Print View

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 VI

USE OF TRADE MARKS AND REGISTERED USERS

Proposed use of trade mark by company to be formed
36. (1) No application for the registration of a trademark in respect of any goods shall be refused, nor shall permission for such registration be withheld, on the ground only that it appears that the applicant does not use or propose to use the trade mark, if the Registrar is satisfied that a company is about to be formed and registered under the Companies Act, 1913 and that the applicant intends to assign the trade mark to that company with a view to the use thereof in relation to those goods by the company.
 
 
 
 
(2) The tribunal may, in a case to which sub section (1) applies, require the applicant to give security for the costs of any proceed¬ings relative to any opposition or appeal, and in default of such security being duly given may treat the application as abandoned.
 
 
 
 
(3) Where in a case to which sub section (1) applies, a trade mark in respect of any goods is registered in the name of an applicant who relies on intention to assign to a company, then, unless within such period as may be prescribed, or within such further period not exceeding six months as the Registrar may, on application being made to him in the prescribed manner, allow, the company has been registered as the proprietor of the trade mark in respect of those goods, the registration shall cease to have effect in respect thereof at the expiration of that period, and the Registrar shall amend the register accordingly.
Removal from register and imposition of limitations on ground of non use
37. (1) Subject to the provisions of section 38, a registered trade mark may be taken off the register in respect of any of the goods in respect of which it is registered on application in the prescribed manner by any person aggrieved to the High Court Division or to the Registrar, on the ground either
 
 
 
 
(a) that the trade mark was registered without any bona fide intention on the part of the applicant for regis¬tration that it should be used in relation to those goods by him or, in
 
 
a case to which the provisions of section 36 apply, by the company concerned, and that there has in fact been no bona fide use of the trade mark in relation to those goods by any proprietor thereof for the time being up to a date one month before the date of the application; or
 
 
 
 
(b) that up to a date one month before the date of the application, a continuous period of five years or longer elapsed during which the trade mark was registered and during which there was no bona fide use thereof in relation to those goods by any proprietor thereof for the time being:
 
 
 
 
Provided that, except where the applicant has been permitted under sub section (2) of section 10 to register an identical or nearly resembling trade mark in respect of the goods in question or where the tribunal is of opinion that he might properly be permitted so to register such a trade mark, the tribunal may refuse an application made under clause (a) or clause (b) in relation to any goods, if it is shown that there has been, before the relevant date or during the relevant period, as the case may be, bona fide use of the trade mark by any proprietor thereof for the time being in relation to goods of the same description, being goods in respect of which the trade mark is registered.
 
 
 
 
(2) Where in relation to any goods in respect of which a trade mark is registered-
 
 
 
 
(a) the circumstances referred to in clause (b) of sub-section (1) are shown to exist so far as regards non-use of the trade mark in relation to goods to be sold, or otherwise traded in, in a particular place in Bangladesh (otherwise than for export from Bangladesh), or in relation to goods to be exported to a particular market outside Bangladesh; and
 
 
 
 
(b) a person has been permitted under sub section (2) of section 10 to register an identical or nearly resembling trade mark in respect of those goods under a registration extending to use in relation to goods to be so sold, or otherwise traded in, or in relation to goods to be so exported, or the tribunal is of opinion that he might properly be permitted so to register such a trade mark,
 
 
on application by that person in the prescribed manner to the High Court Division or to the Registrar, the tribunal may impose on the registration of the first mentioned trade mark such limitations as it thinks proper for securing that that registration shall cease to extend to such use.
 
 
 
 
(3) An applicant shall not be entitled to rely for the purpose of clause (b) of sub section (1) or of sub section (2) on any non-use of a trade mark which is shown to have been due to special circumstances in the trade and not to any intention to abandon or not to use the trade mark in relation to the goods to which the application relates.
Defensive registration of well known trade marks
38. (1) Where a trade mark consisting of any invented word has become so well known as respects any goods in relation to which it is registered and has been used, that the use thereof in relation to other goods would be likely to be taken as indicating a connection in the course of trade between those goods and a person entitled to use the trade mark in relation to the first-mentioned goods, then, notwithstanding that the proprietor registered in respect of the first mentioned goods does not use or propose to use the trade mark in relation to those other goods and notwithstanding anything in section 37, the trade mark may on application in the prescribed manner by such proprietor be registered in his name in respect of those other goods as a defensive trade mark and, while so registered, shall not be liable to be taken off the register in respect of those goods under the said section.
 
 
 
 
(2) The registered proprietor of a trade mark may apply for the registration thereof in respect of any goods as a defensive trade mark notwithstanding that it is already registered in his name in respect of those goods otherwise than as a defensive trade mark, or may apply for the registration thereof in respect of any goods otherwise than as a defensive trade mark notwithstand¬ing that it is already registered in his name in respect of those goods as a defensive trade mark, in lieu in each case of the existing registration.
 
 
 
 
(3) A trade mark registered as a defensive trade mark and that trade mark as otherwise registered in the name of the same proprietor shall, notwithstanding that the respective registrations are in respect of different goods, be deemed to be, and shall be registered as, associated trade marks.
 
 
(4) On application in the prescribed manner by any person aggrieved to the High Court Division or to the Registrar, the registration of a trade mark as a defensive trade mark may be cancelled on the ground that the requirements of sub section (1) are no longer satisfied in respect of any goods in relation to which the trade mark is registered in the name of the same proprietor otherwise than as a defensive trade mark, or may be cancelled as respects any goods in relation to which it is registered as a defensive trade mark on the ground that there is no longer any likelihood that the use of the trade mark in relation to those goods would be taken as giving the indication mentioned in sub section (1).
 
 
 
 
(5) The Registrar may at any time cancel the registration as a defensive trade mark of a trade mark of which there is no longer any registration in the name of the same proprietor otherwise than as a defensive trade mark.
 
 
 
 
(6) Except as otherwise expressly provided in this section, the provisions of this Act shall apply in respect of the registration of trade marks as defensive trade marks and of trade marks so registered as they apply in other cases.
Registered users
39. (1) A person other than the proprietor of a trade mark may be registered as a registered user thereof in respect of all or any of the goods in respect of which it is registered (otherwise than as a defensive trade mark) and either with or without conditions or restrictions.
 
 
 
 
(2) The permitted use of a trade mark shall be deemed to be used by the proprietor thereof, and shall be deemed not to be used by a person other than the proprietor, for any purpose for which such use is material under this Act or any other law.
Power of registered user to take proceedings against infringement
40. (1) Subject to any agreement subsisting between the parties, a registered user of a trade mark shall be entitled to call upon the proprietor thereof to take proceedings to prevent infringement thereof, and if the proprietor refuses or neglects to do so within three months after being so called upon, the registered user may institute proceedings for infringement in his own name as if he were the proprietor, making the proprietor a defendant.
 
 
(2) Notwithstanding anything contained in any other law, a proprietor so added as defendant shall not be liable for any costs unless he enters an appearance and takes part in the proceedings.
Application for registration as registered user
41. (1) Where it is proposed that a person should be registered as a registered user of a trade mark, the proprietor and the proposed registered user shall make application in writing to the Registrar in the prescribed manner accompanied by an affidavit made by the proprietor, or by some person authorised to the satisfaction of the Registrar to act on his behalf,-
 
 
 
 
(a) giving particulars of the relationship, existing or proposed, between the proprietor and the proposed regis¬tered user, including particulars showing the degree of control by the proprietor over the permitted use which their relationship will confer and whether it is a term of their relationship that the proposed regis¬tered user shall be the sole registered user or that there shall be any other restriction as to persons for whose registration as registered users application may be made;
 
 
 
 
(b) stating the goods in respect of which registration is proposed;
 
 
 
 
(c) stating any conditions or restrictions proposed with respect to the characteristics of the goods, to the mode or place of permitted use, or to any other matter;
 
 
 
 
(d) stating whether the permitted use is to be for a period or without limit of period, and, if for a period, the duration thereof;
 
 
 
 
and by such further documents, information or evidence as may be required by the Registrar or as may be prescribed.
 
 
 
 
(2) When the requirements of sub section (1) have been com¬plied with, if the Registrar is satisfied that in all the circumstances the use of the trade mark in respect of the proposed goods or any of them by the proposed registered user subject to any conditions or restrictions which the Registrar may think proper, would not be contrary to the public interest, the Registrar may register, subject as aforesaid, the proposed registered user as a registered user in respect of the goods as to which he is so satisfied.
 
 
(3) The Registrar shall refuse an application under this section if it appears to him that the grant thereof would tend to facilitate trafficking in a trade mark.
 
 
 
 
(4) The Registrar shall, if so requested by an applicant, take steps for securing that information given for the purposes of an application under this section (other than matter entered in the register) is not disclosed to rivals in trade.
 
 
 
 
(5) The Registrar shall issue notice in the prescribed manner¬-
 
 
 
 
(a) of the registration of a person as a registered user, to any other registered user of the trade mark;
 
 
 
 
(b) of an application under section 42, to the registered proprietor, and each registered user (not being the applicant) of the trade mark.
Power to Registrar to vary or cancel registration as registered user
42. Without prejudice to the provisions of section 46, the registration of a person as a registered user-
 
 
 
 
(a) may be varied by the Registrar as regards the goods in respect of which, or any conditions or restrictions subject to which, it has effect, on the application in writing in the prescribed manner of the registered proprietor of the trade mark;
 
 
 
 
(b) may be cancelled by the Registrar on the application in writing in the prescribed manner of the registered proprietor or of the registered user or of any other registered user of the trade mark;
 
 
 
 
(c) may be cancelled by the Registrar on the application in writing in the prescribed manner of any person on any of the following grounds, namely:-
 
 
 
 
(i) that the registered user has used the trade mark otherwise than by way of the permitted use, or in such a way as to cause or to be likely to cause, deception or confusion;
 
 
 
 
(ii) that the proprietor or the registered user misrepresented, or failed to disclose, some fact material to the application for the registration, or that the circumstances have materially changed since the date of the registration;
 
 
(iii) that the registration ought not to have been effected having regard to rights vested in the applicant by virtue of a contract in the performance of which he is interested;
 
 
 
 
(d) may be cancelled by the Registrar in respect of any goods in relation to which the trade mark is no longer registered.
Registered user not to have right of assignment or transmission
43. Nothing in this Act shall confer on a registered user of a trade mark any assignable or transmissible right to the use thereof.
Use of one of associated or substantially identical trade marks equivalent to use of another
44. (1) Where under the provisions of this Act use of a registered trade mark is required to be proved for any purpose, the tribunal may, if and so far as it shall think right, accept use of a registered associated trade mark, or of the trade mark with additions or alterations not substantially affecting its identity, as an equivalent for the use required to be proved.
 
 
 
 
(2) The use of the whole of a registered trade mark shall for the purposes of this Act be deemed to be also a use of any trade mark being a part thereof and registered in accordance with sub section (1) of section 11 in the name of the same proprietor.
Use of trade mark for export trade, and use when form of trade connection changes
45. (1) The application in Bangladesh of a trade mark to goods to be exported from Bangladesh and any other act done in Bangladesh in relation to goods to be so exported which, if done in relation to goods to be sold or otherwise traded in within Bangladesh would constitute use of a trade mark therein, shall be deemed to constitute use of the trade mark in relation to those goods for any purpose for which such use is material under this Act or any other law.
 
 
 
 
(2) The use of a registered trade mark in relation to goods between which and the person using the mark any form of connection in the course of trade subsists shall not be deemed to be likely to cause deception or confusion on the ground only that the mark has been or is used in relation to goods between which and the person using the mark or any predecessor in his business diffe¬rent form of connection in the course of trade subsisted or subsists.
 
 
 
 

Copyright © 2019, Legislative and Parliamentary Affairs Division
Ministry of Law, Justice and Parliamentary Affairs