The short answer
Bangladesh recognises three special types of mark besides ordinary trademarks. A defensive mark (section 43) extends a well-known invented word to other goods without use. A certification mark (sections 55 to 65) shows that goods or services meet a standard, and the Government, not only the Registrar, approves the application and its regulations. A collective mark (sections 2(25) and 122, rules 26 and 27) is used by the members of a group under written regulations.
The three types side by side
| Defensive mark | Certification mark | Collective mark | |
|---|---|---|---|
| Law | Section 43; rule 29 | Sections 2(28), 55 to 65; rules 24, 25 | Sections 2(25), 122; rules 26, 27 |
| Purpose | Protect a well-known invented word for other goods or services | Certify origin, material, method, quality or other characteristic | Show that goods or services come from members of an association |
| Who can own it | The registered owner of a well-known invented word | A person competent to certify, who does not trade in goods or services of the kind certified (section 56) | An association of enterprises acting as one legal entity |
| Filing | Form TM-1 with reasons why the mark is well known and an affidavit | Application with draft regulations on Form TM-8; the Government considers it | Form TM-8 with regulations of use, membership details and an affidavit |
| Use requirement | Not removed for non-use | Use authorised by the owner under the regulations | Use under the regulations by members |
Defensive marks (section 43, rule 29)
A mark that consists of an invented word and is so well known for its registered goods or services that use on other goods would be taken to indicate a connection can be registered as a defensive mark, even if the owner does not use or plan to use it on those goods. While it stays registered as defensive it cannot be taken off the Register for non-use under section 42.
- The owner applies on Form TM-1 and states why the mark is well known, with an affidavit and any evidence the Registrar asks for (rule 29).
- A defensive registration and the ordinary registration are deemed associated marks (section 43(3)).
- An aggrieved person may apply to cancel if the mark is no longer well known or the risk of confusion has gone (section 43(4)).
Certification marks (sections 55 to 65)
Application
- The proposed owner applies in writing with draft regulations (section 58; rule 25). Many provisions on assignment, use and registered users do not apply to certification marks (section 55).
Government approval
- After authorisation to proceed, the Government checks whether the applicant is competent to certify, whether the regulations are satisfactory and whether registration is in the public interest. It can refuse, or accept with changes (section 59).
Advertisement and opposition
- The application is advertised and opposition follows section 18. Where there is an opposition, the Government decides after a hearing (section 60; rule 25(6)).
Regulations deposited
- Approved regulations are deposited at the Registry and open to inspection. Changes need Government consent (section 61).
Later changes
- The Government can cancel or vary the entry or the regulations if the owner can no longer certify, breaks the regulations, or the public advantage requires it (section 65).
Use of the mark on goods that the owner has certified is not infringement (section 64). Damages and profits cannot be claimed in a certification mark infringement suit (section 97(2)(a)).
Collective marks (section 122, rules 26 and 27)
- The application includes regulations of use stating the association name and address, its purpose, members, membership conditions, and the period of use (rule 27(2)).
- The Registrar will not register a collective mark that is likely to be confused with something other than a collective mark.
- A collective mark may consist of a sign showing the geographical origin of goods or services, but the owner cannot stop others using a similar indication in line with trade practice (rule 27(6)).
- Regulations cannot be contrary to the public policy of Bangladesh. They are open to public inspection.
- Registration is cancelled on the usual grounds and also for confusing use, breach of the regulations, changing the regulations without permission, or regulations that become contrary to public policy (rule 54).
Bangladesh also has a separate law for geographical indications. This article covers only the trademark provisions.
Special marks FAQ
What is a defensive trademark?
A registration of a well-known invented word for other goods or services where the owner does not use it, so that unrelated use is blocked (section 43).
Who approves a certification mark in Bangladesh?
The Registry examines it, but the Government decides on competence, regulations and public advantage (sections 58 to 60).
Can a trader own a certification mark?
Not for goods or services of the kind certified (section 56).
What is a collective mark?
A sign used by members of a group of enterprises, identified in the application and controlled by the owner through regulations (section 2(25)).
Which form is used for regulations?
Form TM-8 is used with certification and collective mark regulations and for changes to them (rules 25, 27 and 53).
Planning an association or quality mark?
SUPREMEiP® prepares the regulations and files certification and collective mark applications in Bangladesh.
