The short answer
Under section 28 of the Trademarks Act 2009, the registration of a trademark, and every recorded assignment and transmission, is prima facie evidence that the mark is valid. Under section 29, once 7 years have passed from the original registration, the registration is taken to be valid in all respects unless the challenger proves fraud or bad faith, a breach of section 8, or that the mark is no longer distinctive when the case begins.
Section 28: registration is prima facie evidence
Section 28(1) says that in all legal proceedings about a registered trademark, including an application under section 51 to cancel or rectify the Register, the original registration and all later assignments and transmissions are prima facie evidence of validity.
Prima facie means the court starts by treating the registration as valid. The person who attacks it must bring proof. The owner does not have to prove validity from scratch.
The rule covers assignments and transmissions too. If a mark changed hands and the change was never recorded, the new owner loses this evidential help. Record every assignment.
Section 28(2): a mark that became distinctive by use
Section 6 lists what a mark needs to be registrable. Some marks are accepted because they have become distinctive through use. Section 28(2) protects such a mark in court.
A registered mark will not be held invalid only because it was not registrable under section 6, if it is proved that the registered proprietor, or the predecessor in title, had used it so much that it had become distinctive on the date of registration.
- Keep dated invoices, advertisements and sales records from before filing.
- Keep records for each predecessor in title if the mark was assigned.
- Keep proof that use was in Bangladesh, for the goods or services registered.
Section 29: after 7 years the registration is hard to attack
Section 29 applies in all legal proceedings, again including a section 51 application. After 7 years from the date of the original registration, the registration is taken to be valid in all respects.
It is not absolute. The registration can still be attacked on only three grounds, and the challenger must prove one of them.
Ground 1
Fraud or bad faith
The registration was obtained by fraud or in bad faith.
Ground 2
Breach of section 8
The mark was registered in contravention of section 8, which prohibits registration of certain matters.
Ground 3
Not distinctive now
At the start of the proceedings the mark is not distinctive of the goods or services of the registered proprietor.
Section 29 is expressly subject to sections 32 and 42. A word that has become the common name of goods (section 32) and a mark that has not been used (section 42) can still be challenged after 7 years.
Before and after the 7-year point
| Question | Within 7 years | After 7 years |
|---|---|---|
| Starting point in court | Registration is prima facie evidence (s28) | Registration is taken to be valid in all respects (s29) |
| Who must prove invalidity | The challenger | The challenger, on 3 grounds only |
| Lack of registrability under section 6 | Open to attack, unless use made it distinctive (s28(2)) | Not a ground after 7 years |
| Non-use and common-name arguments | Possible (ss 32, 42) | Still possible (ss 32, 42) |
What owners and challengers should do
Owners
Keep the chain of title
Record assignments and keep the registration certificate and renewal receipts together.
Owners
Keep use evidence
Use is your answer to a non-use claim and to a distinctiveness claim.
Challengers
Act early
A cancellation or rectification case is easier within the first 7 years than after.
Challengers
Check bad faith
After 7 years, evidence of fraud or bad faith, such as copying a foreign mark, may be the main route.
See the related guides below on cancellation for non-use, invalidation procedures and rectification appeals to the High Court Division.
Frequently asked questions
What does prima facie evidence of validity mean?
The court treats the registration as valid unless the challenger proves otherwise. Section 28 gives this effect to the original registration and to recorded assignments and transmissions.
When does a Bangladesh trademark become hard to challenge?
After 7 years from the date of the original registration, under section 29 of the Trademarks Act 2009.
Can a trademark be cancelled after 7 years?
Yes, but only for fraud or bad faith, a breach of section 8, or loss of distinctiveness. Sections 32 and 42 also remain available.
Does section 29 stop a non-use cancellation?
No. Section 29 is subject to section 42, so a mark that has not been used can still be removed.
Need to defend or challenge a trademark in Bangladesh?
Talk to the SUPREMEiP® team about cancellation, rectification and enforcement.
