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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 V

ASSIGNMENT AND TRANSMISSION

Power of registered proprietor to assign and give receipts
28. The person for the time being entered in the register as proprietor of a trade mark 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 trade mark, and to give effectual receipts for any consideration for such assignment.
Assignability of registered trade marks
29. Notwithstanding anything in any other law to the contrary, a registered trade mark shall, subject to the provisions of this Chapter, be assignable and transmissible whether in connection with the goodwill of a business or not, and in respect either of all of the goods in respect of which it is registered or of some only of those goods.
Assignability of unregistered trade marks
30. An unregistered trade mark shall be assignable and transmissible whether in connection with the goodwill of a business or not:
 
 
 
 
Provided that, except in connection with the goodwill of a business, assignment or transmission shall be permissible only if¬-
 
 
 
 
(a) at the time of assignment or transmission of the un¬registered trade mark it is used in the same business as a registered trade mark, and
 
 
 
 
(b) the registered trade mark is assigned or transmitted at the same time and to the same person as the un¬registered trade mark, and
 
 
 
 
(c) the unregistered trade mark relates to goods in respect of which the registered trade mark is assigned or transmitted.
Restrictions on assignment or transmission where multiple exclusive rights would be created
31. (1) Notwithstanding anything in sections 29 and 30, a trade mark 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 than one of the persons concerned to the use, in relation to the same goods or
 
 
description of goods, of trade marks nearly resembling each other or of identical trade marks, if, having regard to the si¬milarity of the goods and of the trade marks, the use of the trade marks in exercise of those rights would be likely to deceive or cause confusion:
 
 
 
 
Provided that an assignment or transmission shall not be deemed to be invalid under this sub section if the exclusive rights subsisting as a result thereof in the persons concerned respectively are, having regard to limitations imposed thereon, such as not to be exercisable by two or more of those persons in relation to goods to be sold, or otherwise traded in, within Bangladesh (otherwise than for export therefrom), or in relation to goods to be exported to the same market outside Bangladesh.
 
 
 
 
(2) The proprietor of a registered trade mark who proposes to assign it may submit to the Registrar in the prescribed manner a statement of case setting out the circumstances and the Registrar may issue to him a certificate stating whether, having regard to the similarity of the goods and of the trade marks referred to in the case, the proposed assignment would or would not be invalid under sub section (1), and a certificate so issued 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 the assignment in so far as such validity or invalidity depends upon the facts set out in the case, but, as regards a certificate in favour of validity, only if application for the registration under section 35 of the title of the person becoming entitled is made within six months from the date on which the certificate is issued.
Restrictions on assignment or transmission when exclusive rights would be created in different parts of Bangladesh
32. Notwithstanding anything in sections 29 and 30, a trade mark 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, an exclusive right in one of the persons concerned to the use of the trade mark limited to use in relation to goods to be sold, or otherwise traded in, in any place in Bangladesh and an exclusive right in another of these persons to the use of a trade mark nearly resembling the first mentioned trade mark or of an identical trade mark in relation to the same goods or description of goods limited to use in relation to goods to be sold, or otherwise traded in, in any other place in Bangladesh:
 
 
Provided that in any such case, on application in the prescribed manner by the proprietor of a trade mark who proposes to assign it, or by a person who claims that a registered trade mark has been transmitted to him or to a predecessor in title of his since the commencement of this Act, the Registrar, if he is satisfied that in all the circumstances the use of the trade mark in exercise of the said rights would not be contrary to the public interest, may approve the assignment or transmission, and an assignment or transmission so approved shall not, unless it is shown that the approval was obtained by fraud or misrepresentation, be deemed to be invalid under this section or section 31 if application for the registration under section 35 of the title of the person becoming entitled is made within six months from the date on which the approval is given or, in the case of a transmission, was made before that date.
Conditions for assignment otherwise than in connection with the goodwill of a business
33. Where an assignment in respect of any goods of a trade mark which is at the time of the assignment used in a business in those goods, is made after the commencement of this Act otherwise than in connection with the goodwill of that business, the assignment shall not take effect unless the assignee, not later than the expiration of six months from the date on which the assignment is made or within such extended period, if any, as the Registrar may allow, applies to the Registrar for directions with respect to the advertisement of the assignment, and advertises it in such form and manner and within such period as the Registrar may direct.
Conditions for assignment and transmission of certification trade marks and associated trade marks
34. (1) A certification trade mark shall not be assignable or transmissible otherwise than with the consent of the Government, for which application shall be made in writing in the prescribed manner through the Registrar.
 
 
 
 
(2) Associated trade marks shall be assignable and transmissible only as a whole and not separately.
Registration of assignments and transmissions
35. (1) Where a person becomes entitled by assignment or transmission to a registered trade mark, 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 title to his satisfaction, register him as the proprietor of the trade mark in respect of the goods 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.
 
 
(2) Except for the purposes of an appeal against a decision of the Registrar under sub section (1) or of an application under section 46, a document or instrument in respect of which no entry has been made in the register in accordance with sub-section (1) shall not be admitted in evidence before any tribunal in proof of the title to a trade mark unless the tribunal otherwise directs.

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Ministry of Law, Justice and Parliamentary Affairs