The short answer
Section 12 of the Trademarks Act 2009 lets an owner register a whole mark and a part of it as separate marks, and requires similar marks that differ only in minor matters to be registered as a series in one registration. Section 13 links such marks as associated trademarks, and the owner can ask the Registrar to dissolve the association if there is no risk of confusion.
Section 12(1) and (2): registering part of a mark
If you claim the exclusive right to use a part of your mark on its own, you may apply to register the whole mark and the part as separate trademarks.
Each separate mark must meet every condition of an independent trademark and has all the incidents of one. A part that is descriptive or weak will not pass just because the whole mark is registered.
- Typical case: a logo with a word and a device, where you want to protect the word alone.
- Typical case: a house mark inside a longer product mark.
- Each part needs its own filing and its own examination.
Section 12(3): marks that must be registered as a series
Where one owner has several marks for the same goods or services that resemble each other in the main parts but differ only in the listed matters, the Act says they must be registered as a series in one registration.
12(3)(a)
Statements of goods or services
The marks differ only in the statement of the goods or services they are used or proposed to be used for.
12(3)(b)
Number, price, quality, places
The marks differ in numbers, price, quality or names of places.
12(3)(c)
Non-distinctive matter
The difference is other non-distinctive matter that does not substantially affect the identity of the mark.
12(3)(d)
Colour
The marks differ in colour.
Colour is a frequent reason for a series. See also the guide on registering a trademark with a colour claim in Bangladesh.
Section 13: associated trademarks
Associated trademarks are marks of the same owner that the Register treats as linked. They arise in three ways.
| Provision | When marks become associated |
|---|---|
| Section 13(1) | The Registrar may require it where an owner has an identical or nearly resembling mark for the same goods or services that would deceive or cause confusion if used by someone else |
| Section 13(2) | A mark and a part of it are registered as separate marks in the same name; they are deemed associated |
| Section 13(3) | Marks registered as a series under section 12(3) are deemed associated |
Section 13(4): dissolving the association
The registered owner of two or more associated marks may apply in the prescribed manner. The Registrar may dissolve the association for any of them if satisfied that no deception or confusion would result if that mark were used by another person for any of the goods or services it covers. The Register is then amended.
- Apply when you want to assign or license one mark separately.
- Show that the marks are different enough that another person using one would not cause confusion.
- Check the Trademark Rules 2015 for the form and fee at the time of filing.
Associated marks are normally dealt with together. Ask before assigning one mark alone. SUPREMEiP® can check the Register entry for you.
Frequently asked questions
Can I register only part of my logo in Bangladesh?
Yes. Section 12(1) lets you register the whole mark and a part as separate marks, if the part meets all conditions of an independent trademark.
What is a series of trademarks?
A group of similar marks of one owner for the same goods or services that differ only in listed minor matters, registered together in one registration under section 12(3).
Are all my similar marks associated trademarks?
The Registrar may require it under section 13(1). A mark and its part, and a series, are associated automatically under section 13(2) and (3).
Can associated marks be separated?
Yes, under section 13(4), if the Registrar is satisfied that no deception or confusion would result.
Planning several similar marks in Bangladesh?
Talk to the SUPREMEiP® team about how to file them: as a series, as separate marks, or as associated marks.
