What’s in a trademark?

Famous American artist Larry Harvey once said, “We don't use the trademark to market anything. It's our identity.” Indeed, a trademark is an identity of a business. It can be any name, word, symbol, slogan, or device which identifies and distinguishes a product from others in the market.

While it is not legally mandatory, it is wise to register the name of your business as a trademark in order for the proprietor to have legal recourse and prevent another business from using the same or similar trademark.

When most people think of trademarks, they think of brand names like Pepsi, Apple or KFC. Trademarks help businesses and the public by making the differences between your products and others’ clear.

Anyone can start a soda company, but only one soda can be called Pepsi. There are many fast food chains, but only one of them is called KFC. However, just because a company has a trademark for one type of product does not mean other companies cannot use the same or similar name for a different type of product.

For example, a steel company can use “KFC Steel” as a trademark for a steel product of the company and it is unlikely that a consumer will be confused or will fail to distinguish the products of KFC steel from those of KFC food.

This is where classification of goods and services in relation to trademark comes into play. There are 45 classes of goods and services, under which a trademark can be registered. The classes are set by the NICE classification of trademarks, which was established by the NICE Agreement in 1957 and is recognised all over the world.

In Bangladesh, the legal provisions on trademarks are primarily provided in the Trademarks Act, 2009 (as amended from time to time), and the Department of Patents, Designs and Trademarks (trademark wing) (DPDT) deals with registration of trademarks.

In our practice in recent years, we have found that the value of trademark protection is gaining momentum, which has resulted in an increased number of trademark filings at the trademark office. Our law firms file on average around 15-20 trademark applications each month and around 200 trademark applications each year.

However, the process of trademark registration has become slower due to lack of employees at the trademark office. As such, the trademark office needs to be more proactive in order to expedite the trademark registration process, encourage more trademark applications filing and enforce intellectual property rights of the proprietors in Bangladesh.

In Bangladesh, trademark registration can take around 2-4 years, subject to any objection on the trademark application. However, once a trademark application is filed in respect of a logo/mark, the applicant will get priority over any subsequent applicant who wishes to register the same or similar logo/mark. In other words, a subsequent applicant will not be able to register a logo/mark if the same or similar logo/mark is already registered or applied for registration by a prior applicant. 

The trademark application goes through many stages and hence takes time. The process of a trademark registration is set out in our experience below:

A trademark registration can be renewed in Bangladesh from time to time for an unlimited period of time upon payment of the renewal fees, failing which the mark becomes liable to be removed from the register on account of non-renewal. Each renewal term is for a period of 10 years. Application for the renewal of a trademark can be made at the trademark office, not more than six (6) months before the expiration of the last renewal. A certificate of renewal is issued by the registrar as evidence of payment of the renewal fee due during that period.

Any establishment, irrespective of their size, should consider getting its trademark registered in order to have legal recourse and prevent another business from using the same or similar trademark. After all, a trademark is an intellectual property which should be valued by the proprietor first before it can be valued by the society as a whole.

Jarif Ahmed is a barrister-at-law at Lincoln's Inn, advocate and associate at The Legal Circle.