The short answer
A registered trademark in Bangladesh is personal property and can be assigned with or without goodwill under Section 33 of the Trademarks Act, 2009. The process: a deed of assignment, legalisation or apostille, a DPDT application, publication in the Journal, a 2-month opposition window and a confirmation certificate. Expect 8 to 24 months.
Four kinds of assignment
Complete
All rights transfer
The assignor keeps nothing. Common in sales and mergers.
Partial
Some goods or services
The assignor keeps the rest; both use the mark for their own classes.
With goodwill
Mark plus reputation
Simplest to register, with fewer restrictions.
Without goodwill
Mark only
Allowed for registered marks (Section 34); the Registrar may require public notice and use within a set period.
Unregistered marks (Section 35): they can be assigned only together with the goodwill of the business. Otherwise the assignment is void.
Step-by-step procedure
Draft the deed
- Names and addresses, registration numbers and classes, type of assignment, consideration, effective date, warranties, signatures
- State whether past infringement claims transfer (Section 40) and assign associated marks together (Section 39)
Apostille or legalise
- Hague member countries: apostille
- Others: notarise, foreign ministry, then Bangladesh Embassy
- Non-English deeds need a certified English translation
File at the DPDT
- Legalised deed, simple POA, fee receipt, registration certificate, translation if needed
- Evidence of use for an assignment without goodwill
Examination and hearing
- The examiner checks title and compliance with Sections 33 to 40
- A hearing notice issues if there is a deficiency
Publication and opposition
- Published in the Journal; any interested person may oppose
Confirmation certificate
- The assignment is recorded and the assignee becomes the owner
- The assignee may sue for earlier infringements (Section 40) and must renew every 10 years
Restrictions that void an assignment
- Section 36: exclusive rights split between parties in a way likely to confuse the public
- Section 39: associated marks must be assigned together
- Section 34: a no-goodwill assignment may need public notice and prompt use
- Section 35: unregistered marks need goodwill
Assignment, licence and transmission
| Assignment | Licence | Transmission | |
|---|---|---|---|
| Nature | Permanent transfer | Temporary right of use | Involuntary: death, insolvency |
| Ownership | Passes to assignee | Stays with licensor | Passes to heir or trustee |
| DPDT record | Mandatory | Registered user application | Required |
An unrecorded assignment is not effective against third parties. If only the owner's name or address has changed, you need recordal, not assignment.
Trademark assignment questions
Is assignment the same as a licence?
No. Assignment transfers ownership; a licence only grants use.
How long does it take?
Typically 8 to 24 months from the deed to the confirmation certificate.
Does the assignee get past infringement claims?
Yes, under Section 40, if the deed transfers them.
Must the assignment be recorded?
Yes. Unrecorded assignments are not effective against third parties.
Need to transfer, update or enforce a trademark?
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Trademark Assignment Procedure in Bangladesh: Step-by-Step Guide
