Introduction to Trademark Opposition

Trademark opposition is a crucial legal process in Bangladesh that allows third parties to challenge trademark registrations. This mechanism safeguards existing trademark holders and helps maintain the integrity of the trademark system. In Bangladesh, any person can file a Notice of Opposition with the Registrar of Trademarks within two months of a trademark application's publication in the

Trademarks Journal.

The opposition process protects businesses and individuals from potential infringement on their existing trademark rights. It provides an opportunity to contest a trademark application if it is believed to be identical or similar to an existing trademark in the same or similar class of goods or services or if it is likely to confuse consumers. It's important to note that the opposition must be filed within the specified two-month period, and there are no provisions for extending this deadline.

Grounds for Trademark Opposition

Trademark opposition in Bangladesh can be filed on various grounds, including:

• Likelihood of Confusion: If the proposed trademark is similar to an existing registered trademark and may cause confusion among consumers.
• Prior Rights Violation: When the application infringes on prior use or well-known trademarks.
• Lack of Distinctiveness: If the trademark is descriptive or lacks unique characteristics.
• Generic Nature: When the proposed mark is too generic for the goods or services it represents.
• Offensive or Deceptive Content: If the trademark is considered offensive or likely to deceive consumers.
• Legal Contraventions: When the application contravenes the Trademarks Act or other applicable laws in Bangladesh.

Filing a Trademark Opposition: Requirements and Procedure

To file a trademark opposition in Bangladesh, the following requirements must be met:

• Formal Opposition Notice: Submit a notice to the Department of Patents, Designs, and Trademarks (DPDT) within the two-month objection period.
• Opposing Party Details: Provide the name and address of the party filing the opposition.
• Opposition Grounds: Clearly state the reasons for opposing the trademark registration.
• Trademark Details: Include information about the opposed trademark.
• Supporting Evidence: Provide any relevant evidence and arguments supporting the opposition.
• Opposition Fee: Pay the applicable fee for filing the opposition.

The opposition notice must be in the prescribed format (Form TM-05) and comprehensively outline the grounds for opposition. It's important to note that the opposition must be filed within the specified two-month period, and there are no provisions for extending this deadline.

Step-by-Step Guide to Trademark Opposition in Bangladesh

Step 1: Filing Opposition Notice or Counter-Statement

To initiate the trademark opposition process, an Opposition Notice (Form TM-05) must be filed within 60 days of the trademark's publication in the journal. Following this, the applicant must submit a counter-statement (Form TM-06) within two months of receiving the opposition notice.

Step 2: Evidence and Affidavit Submission

Once the counter-statement is received, the opponent must submit evidence and an affidavit within two months. Subsequently, the applicant has another two months to submit their evidence and affidavit.

Step 3: Counter Affidavit (Optional)

The opponent may file a counter affidavit within one month of receiving the applicant's affidavit.

Step 4: Hearing Notice

The Intellectual Property Office issues a notice (Form TMR-13) to both parties, indicating the date for a hearing. Parties must confirm their attendance by submitting Form TM-07 within 14 days of receiving the notice.

Step 5: Hearing Process

A hearing is conducted as scheduled, and multiple sessions may be held if necessary.

Step 6: Decision and Order

After reviewing all arguments and evidence presented, the tribunal decides on the trademark application.

Timeline and Duration of Trademark Opposition

The trademark opposition process in Bangladesh typically spans 2 to 4 years, depending on the case's complexity and the workload of the trademark office. Key timelines include:

• Opposition filing: Within 60 days of trademark publication
• Counter-statement filing: Within two months of receiving the opposition notice
• Evidence submission: Within two months for each party
• Counter affidavit (if any): Within one month of receiving the applicant's affidavit

Post-Opposition: Appeals and Further Steps

If either party disagrees with the Registrar's decision, they can appeal to the High Court Division of the Supreme Court of Bangladesh. This appeal must be filed within two months of the decision.

Conclusion: Protecting Your Intellectual Property Rights

Trademark opposition is a vital mechanism for protecting intellectual property rights in Bangladesh. Businesses and individuals can effectively safeguard their trademarks and brand identity by understanding the process, grounds for opposition, and associated costs. Whether you're filing an opposition or defending against one, thorough preparation and professional legal assistance are crucial for navigating the complexities of trademark law in Bangladesh.

This article was written by J.A. Chaudhury Reagan, Advocate, Supreme Court of Bangladesh. All rights reserved.