Trademark Opposition in Bangladesh (Cost & Procedure)

Upon publication of a trademark in the Trademarks Journal, any person can file an opposition against registration of the said trademark in Bangladesh by filing a notice of opposition within the prescribed period of 2 months from the date the Trademarks Journal is made available to the public. The time period to file the notice of opposition can be extended by a maximum period of 3 months upon filing a specified request for extension of time thrice for a period of one month, each along with the prescribed fee. A trademark application can be opposed in Bangladesh on grounds given under Sections 8, 9 and 10 of the Trademarks Act 2009.

Once an opposition is filed against a trademark in Bangladesh a copy of notice of opposition so filed is served to the applicant by the Trademarks Registry and the applicant is then required to file a counterstatement within 2 months of receipt of the notice forwarded by the Registry, failing which the application shall be treated as abandoned.

Thereafter, the Registrar will request evidence in writing from both parties. If the dispute is not settled by the parties, then hearing is fixed in the matter.

The Registrar decides the case made in the opposition proceedings. In the absence of an opposition, a trademark is registered, and the certificate of registration is issued.


Opposition procedure of a trademark in Bangladesh

 
Stage-1: Notice of opposition (TM-05 Form) 

Any person can file an opposition against registration of the said trademark in Bangladesh by filing a notice of opposition within the prescribed period of 2 months from the date the Trademarks Journal is made available to the public.

 
Stage-2: Counterstatement (TM-06 Form)

Once an opposition is filed against a trademark in Bangladesh a copy of notice of opposition so filed is served to the applicant by the Trademarks Registry and the applicant is then required to file a counterstatement within 2 months of receipt of the notice forwarded by the Registry, failing which the application shall be treated as abandoned.

 
Stage-3: Evidence

The Registrar will request evidence in writing from both parties. If the dispute is not settled by the parties, then hearing is fixed in the matter.

 

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.

 

Evidence in support of 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.

 

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.

 

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.

 

Exhibits:

Where there are exhibits to affidavits filed in an 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

 

 
Stage-4: Hearing and Decision

Upon completion of the evidence the Registrar shall give notice to the parties of a date he will hear the arguments in the case. Such appointment shall be for a date at least one month after the date of the notice, unless the parties consent to a shorter notice. Within in fourteen days from the receipt of the notice any party who intends to appear shall so notify the Registrar on from TM-7. Any party who does not desiring to be heard and the Registrar may Act accordingly. If the opposition is decided in favor of the applicant, then the application will be qualified for registration under the provision of section 20 of the Act, 2009 and thereafter the applicant is to submit registration fees to obtain the registration certificate.

 



Relevant Laws and Acts for the opposition of trademark in Bangladesh.

Section 18. Opposition to registration.
(1) Any person may, within 2(two) months from the date of 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 the receipt of such counter-statement, serve a copy thereof in the prescribed manner on the person giving notice of opposition.

(4) Any evidence upon which the opponent and the applicant may rely shall be submitted in the prescribed manner and within the prescribed time to the Registrar, and the Registrar shall give an opportunity to 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 limitations.

(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 relating activities for registration shall be concluded within 120 (one hundred and twenty) working days after giving notice under sub-section (1). 


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