The short answer
Under section 6 of the Trademarks Act, 2009, a mark must contain or consist of at least one essential particular: a specially presented name, a signature, an invented word, a word with no direct reference to the goods or services, or another distinctive mark. Section 8 then bars marks that are obscene, unlawful, likely to deceive, offensive to religious feelings, copies of state or international emblems, or filed in bad faith. At examination the Registry also checks sections 9, 10, 11 and 120 (rule 14).
The five essential particulars (section 6)
| Particular | What it means in practice |
|---|---|
| (a) Name | The name of a company, individual or firm, written or shown in a special or particular manner |
| (b) Signature | The signature of the applicant or of a predecessor in the business |
| (c) Invented words | One or more invented words |
| (d) Words without direct reference | One or more words with no direct reference to the character or quality of the goods or services, and not, in their ordinary meaning, a geographical name, a surname, a personal name or common abbreviation of one, or the name of a sect, caste or tribe in Bangladesh |
| (e) Other distinctive mark | Any other mark that distinguishes the proprietor's goods or services from others of the same kind |
A name, signature or word that does not fit (a) to (d) can still be registered only on evidence of distinctiveness (section 6(2)). A registered mark cannot later be held invalid for lack of an essential particular if it had in fact become distinctive by use at the date of registration (section 28(2)).
Marks barred by section 8
- Scandalous or obscene matter.
- Use that would be contrary to any law in force.
- Use that would be likely to deceive or cause confusion.
- Matter likely to hurt the religious susceptibilities of any class of citizens of Bangladesh.
- A mark that is identical with, imitates, or contains as an element the armorial bearing, flag, emblem, name, initials or official sign of a state or an international organisation, unless the competent authority authorises it.
- A mark that would otherwise be disentitled to protection in a court.
- An application made in bad intention and faith.
Section 29 adds that a registration older than seven years is taken as valid in all respects, unless it was obtained by fraud or in bad faith, was registered against section 8, or is not distinctive when the proceedings begin.
Other rules that affect the mark
Section 7
Colour
A mark may be limited to specified colours, and the Tribunal considers that limit when it assesses distinctiveness. A mark registered without a colour limit is treated as registered for all colours.
Section 9
Chemical names
The common name of a single chemical element or compound cannot be registered for a chemical substance, unless the word only denotes the proprietor's brand or make.
Section 11
Names of people
If a mark falsely suggests a connection with a living person, or with a person who died within the last 20 years, the Registrar may require written consent of that person or their legal representative.
Section 14
Disclaimers
If a mark contains matter common to the trade or non-distinctive, the Registrar or Court may require a disclaimer of exclusive rights in that part as a condition of registration.
Two further rules help applicants: a proprietor who claims exclusive rights in part of a mark may register the whole and the part as separate marks (section 12), and marks that differ only in non-distinctive details such as statements of goods, prices, numbers or colour must be registered as a series in one registration (section 12(3)). For marks on textile goods see the textile marks guide.
A short checklist before you file
- Does the mark have at least one section 6 particular? Descriptive words or surnames alone usually do not.
- Does any part of it fall under section 8, for example a national flag or a religious symbol?
- Is it identical or similar to an earlier mark for the same or similar goods? See section 10 explained.
- Does it use a person's name? Get written consent if the person is living or died within 20 years.
- Have you listed each class of goods or services? Each class needs its own application.
Many objections are about similar marks and descriptive words. Our guide to common grounds for objection shows how examiners apply these rules.
Registrable trademarks FAQ
Can I register my own name as a trademark in Bangladesh?
A name written in a special or particular manner can satisfy section 6(1)(a). A plain surname or personal name does not satisfy section 6(1)(d) and needs evidence of distinctiveness.
Can a descriptive word be registered?
A word with a direct reference to the character or quality of the goods or services does not meet section 6(1)(d). It needs evidence that it has become distinctive.
Can a colour be registered?
Colour limitations are allowed under section 7. The definition of a mark also includes a combination of colours.
Are religious words or symbols barred?
Section 8(d) bars matter likely to hurt the religious susceptibilities of any class of citizens of Bangladesh.
What if I filed in bad faith by mistake?
Section 8(g) bars applications made in bad intention and faith, and section 29 keeps this ground open even after seven years.
Not sure your mark qualifies?
Send us the mark and the goods or services. SUPREMEiP® runs a search and tells you the risk before you file.
