The short answer
Section 10 of the Trademarks Act, 2009 stops the Registry registering a mark that is identical or deceptively similar to an earlier registered mark of a different proprietor for the same goods or services. It also blocks marks that copy a well-known mark, even for different goods, if the use suggests a connection or damages the owner. It allows registration with the owner's consent or in a case of honest concurrent use.
What section 10 says
| Subsection | Rule |
|---|---|
| (1) | No registration of a mark identical with or deceptively similar to a mark already registered in the name of a different proprietor for the same goods or services |
| (2) | Honest concurrent use or other special circumstances: the Registrar may allow more than one proprietor to register similar marks, with limits and conditions |
| (3) | Competing applications: the Registrar may hold the later application until the earlier one is decided, and decide it on the evidence |
| (4) | No registration of a mark identical, confusingly similar, or a translation of a mark or trade description that is well known in Bangladesh for identical or similar goods or services of another enterprise |
| (5) | No registration, for other goods or services, of a mark that is similar or confusingly similar to a well-known mark registered in Bangladesh, or a translation of it, if the use suggests a connection with the owner and is likely to damage the owner's interests (wording as amended in 2015; the 2010 text spoke of a mark "well known and registered" used for goods "not identical or similar") |
| (6) | Knowledge of the mark in the relevant sector of the public counts, including knowledge gained in Bangladesh through promotion of the mark. The 2015 amendment refers to consumers and sellers in the Bangla text |
| (7) | Registration is allowed if the proprietor of the earlier mark or earlier right consents |
| (8) | A mark whose registration expired still counts for 1 year after expiry, unless the Registrar is satisfied there was no bona fide use in the 2 years before expiry |
The Act defines "deceptively similar" as a mark that is likely to deceive or cause confusion and nearly resembles another mark registered under the Act (section 2(20)).
Well-known marks: two different tests
Similar goods
Section 10(4)
The earlier mark needs to be well known in Bangladesh. It does not have to be registered here. The test is knowledge in the relevant sector of the public.
Different goods
Section 10(5)
The earlier mark must be well known and registered in Bangladesh. As amended in 2015, a similar or confusingly similar mark, or a translation of it, cannot be registered for other goods or services if the use would suggest a link and damage the owner's interests.
Owners of a well-known invented word can also ask for defensive registration for other goods or services under section 43. A defensive mark is not removed for non-use and counts as associated with the owner's other registrations. See our guide on defensive, certification and collective marks.
Evidence matters for well-known marks: sales and advertising in Bangladesh, press coverage, and any earlier decision recognising the mark.
The one-year tail after expiry
Two sections give a lapsed mark a short period of continued protection. Section 10(8) lets an expired registration count for 1 year. Section 23 does the same for a mark removed for failure to pay the renewal fee: for 1 year after removal it is deemed to be on the Register. Under section 10(8) the Registrar may disregard the mark if satisfied there was no bona fide use in the 2 years before expiry. Under section 23 the Tribunal may disregard it only if there was no bona fide trade use in the 2 years before removal and no deception or confusion would arise from the new mark.
If you own a mark and miss renewal, you can also ask for restoration within 1 year of expiry (section 22(4)). See trademark renewal in Bangladesh.
Prior users and your own name
- Section 30: a registered owner cannot stop a person who has continuously used an identical or nearly similar mark since before the owner's first use.
- Section 31: the owner cannot stop bona fide use of a person's own name or place of business, or a bona fide description of the character or quality of goods or services.
- Section 13: the Registrar may require marks of the same owner that are alike to be registered as associated marks, which must then be assigned together (section 39(2)).
Section 10 FAQ
Can two companies register similar marks in Bangladesh?
Only in limited cases: with the consent of the earlier owner (section 10(7)), or where the Registrar permits registration because of honest concurrent use or other special circumstances (section 10(2)).
Does a well-known mark need to be registered in Bangladesh?
For similar goods, no. Section 10(4) refers to a mark well known in Bangladesh. For unrelated goods, section 10(5) requires the mark to be well known and registered in Bangladesh.
What happens to my mark if the registration expires?
For 1 year it continues to count against later applicants, unless there was no bona fide use in the 2 years before expiry.
What is a deceptively similar mark?
A mark likely to deceive or cause confusion that nearly resembles a registered mark (section 2(20)).
Can I object to a later application?
Yes. Oppose within 2 months of Gazette publication. See our guide to trademark opposition in Bangladesh.
Worried about a similar mark?
SUPREMEiP® searches the Register, watches the Trademark Gazette and files oppositions in Bangladesh.
