Trademark opposition is a legal process that allows third parties to challenge trademark registration. If a third party believes that the trademark application may infringe upon their existing trademark rights, they may file an opposition to the trademark application during the opposition period, which typically lasts for a certain period after the trademark application has been published for opposition.
The opposition process allows interested parties to challenge the trademark registration because the trademark is identical or similar to an existing trademark in the same or similar class of goods or services or because the trademark is likely to cause confusion or deceive consumers.
The trademark is typically published in the Trademarks Journal for a specific period, usually 2 (two) months from publication. During this period, any person or entity with a legitimate interest can file an opposition.
An opposition can be filed on various grounds, including:
Filing an Opposition: To file an opposition, a party must submit a formal opposition notice to the Department of Patents, Designs, and Trademarks (DPDT) within the specified objection period. The opposition notice should include the following information:
| Description | Cost |
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Stage-1: Filing of Notice of Opposition
Suppose a trademark is published in the Trademarks Journal. In that case, anyone can oppose trademark registration in Bangladesh by filing a notice of opposition within two months from the date the Trademarks Journal is made public. This period can be extended up to 3 months by filing a request for an extension of time, with a prescribed fee, up to three times for one month each. A trademark application can be opposed in Bangladesh based on the grounds mentioned in Sections 8, 9, and 10 of the Trademarks Act 2009. |
$75 |
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Stage-2: Counterstatement
Once the Notice of Opposition is filed, the trademark applicant has a set period of time to respond to the opposition. The response must address the grounds for opposition and provide evidence to support the registration of the trademark. The response must be filed within 2 months from the date of receipt of the Notice of Opposition, failing which the application shall be treated as abandoned. |
$60 |
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Stage-3: Evidence
After the response is filed, both parties may have the opportunity to provide further evidence and arguments to support their positions. This evidence exchange period is an important part of the opposition process and can determine the outcome of the opposition. |
$50 |
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Stage-3(a) Evidence in support of opposition
Within two months from the receipt by the opponent of the duplicate counter-statement, the opponent shall either leave with the Registrar such evidence by way of affidavit as he may desire to adduce in support of his opposition or shall intimate to the Registrar in writing that he does not desire to adduce any evidence in support of his opposition. He shall deliver to the applicant copies of any evidence that he leaves with the Registrar under this sub-rule. If an opponent takes no action under sub-rule within the time therein prescribed, he shall, unless the Registrar otherwise directs, be deemed to have abandoned his opposition. |
$50 |
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Stage-3 (b) Evidence in support of the application
Within two months from the receipt by the applicant of the copies of affidavits in support of the opposition, the applicant shall leave with the Registrar such evidence by way of affidavit as he desires to adduce in support of his application and shall deliver to the opponent copies thereof. |
$50 |
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Stage-3 (c) Evidence in reply by opponent
Within one month from the receipt by the opponent of the copies of the applicants affidavits, the opponent may leave with the Registrar evidence by affidavit in reply and shall deliver to the applicant copies thereof. This evidence shall be confined to matters strictly in reply. |
$50 |
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Stage-3 (d) Further evidence
No further evidence shall be left on either side, but, in any proceedings before the Registrar, he may at any time, if he thinks fit, give leave to either the applicant or the opponent to leave any evidence upon such term as to costs or otherwise as he may think fit. |
$50 |
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Stage-3 (e) Exhibits
Where there are exhibits to affidavits filed in opposition, copies or impressions of such exhibits shall be sent to the other party on his request and at his expense, or, if such copies or impressions cannot conveniently be furnished, the original shall be left with the Registrar in order that they may be open to inspection. The original exhibits shall be produced at the hearing unless the Registrar otherwise directs |
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Stage-4: Hearing
If the parties are unable to resolve the opposition through the evidence exchange process, a hearing may be scheduled. At the hearing, both parties will have the opportunity to present their arguments and evidence to an adjudicator. |
$45 |
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Stage-5: Decision
After the hearing, the adjudicator will issue a decision as to whether the opposition is successful or not. If the opponent is successful, the trademark registration will be refused or cancelled. If the resistance is unsuccessful, the trademark registration will proceed to registration. |
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Appeal
If either party is dissatisfied with the DPDTs decision, they may have the right to appeal the decision to the Intellectual Property Appellate Board (IPAB) or the appropriate legal authority in Bangladesh. Its essential to consult with a trademark attorney in Bangladesh when filing or defending against an opposition. Trademark opposition proceedings can be complex, and legal expertise can help you navigate the process effectively. |
The Trademarks Act, 2009: Bangladesh's primary legislation governing trademarks. It sets out the rules and procedures for registering, using, and protecting trademarks in Bangladesh, including the opposition procedure.
The Trademarks Rules, 2015: The rules made under the Trademarks Act, 2009. The rules provide further details on the procedures and requirements for trademark registration and opposition in Bangladesh.
The Code of Civil Procedure, 1908: This general law governs civil proceedings in Bangladesh, including trademark opposition proceedings.
It is important to note that these laws and acts are complex and require expert legal advice. It is recommended that parties seeking to oppose or defend against a trademark registration in Bangladesh seek the assistance of a qualified trademark lawyer.
According to Section 18 of the Trademark Act, 2009
(1) Any person may, within 2(two) months from the advertisement of an application for registration and on payment of the prescribed fee, give notice in writing in the prescribed manner to the Registrar of opposition to registration.
(2) The Registrar shall, within 1(one) month from the receipt of the notice of opposition by him, serve a copy of the notice on the applicant for registration in the prescribed manner and within 2(two) months from the receipt by the applicant of such copy of the notice of opposition, the applicant shall send to the Registrar in the prescribed manner, a counter-statement of the grounds on which he relies for his application, and if he does not do so, he shall be deemed to have abandoned his application.
(3) If the applicant sends such counter-statement, the Registrar shall, within 1(one) month from receiving such counter-statement, serve a copy thereof in the prescribed manner on the person giving notice of opposition.
(4) Any evidence on which the opponent and the applicant may rely shall be submitted to the Registrar in the prescribed manner and within the specified time, and the Registrar shall allow them to be heard if they so desire.
(5) The Registrar shall, after hearing the parties and considering the evidence, decide whether registration is to be permitted and whether such permission shall be or not subject to conditions or limitations.
(6) When the Registrar deems it necessary to permit registration subject to conditions or limitations under sub-section (5), he shall record his decision on such conditions or restrictions.
(7) If a person giving notice of opposition or an applicant sending a counter-statement after receipt of a copy of such notice neither resides nor carries on business in Bangladesh, the Registrar may require him to give security for costs of the proceedings before it, and in default of such security being duly given, may treat the opposition or application, as the case may be, as abandoned.
(8) Notwithstanding anything contained in this section, all opposition-related activities for registration shall be concluded within 120 (one hundred and twenty) working days after giving notice under subsection (1).
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