade marks
12. (1) Where a trade mark which is registered, or is the subject of an application for registration, in respect of any goods is identical with another trade mark which is registered, or is the subject of an application for registration, in the name of the same proprietor in respect of the same goods or description of goods, or so nearly resembles it as to be likely to deceive or cause confusion if used by a person other than the proprietor, the Registrar may at any time require that the trade marks shall be entered on the register as associated trade marks. (2) Where a trade mark and any part thereof are, in accordance with the provisions of sub-section (1) of section 11, registered as separate trade marks in the name of the same proprietor, they shall be deemed to be, and shall be registered as, associated trade marks. (3) All trade marks registered in accordance with the provisions of sub section (3) of section 11 as a series in one registration shall be deemed to be, and shall be registered as, associated trade marks. (4) On application made in the prescribed manner by the registered proprietor of two or more trade marks registered as associated trade marks, the Registrar may dissolve the association as respects any of them if he is satisfied that there would be no likelihood of deception or confusion being caused if that trade mark were used by any other person in relation to any of the goods in respect of which it is registered, and may amend the register accordingly.
Registration subject to disclaimer
13. If a trade mark contains¬- (a) any part not separately registered as a trade mark in the name of the proprietor, or for the separate registration of which no application has been made, or (b) any matter common to the trade, or otherwise of a non-distinctive character, the tribunal, in deciding whether the trade mark shall be entered or shall remain on the register, may require, as a condition of its being on the register, that the proprietor shall either disclaim any right to the exclusive use of such part or of all or any portion of such matter, as the case may be, to the exclusive use of which the tribunal holds him not to be entitled, or make such other disclaimer as the tribunal may consider necessary for the purpose of defining the rights of the proprietor under the registration: Provided that no disclaimer shall affect any rights of the proprietor of a trade mark except such as arise out of the registration of the trade mark in respect of which the disclaimer is made.
CHAPTER III PROCEDURE FOR, AND DURATION OF, REGISTRATION Application for registration
14. (1) Any person claiming to be the proprietor of a trade mark used or proposed to be used by him who is desirous of registering it shall apply in writing to the Registrar in the prescribed manner, and subject to the provisions of this Act, the Registrar may refuse the application or may accept it absolutely or subject to such amendments, modifications, conditions or limitations, if any, as he may think fit. (2) In the case of a refusal or conditional acceptance the Registrar shall, if required by the applicant, state in writing the grounds of his decision and the materials used by him in arriving thereat. (3) The tribunal may at any time, whether before or after acceptance, correct any error in or in connection with the application, or may permit the applicant to amend his application upon such terms as it may think fit.
Opposition to registration
15. (1) When an application for registration of a trade mark has been accepted, whether absolutely or subject to conditions or limitations, the Registrar shall, as soon as may be after acceptance, cause the application as accepted, together with the conditions and limitations, if any, subject to which it has been accepted, to be advertised in the prescribed manner: Provided that the Registrar may cause an application to be advertised before acceptance if it relates to a trade mark to which clause (e) of sub section (1) of section 6 applies, or in any other case where it appears to him that it is expedient by reason of any exceptional circumstances so to do, and where an application has been so advertised the Registrar may, if he thinks fit, advertise it again when it has been accepted, but shall not be bound so to do. (2) Any person may, within the prescribed time from the date of the advertisement of an application, give notice in writing in the prescribed manner to the Registrar of opposition to the registration. (3) The Registrar shall serve in the prescribed manner a copy of the notice on the applicant, and within the prescribed time the applicant shall send to the Registrar, in the prescribed manner, a counter statement of the grounds on which he relies for his application, and, if he does not do so, he shall be deemed to have abandoned his application. (4) If the applicant sends such counter statement, the Registrar shall serve in the prescribed manner a copy thereof on the persons giving notice of opposition, and shall, after hearing the parties, if so required, and considering the evidence, decide whether, and subject to what conditions or limitations, if any, registration is to be permitted. (5) If a person giving notice of opposition or an applicant sending a counter statement after receipt of a copy of such notice, or an appellant against an order of the Registrar under section 14 or this section, neither resides nor carries on business in Bangladesh, the tribunal may require him to give security for costs of the proceedings before it, and in default of such security being duly given may treat the opposition or application or appeal, as the case may be, as abandoned.
Registration
16. (1) When an application for registration of a trade mark has been accepted and either has not been opposed and the time for notice of opposition has expired, or having been opposed, has been decided in favour of the applicant, the Registrar shall, unless the application has been accepted in error, or unless the Government otherwise directs, register the said trade mark, and the trade mark, when registered, shall be registered as of the date of the making of the said application, and that date shall, subject to any directions made under section 83 applicable to such trade mark, be deemed for the purposes of this Act to be the date of registration. (2) On the registration of a trade mark the Registrar shall issue to the applicant a certificate in the prescribed form of the registration thereof sealed with the seal of the Trade Marks Registry. (3) Where registration of a trade mark is not completed within twelve months from the date of the application by reason of default on the part of the applicant, the Registrar may, after giving notice to the applicant in the prescribed manner, treat the application as abandoned unless it is completed within the time specified in that behalf in the notice.
Jointly owned trade marks
17. (1) Save as provided in sub section (2), nothing in this Act shall authorise the registration of two or more persons who use a trade mark independently, or propose so to use it, as joint proprietors thereof. (2) Where the relations between two or more persons interested in a trade mark are such that no one of them is entitled as between himself and the other or others of them to use it except- (a) on behalf of both or all of them, or (b) in relation to an article with which both or all of them are connected in the course of trade, those persons may be registered as joint proprietors of the trade mark, and this Act shall have effect in relation to any rights to the use of the trade mark vested in those persons as if those rights had been vested in a single person.
Duration and renewal of registration
18. (1) The registration of a trade mark shall be for a period of seven years, but may be renewed from time to time in accordance with the provisions of this section. (2) The Registrar shall, on application made by the registered proprietor of a trade mark in the prescribed manner and within the prescribed period, renew the registration of the trade mark for a period of fifteen years from the date of expiration of the original registration or of the last renewal of registration, as the case may be (which date is in this section referred to as “the expiration of the last registration”). (3) At the prescribed time before the expiration of the last registration of a trade mark, the Registrar shall send notice in the prescribed manner to the registered proprietor of the date of expiration and the conditions as to payment of fees and otherwise upon which a renewal of registration may be obtained, and if at the expiration of the time prescribed in that behalf those conditions have not been duly complied with, the Registrar may remove the trade mark from the register, subject to such conditions (if any) as to its restoration to the register as may be prescribed.
Effect of removal from register for failure to pay fee for renewal
19. Where a trade mark has been removed from the register under this Act 8[ * * *] for failure to pay the fee for renewal, it shall nevertheless, for the purpose of any application for the registration of another trade mark during one year next after the date of the removal, be deemed to be a trade mark already on the register, unless the tribunal is satisfied either- (a) that there has been no bona fide trade use of the trade mark which has been removed during the two years immediately preceding its removal; or (b) that no deception or confusion would be likely to arise from the use of the trade mark which is the subject of the application for registration by reason of any previous use of the trade mark which has been removed.
CHAPTER IV EFFECT OF REGISTRATION No action for infringement of unregistered trade mark
20. (1) No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark unless such trade mark has been continuously in use since before the 25th day of February, 1937, by such person or by a predecessor in title of his and unless an application for its registration, made within five years from the commencement of this Act, has been refused; and the Registrar shall, on application in the prescribed manner, grant a certificate that such application has been refused. (2) Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods as the goods of another person or the remedies in respect thereof.
Right conferred by registration
21. 9[ * * *] Subject to the provisions of sections 22, 25 and 26, the registration of a person in the register as proprietor of a trade mark in respect of any goods shall give to that person the exclusive right to the use of the trade mark in relation to those goods and, without prejudice to the generality of the fore¬going provision, that right shall be deemed to be infringed by any person who, not being the proprietor of the trade mark or a registered user thereof using by way of the permitted use, uses a mark identical with it or so nearly resembling it as to be likely to deceive or cause confusion, in the course of trade, in relation to any goods in respect of which it is registered, and in such manner as to render the use of the mark likely to be taken either- (a) as being used as a trade mark; or (b) to import a reference to some person having the right either as a proprietor or as registered user to use the trade mark or to goods with which such a person as aforesaid is connected in the course of trade. (2) [Omitted by section 3 and the Second Schedule of the Bangladesh Laws (Revision And Declaration) Act, 1973 (Act No. VIII of 1973).]
No infringement in certain circumstances
22. (1) The right to the use of a trade mark given under section 21 by registration shall be subject to any conditions or limitations entered on the register, and shall not be deemed to be infringed by the use of any such mark as aforesaid in any mode, in relation to goods to be sold or otherwise traded in, in any place, or in relation to goods to be exported to any market, or in any other circumstances, to which, having regard to any such limitations the registration does not extend. (2) The said right to the use of a trade mark shall not be deemed to be infringed by the use of any such mark as aforesaid by any person- (a) in relation to goods connected in the course of trade with the proprietor or a registered user of the trade mark if, as to those goods or a bulk of which they form part, the proprietor or the registered user conforming to the permitted use has applied the trade mark and has not subsequently removed or obliterated it, or has at any time expressly or impliedly consented to the use of the trade mark; or (b) in relation to goods adapted to form part of, or to be accessory to, other goods in relation to which the trade mark has been used without infringement of the right given as aforesaid or might for the time being be so used, if the use of the mark is reasonably necessary in order to indicate that the goods are so adapted and neither the purpose nor the effect of the use of the mark is to indicate otherwise than in accordance with the fact a connection in the course of trade between any person and the goods. (3) The use of a registered trade mark, being one of two or more trade marks registered under this Act 10[ * * *] which are identical or nearly resemble each other, in exercise of the right to the use of that trade mark given by registration as aforesaid, shall not be deemed to be an infringement of the right so given to the use of any other of those trade marks.
Registration to be prima facie evidence of validity
23. In all legal proceedings relating to a trade mark registered under this Act 11[ * * *] the fact that a person is registered as proprietor thereof shall be prima facie evidence of the validity of the original registration of the trade mark and of all subsequent assignments and transmissions thereof.
Registration to be conclusive as to validity after seven years
24. In all legal proceedings relating to a registered trade mark, the original registration of the trade mark shall after the expiration of seven years from the date of such original registration be taken to be valid in all respects unless such registration was obtained by fraud, or unless the trade mark offends against the provisions of section 8.
Saving for vested rights
25. Nothing in this Act, shall entitle the proprietor or a registered user of a registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in relation to goods in relation to which that person or a predecessor in title of his has continuously used that trade mark from a date prior- (a) to the use of the first mentioned trade mark in relation to those goods by the proprietor or a predecessor in title of his, or (b) to the registration of the first mentioned trade mark in respect of those goods in the name of the proprietor or a predecessor in title of his, whichever is the earlier, or to object (on such use being proved) to registration of that identical or nearly resembling trade mark in respect of those goods under sub section (2) of section 10.
Saving for use of name, address, or description of goods
26. No registration of a trade mark shall interfere with any bona fide use by a person of his own name or that of his place of business, or of the name, or of the name of the place of business, of any of his predecessors in business, or the use by any person of any bona fide description of the character or quality of his goods, not being a description that would be likely to be taken as importing any such reference as is mentioned in clause (b) of section 21 or in clause (b) of section 57.
Words used as name or description of an article or substance
27. (1) The registration of a trade mark shall not be deemed to have become invalid by reason only of any use after the date of the registration of any words which the trade mark contains or of which it consists as the name or description of an article or substance: Provided that, if it is proved either- (a) that there is a well known and established use of the said words as the name or description of the article or substance by a person or persons carrying on a trade therein, not being use in relation to goods connected in the course of trade with the proprietor or a registered user of the trade mark or (in the case of a certification trade mark) goods certified by the proprietor; or (b) that the article or substance has been manufactured under a patent in force at or granted after the commencement of this section, that a period of two years or more after the cesser of the patent has elapsed, and that the said words are the only practicable name or description of the article or substance,- the provisions of sub section (2) shall apply. (2) Where the facts mentioned in clause (a) or clause (b) of the proviso to sub section (1) are proved with respect to any words, then- (a) for the purposes of any proceedings under section 46- (i) if the trade mark consists solely of such words, the registration of the trade mark, so far as regards registration in respect of the article or substance in question or of any goods of the same description, shall be deemed to be an entry wrongly remaining on the register; (ii) if the trade mark contains such words and other matter, the tribunal, in deciding whether the trade mark shall remain on the register, so far as regards registration in respect of the article or substance in question and of any goods of the same description, may, in case of a decision in favour of its remaining on the register, require as a condition thereof that the proprietor shall disclaim any right to the exclusive use in relation to that article or substance and any goods of the same description, of such words, provided that no disclaimer shall affect any rights of the proprietor of a trade mark except such as arise out of the registration of the trade mark in respect of which the disclaimer is made; (b) for the purposes of any other legal proceedings relating to the trade mark,- (i) if the trade mark consists solely of such words, all rights of the proprietor under this Act or any other law to the exclusive use of the trade mark in relation to the article or substance in question or to any goods of the same description, or (ii) if the trade mark contains such words and other matter, all such rights of the proprietor to the exclusive use of such words, in such relation as aforesaid, shall be deemed to have ceased on the date at which the use men¬tioned in clause (a) of the proviso to sub section (1) first became well known and established, or at the expiration of the period of two years mentioned in clause (b) of the said proviso.
CHAPTER V ASSIGNMENT AND TRANSMISSION Power of registered proprietor to assign and give receipts
28. The person for the time being entered in the register as proprietor of a trade mark shall, subject to the provisions of this Act and to any rights appearing from the register to be vested in any other person, have power to assign the trade mark, and to give effectual receipts for any consideration for such assignment.
Assignability of registered trade marks
29. Notwithstanding anything in any other law to the contrary, a registered trade mark shall, subject to the provisions of this Chapter, be assignable and transmissible whether in connection with the goodwill of a business or not, and in respect either of all of the goods in respect of which it is registered or of some only of those goods.
Assignability of unregistered trade marks
30. An unregistered trade mark shall be assignable and transmissible whether in connection with the goodwill of a business or not: Provided that, except in connection with the goodwill of a business, assignment or transmission shall be permissible only if¬- (a) at the time of assignment or transmission of the un¬registered trade mark it is used in the same business as a registered trade mark, and (b) the registered trade mark is assigned or transmitted at the same time and to the same person as the un¬registered trade mark, and (c) the unregistered trade mark relates to goods in respect of which the registered trade mark is assigned or transmitted.
Restrictions on assignment or transmission where multiple exclusive rights would be created
31. (1) Notwithstanding anything in sections 29 and 30, a trade mark shall not be assignable or transmissible in a case in which as a result of the assignment or transmission there would in the circumstances subsist, whether under this Act or any other law, exclusive rights in more than one of the persons concerned to the use, in relation to the same goods or description of goods, of trade marks nearly resembling each other or of identical trade marks, if, having regard to the si¬milarity of the goods and of the trade marks, the use of the trade marks in exercise of those rights would be likely to deceive or cause confusion: Provided that an assignment or transmission shall not be deemed to be invalid under this sub section if the exclusive rights subsisting as a result thereof in the persons concerned respectively are, having regard to limitations imposed thereon, such as not to be exercisable by two or more of those persons in relation to goods to be sold, or otherwise traded in, within Bangladesh (otherwise than for export therefrom), or in relation to goods to be exported to the same market outside Bangladesh. (2) The proprietor of a registered trade mark who proposes to assign it may submit to the Registrar in the prescribed manner a statement of case setting out the circumstances and the Registrar may issue to him a certificate stating whether, having regard to the similarity of the goods and of the trade marks referred to in the case, the proposed assignment would or would not be invalid under sub section (1), and a certificate so issued shall, subject to appeal and unless it is shown that the certificate was obtained by fraud or misrepresentation, be conclusive as to the validity or invalidity under sub section (1) of the assignment in so far as such validity or invalidity depends upon the facts set out in the case, but, as regards a certificate in favour of validity, only if application for the registration under section 35 of the title of the person becoming entitled is made within six months from the date on which the certificate is issued.
Restrictions on assignment or transmission when exclusive rights would be created in different parts of Bangladesh
32. Notwithstanding anything in sections 29 and 30, a trade mark shall not be assignable or transmissible in a case in which as a result of the assignment or transmission there would in the circumstances subsist whether under this Act or any other law, an exclusive right in one of the persons concerned to the use of the trade mark limited to use in relation to goods to be sold, or otherwise traded in, in any place in Bangladesh and an exclusive right in another of these persons to the use of a trade mark nearly resembling the first mentioned trade mark or of an identical trade mark in relation to the same goods or description of goods limited to use in relation to goods to be sold, or otherwise traded in, in any other place in Bangladesh: Provided that in any such case, on application in the prescribed manner by the proprietor of a trade mark who proposes to assign it, or by a person who claims that a registered trade mark has been transmitted to him or to a predecessor in title of his since the commencement of this Act, the Registrar, if he is satisfied that in all the circumstances the use of the trade mark in exercise of the said rights would not be contrary to the public interest, may approve the assignment or transmission, and an assignment or transmission so approved shall not, unless it is shown that the approval was obtained by fraud or misrepresentation, be deemed to be invalid under this section or section 31 if application for the registration under section 35 of the title of the person becoming entitled is made within six months from the date on which the approval is given or, in the case of a transmission, was made before that date.
Conditions for assignment otherwise than in connection with the goodwill of a business
33. Where an assignment in respect of any goods of a trade mark which is at the time of the assignment used in a business in those goods, is made after the commencement of this Act otherwise than in connection with the goodwill of that business, the assignment shall not take effect unless the assignee, not later than the expiration of six months from the date on which the assignment is made or within such extended period, if any, as the Registrar may allow, applies to the Registrar for directions with respect to the advertisement of the assignment, and advertises it in such form and manner and within such period as the Registrar may direct.
Conditions for assignment and transmission of certification trade marks and associated trade marks
34. (1) A certification trade mark shall not be assignable or transmissible otherwise than with the consent of the Government, for which application shall be made in writing in the prescribed manner through the Registrar. (2) Associated trade marks shall be assignable and transmissible only as a whole and not separately.
Registration of assignments and transmissions
35. (1) Where a person becomes entitled by assignment or transmission to a registered trade mark, he shall apply in the prescribed manner to the Registrar to register his title, and the Registrar shall on receipt of the application and on proof of title to his satisfaction, register him as the proprietor of the trade mark in respect of the goods in respect of which the assignment or transmission has effect, and shall cause particulars of the assignment or transmission to be entered on the register. (2) Except for the purposes of an appeal against a decision of the Registrar under sub section (1) or of an application under section 46, a document or instrument in respect of which no entry has been made in the register in accordance with sub-section (1) shall not be admitted in evidence before any tribunal in proof of the title to a trade mark unless the tribunal otherwise directs.
CHAPTER VI USE OF TRADE MARKS AND REGISTERED USERS Proposed use of trade mark by company to be formed
36. (1) No application for the registration of a trademark in respect of any goods shall be refused, nor shall permission for such registration be withheld, on the ground only that it appears that the applicant does not use or propose to use the trade mark, if the Registrar is satisfied that a company is about to be formed and registered under the Companies Act, 1913 and that the applicant intends to assign the trade mark to that company with a view to the use thereof in relation to those goods by the company. (2) The tribunal may, in a case to which sub section (1) applies, require the applicant to give security for the costs of any proceed¬ings relative to any opposition or appeal, and in default of such security being duly given may treat the application as abandoned. (3) Where in a case to which sub section (1) applies, a trade mark in respect of any goods is registered in the name of an applicant who relies on intention to assign to a company, then, unless within such period as may be prescribed, or within such further period not exceeding six months as the Registrar may, on application being made to him in the prescribed manner, allow, the company has been registered as the proprietor of the trade mark in respect of those goods, the registration shall cease to have effect in respect thereof at the expiration of that period, and the Registrar shall amend the register accordingly.
Removal from register and imposition of limitations on ground of non use
37. (1) Subject to the provisions of section 38, a registered trade mark may be taken off the register in respect of any of the goods in respect of which it is registered on application in the prescribed manner by any person aggrieved to the High Court Division or to the Registrar, on the ground either (a) that the trade mark was registered without any bona fide intention on the part of the applicant for regis¬tration that it should be used in relation to those goods by him or, in a case to which the provisions of section 36 apply, by the company concerned, and that there has in fact been no bona fide use of the trade mark in relation to those goods by any proprietor thereof for the time being up to a date one month before the date of the application; or (b) that up to a date one month before the date of the application, a continuous period of five years or longer elapsed during which the trade mark was registered and during which there was no bona fide use thereof in relation to those goods by any proprietor thereof for the time being: Provided that, except where the applicant has been permitted under sub section (2) of section 10 to register an identical or nearly resembling trade mark in respect of the goods in question or where the tribunal is of opinion that he might properly be permitted so to register such a trade mark, the tribunal may refuse an application made under clause (a) or clause (b) in relation to any goods, if it is shown that there has been, before the relevant date or during the relevant period, as the case may be, bona fide use of the trade mark by any proprietor thereof for the time being in relation to goods of the same description, being goods in respect of which the trade mark is registered. (2) Where in relation to any goods in respect of which a trade mark is registered- (a) the circumstances referred to in clause (b) of sub-section (1) are shown to exist so far as regards non-use of the trade mark in relation to goods to be sold, or otherwise traded in, in a particular place in Bangladesh (otherwise than for export from Bangladesh), or in relation to goods to be exported to a particular market outside Bangladesh; and (b) a person has been permitted under sub section (2) of section 10 to register an identical or nearly resembling trade mark in respect of those goods under a registration extending to use in relation to goods to be so sold, or otherwise traded in, or in relation to goods to be so exported, or the tribunal is of opinion that he might properly be permitted so to register such a trade mark, on application by that person in the prescribed manner to the High Court Division or to the Registrar, the tribunal may impose on the registration of the first mentioned trade mark such limitations as it thinks proper for securing that that registration shall cease to extend to such use. (3) An applicant shall not be entitled to rely for the purpose of clause (b) of sub section (1) or of sub section (2) on any non-use of a trade mark which is shown to have been due to special circumstances in the trade and not to any intention to abandon or not to use the trade mark in relation to the goods to which the application relates.
Defensive registration of well known trade marks