Trademark Abandonment, Non-Use & Assignment Law in Bangladesh — A Legal Lesson
Danish Foods Ltd. vs Family Food Industries Ltd. — The "RANI" Trademark Dispute
A landmark case on trademark show cause in Bangladesh, invalid assignments, and trademark non-use cancellation.
The legal battle over the trademark in Bangladesh known as "RANI", as reflected in Trade Mark Appeal No. 09 of 2011, is a landmark case in understanding the principles of trademark law in Bangladesh — particularly concerning trademark abandonment in Bangladesh, condonation of delay, invalid trademark assignment under Bangladesh law, and rightful ownership.
Danish Foods Ltd. — acquired the abandoned "RANI" trademark via assignment from Babar Chaklader in 2009.
Family Food Industries Ltd. — lawfully obtained registration for the "RANI" trademark in Class 30 in 2010.
"RANI" — trademark for spices under Class 30, Bangladesh.
Facts & Timeline of the Trademark Dispute in Bangladesh
Babar Chaklader (Chaklader Food Products) filed Application No. 90428 for "RANI" in Class 30, declaring use since March 2005.
Family Food Industries filed Application No. 90755 for the same "RANI" mark in Class 30 — just 19 days later.
DPDT issued a trademark show cause notice in Bangladesh to Babar Chaklader regarding possible confusion, demanding a response within 90 days. Failure to respond to the trademark objection in Bangladesh would result in automatic abandonment.
No response was filed. Application No. 90428 was automatically deemed a trademark abandonment in Bangladesh under Rule 24(2) — no TM-56 for restoration was ever filed.
Babar Chaklader executed a trademark assignment under Bangladesh law to Danish Foods Ltd. via TM-16 — falsely stating the application was still pending, when it had already been abandoned two years earlier. This constitutes a void act under trademark assignment law in Bangladesh.
Family Food Industries obtained lawful registration of the "RANI" trademark on 26.08.2010 — in the absence of any conflicting pending application.
The Registrar cancelled Danish Foods' mutation (TM-16) due to the prior abandonment. Danish Foods appealed — giving rise to Trade Mark Appeal No. 09 of 2011.
Legal Framework — Trademark Law in Bangladesh
The case engaged with three key legal instruments governing trademark in Bangladesh — the Trade Marks Act, 1940, the Trade Marks Act, 2009, and the Trade Marks Rules, 1963. Three central legal questions were before the Court:
Question 1
Was Application No. 90428 (Babar Chaklader / Danish Foods) subject to trademark abandonment in Bangladesh or still valid?
Question 2
Can an abandoned trademark be transferred under trademark assignment law in Bangladesh without restoration?
Question 3
Was there scope for condonation of delay or restoration after failing to respond to the trademark show cause in Bangladesh?
Analysis of the Trademark Dispute in Bangladesh
The primary reason Danish Foods lost was the failure to respond to the trademark show cause in Bangladesh issued to Babar Chaklader in April 2007. With no reply filed within 90 days, the application suffered automatic trademark abandonment in Bangladesh by operation of law under Rule 24(2) — no further notice was required. Knowing how to respond to trademark objections in Bangladesh and meet DPDT deadlines is critical to preserving your rights.
Key Point: Restoration was possible through Form TM-56 if filed within the specified period with sufficient cause. No such application was ever made — sealing the abandonment permanently.
The 2009 trademark assignment under Bangladesh law from Babar Chaklader to Danish Foods was legally ineffective on three grounds:
① You cannot execute a trademark assignment in Bangladesh for an abandoned trademark without restoring it first.
② No TM-56 for restoration was filed before or after the assignment.
③ Mutation (TM-16) cannot be made on an abandoned application — it is a legal nullity under trademark assignment law in Bangladesh.
Danish Foods argued that Family Food Industries had committed trademark non-use in Bangladesh since registration and sought cancellation under Section 42 of the 2009 Act.
The Court rejected this argument on a clear legal ground:
"For the purpose of trademark non-use cancellation in Bangladesh under Section 42, the 5-year period is calculated from the actual date of registration — not from the date of application."
Registration Date
26.08.2010
Appeal Heard
2013
Time Elapsed
~3 Years Only
Result
Too Early — Dismissed
The Court identified signs of fraudulent conduct by the appellant and Babar Chaklader based on two clear discrepancies:
In the 2005 application, Chaklader declared use since March 2005. During the appeal, the appellant claimed use since 2004 — directly contradicting the official record in these trademark proceedings in Bangladesh.
In August 2009, Chaklader falsely stated the application was still "pending" when executing the trademark assignment in Bangladesh — when it had already been abandoned since July 2007.
Judgment Summary — Court's Decision on Trademark in Bangladesh
The High Court dismissed the appeal by Danish Foods Ltd., holding:
✅ Application No. 90428 suffered justifiable trademark abandonment in Bangladesh under Rule 24(2) due to non-response to the show cause notice.
✅ The subsequent trademark assignment under Bangladesh law and mutation (TM-16) were invalid without first restoring the abandoned application.
✅ Family Food Industries lawfully obtained trademark registration in Bangladesh in the absence of any valid conflicting application.
❌ Danish Foods Ltd. had no legal standing. The Registrar's cancellation of the mutation was upheld.
The Court's Ruling on Trademark Non-Use in Bangladesh
The 5-year trademark non-use period in Bangladesh under Section 42 starts from the date of registration, not the date of application. Since Family Food Industries was registered on 26.08.2010 and the appeal was heard in 2013, the mandatory 5-year period had not yet expired. The non-use argument was therefore premature and legally unsustainable.
Key Takeaways & Recommendations for Trademark Owners in Bangladesh
Failure to respond to a trademark show cause in Bangladesh within the prescribed time leads to automatic trademark abandonment in Bangladesh — Rule 24(2) of TM Rules 1963 / Rule 15(3) of TM Rules 2015. Knowing how to properly respond to trademark objections in Bangladesh is essential. There is no grace and no second chance unless you file for restoration.
If an application suffers trademark abandonment in Bangladesh, file TM-56 (under TM Rules 1963) or TM-34 (under TM Rules 2015) for restoration immediately. No trademark assignment under Bangladesh law, mutation, or legal transfer is valid on an abandoned application.
Under New Rules (TM Rules 2015): The abandoned trademark can be restored within 5 years from the issuance of the abandonment notice by DPDT using Form TM-34.
Under TM Rules 1963, use Rule 76 to request extra time if valid reasons exist. Under TM Rules 2015, use Form TM-19 to extend the response period by 2 months before trademark abandonment in Bangladesh occurs.
SUPREMEiP Recommends: If no abandonment notice has been issued yet, submit a Condonation of Delay application with a response or hearing application (TM-23). The Registrar has inherent power to consider it under Section 91 of the TM Act 2009. Additionally, file a fresh application for protection as a precautionary measure.
Before acquiring any trademark in Bangladesh, verify its DPDT status thoroughly. Never purchase or accept trademark assignment under Bangladesh law for an abandoned trademark without confirmed restoration. Assignments must involve valid, active applications or registrations coupled with demonstrable goodwill.
Any false or misleading statements in trademark proceedings in Bangladesh — regarding use dates, application status, or goodwill — can lead to fraud findings by the Court, rendering all acquired rights completely unenforceable.
Defend your mark from trademark non-use cancellation in Bangladesh. Preserve records of commercial use — invoices, advertisements, sales records. The 5-year cancellation clock under Section 42 starts from the date of registration, not the filing date.
Conclusion
The RANI trademark dispute is a powerful lesson for businesses and legal professionals dealing with any trademark in Bangladesh. It reinforces the importance of strict procedural compliance when handling a trademark show cause in Bangladesh, the dangers of failing to respond to trademark objections in Bangladesh, the risks of invalid trademark assignment under Bangladesh law, and the consequences of trademark non-use in Bangladesh. Businesses must monitor their applications closely and seek timely legal advice to avoid the irreversible consequences of trademark abandonment in Bangladesh, invalid assignments, and misrepresentation.
Frequently Asked Questions — Trademark in Bangladesh
▸ What is trademark abandonment in Bangladesh?
Trademark abandonment in Bangladesh occurs when an applicant fails to respond to a DPDT show cause notice within the prescribed 90-day period under Rule 24(2) of the Trade Marks Rules 1963. The application is automatically deemed abandoned by operation of law — no further notice is issued. Restoration is possible via Form TM-56 within a limited window, but if missed, the abandonment becomes permanent.
▸ What is a trademark show cause notice in Bangladesh?
A trademark show cause notice in Bangladesh is issued by the DPDT (Department of Patents, Designs and Trade Marks) when there is a potential ground for refusal — such as conflict with an existing mark, opposition, or procedural irregularity. The applicant must respond to the trademark show cause in Bangladesh within 90 days (under TM Rules 1963) or face automatic abandonment of their application.
▸ How do I respond to a trademark objection in Bangladesh?
To respond to a trademark objection in Bangladesh, you must file a written reply to the DPDT show cause notice within 90 days (TM Rules 1963) or within the extended period under TM Rules 2015. Your response should address each ground of objection with legal arguments and supporting evidence. If you need more time, file Form TM-19 (under TM Rules 2015) to extend the response period. SUPREMEiP Law Firm can assist in drafting and filing your trademark objection response in Bangladesh.
▸ What are the rules for trademark assignment law in Bangladesh?
Trademark assignment law in Bangladesh is governed by Section 35 of the Trade Marks Act 2009. A trademark assignment in Bangladesh requires that the mark being assigned is either registered or a valid pending application — an abandoned trademark cannot be assigned. Unregistered marks may only be assigned together with the goodwill of the business associated with the mark. The assignment must be recorded at DPDT via Form TM-16 to be legally effective against third parties.
▸ What is trademark non-use in Bangladesh and when can a mark be cancelled?
Trademark non-use in Bangladesh refers to the continuous failure to use a registered trademark in commerce for a period of five years. Under Section 42 of the Trade Marks Act 2009, any person may apply to cancel a trademark on the grounds of non-use, provided the five-year period is calculated from the date of registration — not the date of application. If you have a legitimate reason for non-use, you should document it carefully, as the DPDT may consider valid reasons before ordering cancellation.
▸ Can an abandoned trademark be restored in Bangladesh?
Yes. Following trademark abandonment in Bangladesh, an applicant may file Form TM-56 (under TM Rules 1963) or Form TM-34 (under TM Rules 2015) to apply for restoration of the abandoned application. Under TM Rules 2015, restoration may be sought within 5 years of the abandonment notice date, provided valid reasons are presented. Importantly, no trademark assignment in Bangladesh or mutation is legally effective on an abandoned mark until and unless restoration is formally granted by the DPDT.
▸ What is a trademark objection in Bangladesh and how is it different from opposition?
A trademark objection in Bangladesh is an official refusal or query raised by the DPDT Registrar during the examination of your trademark application — for example, due to similarity with an existing mark, non-distinctiveness, or procedural defects. The applicant must respond to the trademark objection in Bangladesh via a show cause reply. By contrast, trademark opposition in Bangladesh is filed by a third party after publication of the mark in the Trade Marks Journal and is a separate adversarial proceeding.
▸ How do I register a trademark in Bangladesh and protect it from abandonment?
Registering a trademark in Bangladesh involves filing an application at DPDT, paying the prescribed fees, and successfully passing examination and opposition stages. To protect your trademark in Bangladesh from abandonment, you must actively monitor DPDT correspondence, respond to every trademark show cause in Bangladesh within the statutory deadline, maintain documentary evidence of commercial use, and seek legal counsel to handle trademark objections in Bangladesh promptly. SUPREMEiP Law Firm handles the full trademark registration process from filing through final registration.
Download Full Judgment
Danish Vs Family Food — Trade Mark Appeal No. 09 of 2011 · 326 KB PDF
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