Trademark ASSIGNMENT (Recordal Change) in Bangladesh

The Registered proprietor of a Trade mark has power to assign the mark and a registered Trade Mark is assignable and transmissible with or without goodwill of the business in respect of all or some of the goods for which it is registered. Where a person becomes entitled by assignment or transmission to a registered trademark, he shall make application to the Registrar (in the prescribed manner) to register his title and the Registrar shall, on receipt of the application and on proof of title to his satisfaction, register the Assignee as the proprietor of the trademark.

Form TM-24 or Form TM-23 (Joint Request) -An application to register the title of a person who becomes entitled by assignment or transmission to a registered Trademark shall be made on Form TM-24 or TM -23 according it is made by such person alone or conjointly with the registered proprietor.


Requirements for the assignment
(1) Simple POA, No notarization or Legalization is required.
(2)  Assignment Deed should be Notarization as well as certified by the Embassy of Bangladesh of the assignor/assignee country. Then send us the original copy of the same. The Assignment Deed needs to be Legalized from the foreign ministry of Bangladesh 

Cost: Contact Us


Relevant Laws and Acts of
ASSIGNMENT & TRANSMISSION

Section 33. Power of registered proprietor to assign and give receipts-
The person for the time being entered in the Register as proprietor of a trademark shall, subject to the provisions of this Act and to any rights appearing from the Register to be vested in any other person, have power to assign the trademark, and to give effectual receipts for any consideration for such assignment. 

34. Assignability and transmissibility of registered trademarks-
Not with-standing anything in any other law to the contrary, a registered trademark shall, subject to the provisions of this Chapter, be assignable and transmissible whether with or without the goodwill of the business concerned, and in respect either of all of the goods of services in respect of which it is registered or of some only of those goods or services.

35. Assignability and transmissibility of unregistered trademarks?
(1) An unregistered trademark shall not be assignable or transmissible except along with the goodwill of the business concerned
(2) Notwithstanding anything contained in sub-section (1) an unregistered trademark may be assigned or transmitted otherwise than along with the goodwill of the business concerned if?
(a) at the time of assignment or transmission of the unregistered trademark, it is used in the same business as a registered trademark;
(b) the registered trademark is assigned or transmitted at the same time and to the same person as the unregistered trademark; and
(c) the unregistered trademark relates to goods or services in respect of which the registered trademark is assigned or transmitted. 

36. Restrictions on assignment or transmission where multiple exclusive rights would be created.?
(1) Notwithstanding anything contained in sections 34 and 35 where as a result of the assignment or transmission there would subsist, whether under this Act or any other law, exclusive rights in more than one of the persons concerned to the use, in relation to the same goods or and the trademarks be nearly same or resemble each other and for this reason people may be deceived or confused, then a trademark shall not be assignable or transmissible :

Provided that an assignment or transmission shall not be deemed to be invalid if the persons assigned to sell the goods or services of a trademark within Bangladesh or to export the goods or services to the same market outside Bangladesh can not exercise their rights for the limitations imposed upon the exclusive rights.

(2) The proprietor of a registered trademark who proposes to assign it may submit to the Registrar in the prescribed manner a statement of cases stating out the circumstances and the Registrar may issue to him a certificate setting whether, having regard to the similarity of the goods or services, and of the trademarks referred to in the case, the proposed assignment would or would not be invalid under sub-section (1) of this section.

(3) A certificate issued under sub-section (2) shall, subject to appeal and unless it is shown that the certificate was obtained by fraud or misrepresentation, be conclusive as to the validity or invalidity under sub-section (1) of this section, of the assignment in so far as such validity or invalidity depends upon the facts set out in the case :

Provided that a certificate in favour of validity shall not be treated as conclusive, if application for the registration under section 40 if the title of the person becoming entitled is not made within 6(six) months from the date on which the certificate is issued. 

37. Restrictions on assignment or transmission when exclusive rights would be created in different parts of Bangladesh.?
(1) Notwithstanding anything in sections 34 and 36, a trademark shall not be assignable or transmissible in a case in which as a result of the assignment or transmission there would in the circumstances subsist, whether under this Act or any other law, exclusive rights in more then one of the persons concerned to the use, in relation to goods or services, as the case may be, of trademarks to be sold, or otherwise traded in, in any place in Bangladesh and an exclusive right in another or these persons to the use of a trademark nearly resembling the first mentioned trademark or of an identical trademark in relation to the same goods or description of goods or services or description of services, as the case may be, limited to use in relation to goods or services, as the case may be, to be the sold, or otherwise traded in, in any other place in Bangladesh.

(2) In case of an application in the prescribed manner where the proprietor of a trademark who proposes to assign it, or a person who claims that a registered trademark has been transmitted to him or to a predecessor-in-title of his since the commencement of this Act, the Registrar is satisfied that in all the circumstances the assignment or transmission in exercise of the said rights under sub-section (1) of the trademark would not be contrary to the public interest, may, approve the assignment or transmission, and assignment or transmission so approved shall not, be deemed to be invalid under this Section or section 36 of this Act.

(3) In a case where an assignment or transmission has not been declared invalid under sub-section (2) and if application for the registration under section 40 of this Act of the title of the person becoming entitled is made within 6 (six) months from the date on which the approval is given, and it is shown that the approval was not obtained by fraud or misrepresentation, the assignment or transmission shall not be deemed to be invalid under this Section or section 36 of this Act. 

38. Conditions for assignment otherwise than in connection with the goodwill of a business.?
(1) Where an assignment of a trademark, whether registered or unregistered, is made otherwise than in connection with the goodwill of the business in which the mark has been or is used, the assignment shall not take effect unless?
(a) the assignee, not later than the expiration of 6 (six) months from the date on which the assignment is made or within such extended period, if any, not exceeding 3 (three) months in the aggregate, as the Registrar may allow, applies to the Registrar for directions with respect to the advertisement of the assignment; and
(b) advertises it in such from and manner and within such period as the Registrar may direct.

(2) For the purposes of this section an assignment of a trademark of the following description shall not be deemed to be an assignment made otherwise than in connection with the goodwill of the business in which the mark is used, namely :?
(a) an assignment of a trademark in respect of only of some of the goods or services, as the case may be, for which the trademark is registered accompanied by the transfer of the goodwill of the business concerned in those goods or services only; or
(b) an assignment of a trademark which is used in relation to goods or services, as the case may be, exported from Bangladesh if the assignment is accompanied by the transfer of the goodwill of the export business only. 

39. Conditions for assignment and transmission of certification trademarks and associated trademarks.?
(1) A certification trademark may be assignable or transmissible

(a) with the prior consent of the Government in that behalf; and
(b) if application made in the prescribed manner through the Registrar.

(2) Associated trademarks shall be assignable and transmissible only as a whole and not separately, but, subject to the provisions of this Act, they shall, for all other purposes, be deemed to have been registered as separate trademarks.

40. Registration of assignments and transmissions.?
(1) where a person becomes entitled by assignment or transmission to a registered trademark, he shall apply in the prescribed manner to the Registrar to register his title, and the Registrar shall on receipt of the application and on proof of the title to his satisfaction, register him as the proprietor of the trademark in respect of the goods or services in respect of which the assignment or transmission has effect and shall cause particulars of the assignment or transmission to be entered on the Register:

Provided that where the validity of an assignment or transmission is in dispute between the parties, the Registrar may refuse to register the assignment or transmission until such dispute is settled by a competent court.

(2) Except for the purposes of an application before the Registrar under sub-section (1) of this section or an appeal from an order thereon, or an application under section 51 of this Act or an appeal from an order thereon, a document or instrument in respect of which no entry has been made in the Register in accordance with sub-section

(1) of this section, shall not be admitted in evidence by the Registrar or any Court in proof of title to the trademark by assignment or transmission unless the Registrar or the Court, as the case may be, otherwise directs. 


Contact Person
J.A. Chaudhury Reagan

Advocate, Supreme Court of Bangladesh
+8801613336333
+8801711970318
info@supremeip.com
advreagan@gmail.com
WeChat ID: SUPREMEiP

Contact Person
J.A. Chaudhury Reagan

Advocate, Supreme Court of Bangladesh
+8801613336333
+8801711970318
info@supremeip.com
advreagan@gmail.com
WeChat ID: SUPREMEiP