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24/07/2024
Laws of Bangladesh

The Trade Marks Act, 1940

( ACT NO. V OF 1940 )

Chapter IV

EFFECT OF REGISTRATION

Words used as name or description of an article or substance
27. (1) The registration of a trade mark shall not be deemed to have become invalid by reason only of any use after the date of the registration of any words which the trade mark contains or of which it consists as the name or description of an article or substance:
 
 
 
 
Provided that, if it is proved either-
 
 
 
 
(a) that there is a well known and established use of the said words as the name or description of the article or substance by a person or persons carrying on a trade therein, not being use in relation to goods connected in the course of trade with the proprietor or a registered user of the trade mark or (in the case of a certification trade mark) goods certified by the proprietor; or
 
 
 
 
(b) that the article or substance has been manufactured under a patent in force at or granted after the commencement of this section, that a period of two years or more after the cesser of the patent has elapsed, and that the said words are the only practicable name or description of the article or substance,-
 
 
 
 
the provisions of sub section (2) shall apply.
 
 
 
 
(2) Where the facts mentioned in clause (a) or clause (b) of the proviso to sub section (1) are proved with respect to any words, then-
 
 
 
 
(a) for the purposes of any proceedings under section 46-
 
 
(i) if the trade mark consists solely of such words, the registration of the trade mark, so far as regards registration in respect of the article or substance in question or of any goods of the same description, shall be deemed to be an entry wrongly remaining on the register;
 
 
 
 
(ii) if the trade mark contains such words and other matter, the tribunal, in deciding whether the trade mark shall remain on the register, so far as regards registration in respect of the article or substance in question and of any goods of the same description, may, in case of a decision in favour of its remaining on the register, require as a condition thereof that the proprietor shall disclaim any right to the exclusive use in relation to that article or substance and any goods of the same description, of such words, 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;
 
 
 
 
(b) for the purposes of any other legal proceedings relating to the trade mark,-
 
 
 
 
(i) if the trade mark consists solely of such words, all rights of the proprietor under this Act or any other law to the exclusive use of the trade mark in relation to the article or substance in question or to any goods of the same description, or
 
 
 
 
(ii) if the trade mark contains such words and other matter, all such rights of the proprietor to the exclusive use of such words, in such relation as aforesaid,
 
 
 
 
shall be deemed to have ceased on the date at which the use men¬tioned in clause (a) of the proviso to sub section (1) first became well known and established, or at the expiration of the period of two years mentioned in clause (b) of the said proviso.
 
 
 
 

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Ministry of Law, Justice and Parliamentary Affairs