Case study
In Trade Mark Appeal No. 09 of 2011 (Danish Foods Ltd. v. Family Food Industries Ltd.) the Bangladesh High Court dismissed an appeal over the "RANI" mark for spices in Class 30. The original applicant missed a 90-day show-cause deadline, so its application was abandoned by law. An assignment of that abandoned application was then ineffective, and a non-use claim against the rival's registration was premature because the 5 years run from registration.
The parties and the mark
Appellant
Danish Foods Ltd.
Took an assignment of the "RANI" application No. 90428 from its first applicant in 2009.
Respondent
Family Food Industries Ltd.
Filed its own "RANI" application No. 90755 in 2005 and registered the mark on 26 August 2010.
Mark
"RANI", Class 30
A trademark for spices. Both sides claimed it for the same goods.
The first applicant, Babar Chaklader (Chaklader Food Products), declared use of "RANI" since March 2005. Family Food Industries filed for the identical mark only 19 days later. That near-simultaneous filing is the root of the dispute.
Case history, step by step
| Date | Event | Why it matters |
|---|---|---|
| Mar 2005 | Application No. 90428 filed for "RANI" in Class 30, claiming use since March 2005 | Establishes the first applicant's declared date of use |
| Apr 2005 | Family Food Industries files No. 90755 for the same mark, 19 days later | A competing application for an identical mark |
| Apr 2007 | The DPDT issues a show-cause notice on No. 90428 about possible confusion, with 90 days to respond | The reply clock starts; silence means abandonment |
| Jul 2007 | No reply is filed. The application is deemed abandoned under Rule 24(2) of the Trade Marks Rules, 1963. No restoration (TM-56) is ever filed | The application dies by operation of law, with no further notice |
| Aug 2009 | The abandoned application is assigned to Danish Foods on Form TM-16. The assignor states that it is still pending | The assignment rests on a false premise about the file's status |
| 26 Aug 2010 | Family Food Industries obtains registration of "RANI", with no valid conflicting application on the register | Its title is lawful and unchallenged |
| 2011 | The Registrar cancels Danish Foods' mutation (TM-16) because of the earlier abandonment. Danish Foods appeals | Gives rise to Trade Mark Appeal No. 09 of 2011 |
| 2013 | The High Court hears the appeal and dismisses it | About 3 years after the rival's registration |
The legal framework the Court applied
Three instruments were engaged: the Trade Marks Act, 1940, the Trade Marks Act, 2009 and the Trade Marks Rules, 1963. The Court had to answer three questions.
- Was application No. 90428 abandoned, or still valid?
- Can an abandoned application be assigned without being restored first?
- Was there still room for condonation of delay or restoration after the show-cause was ignored?
| Provision | Subject | Effect |
|---|---|---|
| Rule 24(2), Trade Marks Rules 1963 | No reply to a show-cause within 90 days | The application is deemed abandoned |
| Rule 24(3) | Form TM-56 within 2 months with valid reasons | An abandoned application can be restored |
| Rule 76 | Registrar's discretion to extend time | Needs valid reasons |
| Section 35, Act of 2009 | Assignment of unregistered marks | Valid only with the goodwill of the business |
| Section 42, Act of 2009 | 5 years of non-use | Ground for cancellation, counted from registration |
Analysis: the four issues
Abandonment happened automatically
- The show-cause went unanswered for 90 days, so the application was abandoned by operation of law. No further notice was needed.
- Restoration through TM-56 was possible with sufficient cause, but no application was ever made. That sealed the abandonment.
An abandoned application cannot be assigned
- Danish Foods' 2009 assignment was ineffective on three grounds: an abandoned mark cannot be assigned without restoration; no TM-56 was filed before or after the deed; and a mutation (TM-16) on an abandoned application is a legal nullity.
The non-use claim was premature
- Danish Foods argued that Family Food Industries had not used "RANI" since registration and sought cancellation.
- The Court held that the 5-year period runs from the actual date of registration, not the application date. Registration was on 26 August 2010 and the appeal was heard in 2013, so only about 3 years had passed.
Inconsistent statements were treated as fraud indicators
- In the 2005 application the first applicant declared use since March 2005, while on appeal use since 2004 was claimed.
- In August 2009 the assignor said the application was "pending", although it had been abandoned since July 2007.
The decision
- Application No. 90428 was validly abandoned under Rule 24(2) for non-response to the show-cause
- The later assignment and mutation were invalid without prior restoration
- Family Food Industries lawfully obtained registration, as there was no valid conflicting application
- Danish Foods had no legal standing, and the Registrar's cancellation of the mutation was upheld
- The non-use argument failed because the 5 years had not run from registration
Lessons for trademark owners and buyers
Respond
Never ignore a show-cause
There is no grace period and no second chance unless you apply to restore. Under the Trademark Rules, 2015 the reply period is 2 months, extendable.
Restore first
Restoration before any transfer
Under the 2015 Rules an abandoned application can be restored within 5 years of the abandonment notice (Form TM-34). No assignment or mutation is valid until it is restored.
Extend time
Use condonation
If no abandonment notice has issued, file a condonation request with a reply or hearing application (TM-23), and consider a fresh application as protection.
Verify
Check status before buying
Confirm the real DPDT status. Never accept an assignment of an abandoned mark without confirmed restoration.
Be honest
Accurate declarations
False statements about use dates or status can lead to findings of fraud and unenforceable rights.
Keep proof
Evidence of use
Keep invoices, adverts and sales records. Count the 5-year non-use period from registration.
RANI case questions
What is trademark abandonment in Bangladesh?
The loss of an application when the applicant fails to act in time, for example by not answering a show-cause. Here it arose under Rule 24(2) of the 1963 Rules.
Can an abandoned application be assigned?
No. It must be restored first, and no mutation is valid on an abandoned file.
When does the 5-year non-use period start?
From the date of registration, not the application date, as the Court held.
Can an abandoned application be restored?
Yes. Under the 2015 Rules apply within 5 years of the abandonment notice, with valid reasons.
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