Introduction to Trademark Assignment

Trademark assignment is a crucial process in the world of intellectual property rights. It involves transferring the ownership rights of a trademark from one party (the assignor) to another (the assignee). This process is particularly significant in Bangladesh, where businesses increasingly recognize the value of their intellectual property assets.

Understanding Trademark Assignment in Bangladesh

In Bangladesh, trademark assignment is governed by the Trademarks Act of 2009. This legal framework provides the basis for transferring trademark ownership rights. The assignment can be for the entire trademark or a specific part, such as certain goods or services within a particular class.

• The assignment must be in writing and signed by or on behalf of the assignor.
• The assignment can be with or without the goodwill of the business concerned.
• To be effective against third parties, the assignment must be registered with the Department of Patents, Designs, and Trademarks (DPDT).

The Importance of Trademark Assignment

Trademark assignment plays a vital role in various business scenarios:

• Mergers and Acquisitions: When companies merge or are acquired, trademark assignments ensure that valuable brand assets are properly transferred.
• Business Expansion: Companies entering the Bangladeshi market may need to acquire local trademarks through assignment.
• Brand Management: Businesses may assign trademarks between subsidiaries or parent companies for strategic brand management.
• Monetization of IP Assets: Trademark assignment allows companies to sell their trademark rights, potentially generating significant revenue.
• Dispute Resolution: In some cases, trademark assignment may be part of a settlement in trademark disputes.

Step-by-Step Procedure for Trademark Assignment in Bangladesh

The process of trademark assignment in Bangladesh involves several steps:

1. Drafting the Deed of Assignment: This document outlines the terms and conditions of the trademark transfer.
2. Signing and Legalization: The assignment deed must be signed by both parties and legalized by the Bangladesh embassy in the assignor's or assignee's country.
3. Verification of Legalization: The legalization is verified by the foreign ministry of Bangladesh.
4. Submission for Decision: The verified assignment is submitted to the Intellectual Property Office for validation.
5. Examination and Hearing: The IP office examines the assignment and may conduct a hearing if necessary.
6. Recordal Application: If approved, an application for recordal of the assignment is submitted.
7. Journal Publication: The approved assignment is published in the official journal.

For a more detailed breakdown of each step, including associated costs and timelines, contact us.

Requirements for Trademark Assignment

To complete a trademark assignment in Bangladesh, you'll need:

• A simple Power of Attorney (POA)
• A legalized deed of assignment

It's crucial to note that the assignment must be submitted within six months of its execution to ensure validity.

Costs Associated with Trademark Assignment

The costs for trademark assignment in Bangladesh can be broken down as follows:

• Official Fees and VAT: Approximately $97
• Professional Fees: Around $400 to $500
• Power of Attorney: $15
• Legalization: $150 to $200
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The total cost for assigning each mark is estimated at $600 to $650. However, these costs may vary depending on specific circumstances and additional services required. Contact us for details.

Timeline for Trademark Assignment

The entire process of trademark assignment in Bangladesh typically takes 3 to 12 months. This timeline can vary based on factors such as:

• The complexity of the assignment
• The workload of the DPDT
• Any objections or issues that arise during the process

It's advisable to start the process well before any critical business deadlines to account for potential delays.

Legal Considerations and Best Practices

When undertaking a trademark assignment in Bangladesh, consider the following:

• Due Diligence: Conduct thorough research on the trademark's status and any potential encumbrances.
• Clear Agreement Terms: Ensure the assignment agreement clearly outlines all terms, including the scope of rights being transferred and any limitations.
• Goodwill Consideration: Decide whether the assignment will include the goodwill associated with the trademark.
• Territorial Scope: Clearly define the geographical area where the assignment is effective.
• Quality Control: If licensing back the trademark, include provisions for quality control to maintain the trademark's integrity.
• Seek Legal Advice: To navigate the process effectively, consult with a local intellectual property lawyer familiar with Bangladesh's trademark laws.

Conclusion

Trademark assignment in Bangladesh is a complex but crucial process for businesses looking to transfer or acquire valuable brand assets. You can navigate this process more effectively by understanding the steps involved, requirements, costs, and legal considerations. Remember to start early, seek professional advice when needed, and carefully consider all aspects of the assignment to ensure a smooth and successful transfer of trademark rights.

Whether you're a local business expanding your brand portfolio or an international company entering the Bangladeshi market, proper trademark assignment is key to protecting and leveraging your intellectual property assets.

Have you gone through a trademark assignment process in Bangladesh? Share your experiences or questions in the comments below!

This article was written by J.A. Chaudhury Reagan, Advocate, Supreme Court of Bangladesh. All rights reserved.