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The Trade Marks Act, 1940

( ACT NO. V OF 1940 )

এই আইনটি ট্রেডমার্ক আইন, ২০০৯ (২০০৯ সনের ১৯ নং আইন) দ্বারা রহিত করা হইয়াছে।

Chapter II

THE REGISTER AND CONDITIONS FOR REGISTRATION

The register of trade marks
4. 1[(1) For the purposes of this Act, there shall be established a Trade Marks Registry which shall be the Trade Marks Registry Wing referred to in sub-section (3) of section 55 of the Patents And Designs Act, 1911 (II of 1911); and a record called the Register of Trade Marks, in this Act referred to as the register, shall be kept thereat wherein shall be entered all registered trade marks with the names, addresses anddescriptions of their proprietors, notifications of assignments and transmissions, the names, addresses and descriptions of registered users, disclaimers, conditions, limitations, and such other matters relating to registered trade marks as may be prescribed, but there shall not be entered in the register any notice of any trust express, implied or constructive, nor shall any such notice be receivable by the Registrar.]
 
 
 
 
2[(2) There shall be a Registrar of Trade Marks to be called the Registrar for the purposes of this Act, and the Registrar of Patents, Designs and Trade Marks appointed under sub-section (1) of section 55 of the Patents And Designs Act, 1911 (II of 1911) shall be the Registrar; and subject to the superintendence and direction of the Government, the register shall be kept under the control and management of him.]
 
 
 
 
(2A) and (2B) [Omitted by section 2 of the Trade Marks (Amendment) Act, 2003 (Act No. XIV of 2003).]
 
 
 
 
(3) The register shall at all convenient times be open to the inspection of the public, subject to such conditions and restrictions as may be prescribed.
 
 
 
 
(4) [Omitted by section 2 of the Trade Marks (Amendment) Act, 2003 (Act No. XIV of 2003).]
[Omitted.]
4A. [Branch of Trade Marks Registry.- Inserted by section 2A of the Trade Marks (Amendment) Act, 1943 (Act No. XV of 1943) and subsequently omitted by section 3 of the Trade Marks (Amendment) Act, 2003 (Act No. XIV of 2003).]
Registration to be in respect of particular goods
5. (1) A trade mark may be registered only in respect of particular goods or classes of goods.
 
 
 
 
(2) Any question arising as to the class within which any goods fall shall be determined by the Registrar whose decision in the matter shall be final.
Distinctiveness requisite for registration
6. (1) A trade mark shall not be registered unless it contains or consists of at least one of the following essential particulars, namely:-
 
 
 
 
(a) the name of a company, individual, or firm, represented in a special or particular manner;
 
 
 
 
(b) the signature of the applicant for registration or some predecessor in his business;
 
 
 
 
(c) one or more invented words;
 
 
 
 
(d) one or more words having no direct reference to the character or quality of the goods, and not being according to its ordinary signification, a geographical name or surname or the name of a sect, caste or tribe in Bangladesh;
 
 
 
 
(e) any other distinctive mark, provided that a name, signature, or any word, other than such as fall within the descriptions in the above clauses, shall not be registrable except upon evidence of its distinctiveness.
 
 
 
 
(2) For the purposes of this section, the expression “distinctive” means adapted, in relation to the goods in respect of which a trade mark is proposed to be registered, to distinguish goods with which the proprietor of the trade mark is or may be con┬¼nected in the course of trade from goods in the case of which no such connection subsists, either generally or, where the trade mark is proposed to be registered subject to limitations, in rela┬¼tion to use within the extent of the registration.
 
 
 
 
(3) In determining whether a trade mark is adapted to distinguish as aforesaid, the tribunal may have regard to the extent to which¬-
 
 
 
 
(a) the trade mark is inherently so adapted to distinguish, and
 
 
 
 
(b) by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact so adapted to distinguish:
 
 
Provided that in the case of a trade mark which has been con¬tinuously used (either by the applicant for registration or by some predecessor in his business, and either in its original form or with additions or alterations not substantially affecting its identity) in relation to the same goods as those in relation to which registra¬tion is applied for, during a period from a date prior to the 25th day of February, 1937, to the date of application for registration, the Registrar shall not refuse registration by reason only of the fact that the trade mark is not adapted to distinguish as afore¬said, and may accept evidence of acquired distinctiveness as entitling the trade mark to registration.
Limitation as to colour
7. (1) A trade mark may be limited wholly or in part to one or more specified colours, and any such limitation shall be taken into consideration by any tribunal having to decide on the distinctive character of the trade mark.
 
 
 
 
(2) So far as a trade mark is registered without limitation of colour it shall be deemed to be registered for all colours.
Prohibition of registration of certain matter
8. No trade mark nor part of a trade mark shall be registered which consists of, or contains, any scandalous design, or any matter the use of which would-
 
 
 
 
(a) by reason of its being likely to deceive or to cause confusion or otherwise, be disentitled to protection in a Court of justice; or
 
 
 
 
(b) be likely to hurt the religious susceptibilities of any class of the citizens of Bangladesh; or
 
 
 
 
(c) be contrary to any law for the time being in force or to morality.
Use of names of chemical elements barred
9. No word which is the commonly used and accepted name of any single chemical element or single chemical compound (as distinguished from a mixture) shall be registered as a trade mark in respect of a chemical substance or preparation, and any such registration shall, notwithstanding anything in section 24, be deemed for the purposes of section 46 to be an entry made in the register without sufficient cause or an entry wrongly remaining on the register, as the circumstances may require:
 
 
Provided that this section shall not apply to a word which is used to denote only a brand or make of the element or compound as made by the proprietor or a registered user of the trade mark, as distinguished from the element or compound as made by others, and in association with a suitable name or description open to the public use.
Prohibition of registration of identical or similar trade mark
10. (1) Save as provided in sub section (2), no trade mark shall be registered in respect of any goods or description of goods which is identical with a trade mark belonging to a different proprietor and 3[already on the register] in respect of the same goods or description of goods or which so nearly resembles such trade mark as to be likely to deceive or cause confusion.
 
 
 
 
(2) In case of honest concurrent use or of other special circumstances which, in the opinion of the Registrar, make it proper so to do he may permit the registration by more than one proprietor of trade marks which are identical or nearly resemble each other in respect of the same goods or description of goods, subject to such conditions and limitations, if any, as the Registrar may think fit to impose.
 
 
 
 
(3) Where separate applications are made by different persons to be registered as proprietors respectively of trade marks which are identical or nearly resemble each other, in respect of the same goods or description of goods, the Registrar may refuse to register any of them until their rights have been determined by a competent Court.
Registration of parts of trade marks and of trade marks as a series
11. (1) Where the proprietor of a trade mark claims to be entitled to the exclusive use of any part thereof separately, he may apply to register the whole and the part as separate trade marks.
 
 
 
 
(2) Each such separate trade mark shall satisfy all the conditions applying to, and have all the incidents of, an independent trade mark.
 
 
(3) Where a person claiming to be the proprietor of several trade marks in respect of the same goods or description of goods which, while resembling each other in the material particulars thereof, yet differ in respect of-
 
 
 
 
(a) statements of the goods in relation to which they are respectively used or proposed to be used; or
 
 
 
 
(b) statements of number, price, quality, or names of places; or
 
 
 
 
(c) other matter of a non-distinctive character which does not substantially affect the identity of the trade mark; or
 
 
 
 
(d) colour;
 
 
 
 
seeks to register those trade marks, they may be registered as a series in one registration.
Associated trade marks
12. (1) Where a trade mark which is registered, or is the subject of an application for registration, in respect of any goods is identical with another trade mark which is registered, or is the subject of an application for registration, in the name of the same proprietor in respect of the same goods or description of goods, or so nearly resembles it as to be likely to deceive or cause confusion if used by a person other than the proprietor, the Registrar may at any time require that the trade marks shall be entered on the register as associated trade marks.
 
 
 
 
(2) Where a trade mark and any part thereof are, in accordance with the provisions of sub-section (1) of section 11, registered as separate trade marks in the name of the same proprietor, they shall be deemed to be, and shall be registered as, associated trade marks.
 
 
 
 
(3) All trade marks registered in accordance with the provisions of sub section (3) of section 11 as a series in one registration shall be deemed to be, and shall be registered as, associated trade marks.
 
 
 
 
(4) On application made in the prescribed manner by the registered proprietor of two or more trade marks registered as associated trade marks, the Registrar may dissolve the association as respects any of them if he is satisfied that there
 
 
would be no likelihood of deception or confusion being caused if that trade mark were used by any other person in relation to any of the goods in respect of which it is registered, and may amend the register accordingly.
Registration subject to disclaimer
13. If a trade mark contains¬-
 
 
 
 
(a) any part not separately registered as a trade mark in the name of the proprietor, or for the separate registration of which no application has been made, or
 
 
 
 
(b) any matter common to the trade, or otherwise of a non-distinctive character,
 
 
 
 
the tribunal, in deciding whether the trade mark shall be entered or shall remain on the register, may require, as a condition of its being on the register, that the proprietor shall either disclaim any right to the exclusive use of such part or of all or any portion of such matter, as the case may be, to the exclusive use of which the tribunal holds him not to be entitled, or make such other disclaimer as the tribunal may consider necessary for the purpose of defining the rights of the proprietor under the registration:
 
 
 
 
Provided that no disclaimer shall affect any rights of the proprietor of a trade mark except such as arise out of the registration of the trade mark in respect of which the disclaimer is made.
 
 

  • 1
    Sub-section (1) was substituted by section 2 of the Trade Marks (Amendment) Act, 2003 (Act No. XIV of 2003)
  • 2
    Sub-section (2) was substituted by section 2 of the Trade Marks (Amendment) Act, 2003 (Act No. XIV of 2003)
  • 3
    The words “already on the register” were substituted for the words, figure and letter “either already on the register or already regis¬tered in any Acceding State or a non Acceding State to which section 82A for the time being applies” by section 3 and the Second Schedule of the Bangladesh Laws (Revision And Declaration) Act, 1973 (Act No. VIII of 1973)
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