Trademark Assignment Procedure in Bangladesh | SUPREMEiP®

Trademark assignment in Bangladesh is the formal legal transfer of ownership of a registered or unregistered trademark from one party (the assignor) to another (the assignee). It is governed by Sections 33–40 of the Trademarks Act, 2009 and results in the assignee becoming the new proprietor with all attendant rights, including the right to use, enforce, license, and renew the mark. Unlike a license, assignment is permanent — the assignor loses all ownership rights upon completion of the transfer and DPDT registration.

The primary provisions are: Section 33 (power of registered proprietor to assign); Section 34 (assignment without goodwill and its conditions); Section 35 (assignment of unregistered trademarks — restricted to with-goodwill only); Section 36 (restriction where assignment would cause public confusion due to parallel use); Section 37 (Registrar's power to update the register on proof of title); Section 38 (notification and recordal of assignee's title at DPDT); Section 39 (associated trademarks must be assigned together); and Section 40 (assignee's right to sue for past and future infringement).

The Trademarks Act, 2009 recognises four modes of assignment: (1) Complete Assignment — all rights over the mark transferred in full; (2) Partial Assignment — rights transferred only for specific goods or services, with the assignor retaining ownership for the remainder; (3) Assignment With Goodwill — the mark and its brand reputation are transferred together, the simplest and most common form; and (4) Assignment Without Goodwill — only the mark is transferred, subject to conditions imposed by the Registrar under Section 34 to prevent consumer confusion.

Yes, but with a critical restriction under Section 35 of the Trademarks Act, 2009. An unregistered trademark can only be assigned together with the goodwill of the business in which the mark has been used. Assignment of an unregistered mark without accompanying goodwill is legally void and unenforceable. This rule exists because an unregistered mark derives its entire legal existence from use in trade — separated from the business goodwill, the assignment would create illusory rights disconnected from any actual commercial activity.

The required documents for DPDT submission are: (1) the original Deed of Assignment, duly legalized by the Bangladesh Embassy/High Commission or apostilled (if from a Hague Convention member country); (2) a Simple Power of Attorney authorizing the local IP agent to act on behalf of the assignee; (3) proof of payment of the DPDT official fee (~USD 150); (4) a copy of the trademark registration certificate (for registered marks); and (5) a certified English translation of the Deed if it is not in English. Additional evidence of use may be required for assignments without goodwill under Section 34.

Apostille is a simplified form of authentication available when both countries are members of the Hague Convention Abolishing the Requirement of Legalisation (1961). An apostille certificate is issued by the competent authority in the signatory country (typically a government ministry or court) and is accepted directly by DPDT without further consular authentication. Embassy Legalization is required when the executing country is not a Hague member — the deed must be notarized locally, authenticated at the country's foreign ministry, and then legalized by the Bangladesh Embassy or High Commission in that country. Embassy legalization typically takes 2–6 weeks longer than apostille processing.

The total end-to-end timeline for trademark assignment in Bangladesh typically ranges from 3 to 12 months. This includes: deed drafting and execution (1–2 weeks); apostille/legalization (2–6 weeks); DPDT processing and examination (1–3 months); DPDT Hearing if required (1–3 months); Trademark Journal publication and 60-day opposition window (2–3 months); and final issuance of the Confirmation Certificate (1–2 months after opposition period). Delays may occur due to DPDT backlog, opposition proceedings, or requests for additional documentation.

The official DPDT fee for trademark assignment is approximately USD 150 per mark, subject to change in accordance with the fee schedule under the Trademark Rules, 2015. This covers the government processing fee only and does not include professional legal fees for deed drafting, legalization/apostille costs, agent fees, translation costs, or hearing appearance fees. For accurate current fee amounts, always confirm directly with DPDT or your Bangladesh trademark attorney before filing.

Yes. Under Section 38 of the Trademarks Act, 2009, the assignee must apply to the Registrar to be recorded as the new owner in the Trademarks Register. An assignment that has not been registered with the DPDT is not legally effective against third parties. This means an unregistered assignee cannot enforce the trademark against infringers in court proceedings and may lose priority to a subsequent registered assignee of the same mark. Registration also provides constructive notice of ownership to the world.

A DPDT Hearing in the context of trademark assignment is conducted by the Registrar or a designated examiner when there is a deficiency in the documents, a legal question about the validity of the assignment, or a concern about compliance with Sections 33–40. During the Hearing: the agent or attorney representing the assignee appears before the examiner; addresses questions raised about the deed, legalization, or the nature of the assignment; presents additional evidence if required (e.g., proof of use for assignments without goodwill); and makes oral or written submissions. The examiner then issues a decision — either approving the assignment for journal publication or requiring further rectification.

Once the DPDT approves the assignment application and publishes a notice in the Trademark Journal, any interested party (e.g., prior licensees, creditors, competing claimants) may file a Notice of Opposition within 2 Mo. of the publication date. The opponent must state the grounds of their opposition. If no opposition is filed within this window, or if any opposition is dismissed following examination, DPDT proceeds to formally record the assignment in the Trademarks Register and issue the Confirmation Certificate to the assignee.

Upon receipt of the DPDT Confirmation Certificate, the assignee acquires: (1) exclusive right to use the trademark in Bangladesh for the assigned goods/services; (2) the right to sue for trademark infringement — including acts committed before the date of assignment under Section 40; (3) the right to license or sub-license the mark to third parties; (4) the right to further assign the mark; (5) the right to renew the registration and maintain DPDT records; and (6) the right to take enforcement actions — including customs recordal, civil suits, and criminal complaints against infringers.

Yes. Section 40 of the Trademarks Act, 2009 expressly provides that the assignee acquires the right to sue for trademark infringement occurring both before and after the date of assignment. This is a significant commercial benefit — it means that if a competitor was infringing the mark before the assignment was completed, the assignee (new owner) can still pursue legal remedies for those past acts. However, it is best practice to address this explicitly in the Deed of Assignment and for the parties to agree on how any recoveries from pre-assignment infringement claims will be allocated.

Assignment is a permanent transfer of trademark ownership — the assignor ceases to be the proprietor. License is a grant of permission to use the mark under specified conditions, while the licensor (owner) retains full title. Under the Trademarks Act, 2009: assignment is governed by Sections 33–40; licensing (through "Registered User" arrangements) is governed by Sections 44–50. A licensee cannot sue for infringement in their own name (only the registered proprietor can), whereas an assignee has full enforcement rights. Additionally, a license can be revoked or expire, while a registered assignment is generally irrevocable.

When a trademark is assigned, the assignee steps into the position of the assignor as the new proprietor. Any existing Registered User (licensee) agreements remain in force and are binding on the assignee unless the license agreement specifically provides otherwise. The assignee should be made fully aware of all subsisting licenses before completing the assignment — this should be disclosed in the Deed of Assignment. If the assignee wishes to terminate existing licenses, they must do so in accordance with the terms of the license agreement and relevant provisions of the Trademarks Act, 2009 (Sections 44–50).

No. Section 39 of the Trademarks Act, 2009 explicitly prohibits splitting associated trademarks to different assignees. Associated trademarks are marks that the DPDT has registered as being confusingly similar to each other, all owned by the same proprietor (commonly used to maintain defensive registration strategies). When associated marks exist, they must all be assigned together to the same assignee. Any attempt to assign one associated mark to one party and another to a different party will be refused by DPDT as it would create public confusion — precisely the situation Section 36 is designed to prevent.

A properly executed and registered trademark assignment is generally irrevocable. However, it may be challenged and cancelled in specific circumstances: (1) Fraud or misrepresentation — if the assignor fraudulently represented the title, freedom from encumbrances, or other material facts; (2) Mutual agreement — both parties may agree to unwind the assignment and reassign the mark; (3) Court order — a court may declare the assignment void if it finds that Section 36 (confusion) or Section 39 (associated marks) was violated; or (4) Breach of deed conditions — if the assignee fails to comply with agreed conditions (e.g., territorial restrictions) the assignor may seek legal remedies including cancellation.

Yes. A pending trademark application can be assigned in Bangladesh before the mark is formally registered. The Deed of Assignment must specifically reference the application number and filing details. The assignee then notifies DPDT of the change of applicant ownership and requests that the register (and pending application records) be updated accordingly. Once the application proceeds to registration, the Confirmation Certificate will be issued in the name of the assignee. It is advisable to complete the assignment of pending applications before they are examined, to avoid complications during the examination process.

Yes. Foreign entities — including foreign corporations, multinational companies, and individuals domiciled abroad — can be assignees of Bangladesh trademarks. There is no nationality restriction on trademark ownership under the Trademarks Act, 2009. Foreign assignees must comply with the same procedural requirements: legalized or apostilled deed, local power of attorney appointing a Bangladesh-based agent, and DPDT registration. Foreign assignees must appoint a local IP agent with a registered address in Bangladesh for DPDT correspondence and service of process.

Goodwill in the context of trademark law represents the established reputation, customer recognition, and commercial value associated with a brand. Its significance in trademark assignment: (1) Assignment with goodwill (Section 33/34) — the mark and its brand equity transfer together, giving the assignee the full benefit of the mark's market recognition; the DPDT process is straightforward; (2) Assignment without goodwill (Section 34) — permitted only for registered marks; the Registrar may impose conditions such as requiring public advertisement of the assignment and evidence that the assignee intends to use the mark; (3) Unregistered marks (Section 35) — assignment without goodwill is entirely void; goodwill is the sole basis of the unregistered mark's existence. In M&A transactions, goodwill is often valued separately and forms part of the consideration for the assignment.

After signing the Deed of Assignment, the assignor must: (1) Immediately cease use of the assigned trademark (unless a transitional use period is expressly agreed in the deed); (2) Cooperate with DPDT proceedings — appear at hearings if called, provide supporting documents; (3) Disclose all encumbrances — including existing licenses, pledges, court orders, or opposition proceedings involving the mark; (4) Not take any action that would undermine the assignee's title — for example, not filing for cancellation of the mark or authorizing others to use it; (5) Assist with the smooth transfer of any associated marks (Section 39); and (6) Deliver originals of all relevant documents — registration certificate, prior DPDT correspondence — to the assignee.

A registered trademark that has not been used in Bangladesh for a continuous period of 3 years from the date of registration (or last use) is vulnerable to cancellation for non-use by any aggrieved person under the Trademarks Act, 2009. This applies equally to marks that have been assigned — if the assignee fails to use the mark after the transfer, a competitor or interested party may apply to the DPDT or court for cancellation of the trademark registration. For assignments without goodwill (Section 34), the Registrar may specifically condition the assignment on the assignee beginning use within a stipulated period.

Technically, a trademark with a pending opposition or court dispute can still be the subject of an assignment, but there are significant practical complications. The DPDT may decline to process the assignment until the pending opposition or court matter is resolved, or may flag the issue during examination. The Deed of Assignment must disclose all pending disputes, and the assignee must be made fully aware of the risk that the mark may ultimately be refused registration or cancelled. The assignee effectively steps into the legal position of the assignor with respect to any ongoing proceedings. Legal due diligence before executing the deed is strongly recommended to assess these risks.

Yes. Multiple trademarks — including marks registered in different NICE Classification classes — can be covered under a single Deed of Assignment, provided each trademark is clearly identified in the deed with its registration number, mark description, and relevant class(es). However, a separate DPDT official fee (~USD 150) is typically payable per trademark registration being assigned. The DPDT will update the Trademarks Register for each mark individually. If the marks being assigned include associated trademarks (Section 39), they must all be included in the same deed and assigned to the same assignee.

Trademark transmission is an involuntary transfer of trademark ownership that occurs by operation of law — for example, upon the death of the proprietor (where rights pass to heirs), insolvency (where rights vest in a liquidator or trustee), or corporate dissolution/merger. Assignment, by contrast, is a voluntary and consensual act. Both assignment and transmission result in a change of ownership in the Trademarks Register, but transmission is evidenced by a legal order (probate, court order, merger deed) rather than a Deed of Assignment. The DPDT must still be notified and the register updated in both cases.

Before executing a Deed of Assignment, a prudent assignee should conduct the following IP due diligence: (1) Verify registration status — confirm the mark is validly registered, up-to-date on renewals, and free from lapses at DPDT; (2) Check for encumbrances — search the Trademarks Register for any registered licenses, pledges, or court orders affecting the mark; (3) Review pending proceedings — identify any pending opposition, cancellation, or infringement actions; (4) Assess prior use and goodwill — confirm the mark is in use and the goodwill claimed is real and valuable; (5) Check for associated marks (Section 39) — identify all marks that must be transferred together; (6) Verify the assignor's title — confirm the assignor is the registered proprietor with authority to assign; and (7) Domain name and social media audit — check whether the brand's digital assets (domain, social handles) are also being transferred.

The Trademark Journal is the official gazette published by the DPDT, Bangladesh. In the context of trademark assignment, the Journal serves as the formal public notice mechanism. Once DPDT approves the assignment application, a notice of the proposed assignment is published in the Journal. This publication: (1) gives constructive notice to all interested parties; (2) triggers the 60-day opposition window during which any person may challenge the assignment; (3) establishes the public record of the change of ownership. If no opposition is filed within 2 Mo., or opposition is dismissed, DPDT finalizes the assignment. The Journal is publicly accessible, allowing businesses to monitor competitor trademark transactions.

Yes. A Simple Power of Attorney (POA) is required when the assignee (or assignor) appoints a local IP agent or law firm to handle the DPDT filing on their behalf. The POA authorizes the named agent to submit documents, correspond with DPDT, attend hearings, and take all necessary actions in connection with the trademark assignment. The POA used for assignment purposes in Bangladesh is generally a "simple" (non-notarized) form — distinct from the notarized/apostilled POA required for trademark registration applications filed by foreign applicants. However, practices may vary, so confirming requirements with your attorney is advisable.

Yes, but the assignment of a certification trademark in Bangladesh requires prior approval from the competent government authority under the Trademarks Act, 2009. Certification marks are distinctive from ordinary trademarks in that they certify specific characteristics of goods or services (e.g., origin, material, quality). Because of this public interest function, the government must approve any transfer of ownership to ensure the new proprietor is capable of administering the certification scheme effectively. The DPDT will require evidence of this approval before processing the assignment of a certification mark.

SUPREMEiP is a specialist intellectual property law firm based in Dhaka, Bangladesh, with extensive experience in trademark assignment transactions — both domestic and cross-border. Our services cover the full assignment lifecycle: (1) IP due diligence and title verification; (2) drafting legally robust Deeds of Assignment tailored to the specific transaction; (3) advising on apostille vs. embassy legalization requirements by country; (4) filing and managing the DPDT application; (5) representing clients at DPDT Hearings; (6) managing the journal publication and opposition period; and (7) securing the Confirmation Certificate. Contact us at info@supremeip.com or +8801613336333 (WhatsApp) for a consultation.