The short answer
A licensee in Bangladesh can be recorded on the Register as a registered user of the mark (section 44). The owner and the proposed user apply jointly on Form TM-28 with the written licence agreement and an affidavit that explains the owner's control over the use. A registered user cannot assign the right (section 48), but after asking the owner to act, and waiting 3 months, may sue for infringement in its own name (section 46).
How to register a user (section 45, rule 44)
Joint application
- The registered owner and the proposed user apply together, with the fee. A separate application is needed for each proposal (rule 44).
Documents
- The written agreement, or a certified copy, on the permitted use of the mark.
- An affidavit giving the relationship between the parties and the degree of the owner's control over the use, whether the user is the sole user, the goods or services, any conditions on quality, mode or place of use, and the period of permitted use (section 45(1)).
What the Registry checks
- Whether the licence is likely to facilitate trafficking in goods or services under the mark; the Registrar may refuse for that reason (section 45(3)).
- Whether the agreement has provisions on product or service specifications and quality control, and whether the mark is used in part of the owner's existing business (rule 44(3)).
- The applicant is heard before any refusal or conditional acceptance (section 45(4)).
Entry in the Register
- The Register records the user's name, address and description, whether the use is exclusive, any restrictions and the period of permitted use (rule 45). The Registrar notifies other registered users (section 45(6)).
What a registered user can and cannot do
| Topic | Rule |
|---|---|
| Use | Use by a registered user within the permitted use counts as use by the owner for the purposes of the Act (definition of permitted use, section 2(2)) |
| Suing | The user can ask the owner to sue. If the owner refuses or neglects for 3 months, the user may sue in its own name and make the owner a defendant, who pays no costs unless it appears and takes part (section 46) |
| Assignment | A registered user has no assignable or transmissible right (section 48). A sole proprietor who forms a partnership, or a firm that changes its constitution, keeps the use only while the original user or a partner remains in the firm |
| Export | Applying a mark to goods or services for export from Bangladesh counts as use in Bangladesh (section 50(1)) |
| Proof of use | Use of an associated mark or of the mark with small additions that do not affect identity may be accepted as use of the registered mark (section 49) |
Variation and cancellation (section 47, rules 46 and 48)
- The owner can ask on Form TM-25 to vary the user's goods, conditions or restrictions, or to cancel it. The user or another registered user can also ask to cancel.
- Any person can apply to cancel on grounds including: the user used the mark outside permitted use or in a way likely to deceive; a material fact was not disclosed; the registration ought not to have been made because of a contract right; or circumstances have changed so that registration would now be refused.
- The Registrar may cancel when the quality terms of the agreement are not enforced or not followed.
- If the registration is for a fixed period, the entry is removed when it ends (rule 46(7)).
Registering the licence helps to show control over quality, which also protects the mark from challenge for non-use. See non-use cancellation in Bangladesh.
Registered user FAQ
Is a trademark licence in Bangladesh valid without registration?
The Act provides for registration of the permitted user. Where use depends on the registered-user provisions, such as use counted for the owner, the licence should be recorded. Ask us about your agreement.
Which form is used?
Form TM-28 for the joint application and Form TM-25 to change or cancel the entry.
Can a registered user sell the mark?
No. Section 48 gives it no assignable or transmissible right.
Can a registered user sue infringers?
Yes, after calling on the owner and waiting 3 months, subject to the agreement between them (section 46).
Does licensing for export count as use?
Yes. Section 50(1) treats applying the mark to goods for export from Bangladesh as use.
Planning to license your mark?
SUPREMEiP® drafts licence agreements and files the registered user application in Bangladesh.
