Bangladesh University of Professionals

Term Paper Submission on

“Trademark Law”

Course Paper: Intellectual Property Law

Course Code: LL.M – 5103

Submitted To Submitted By

Dr. Shima Zaman Ma’am Mohiminus Siam

Course Instructor Department of Law
LL.M (Professional) LL.M (Professional)
Department of Law 5th Batch
Faculty of Security & Strategic Studies (FSSS) Roll# 19005006
Bangladesh University of Professionals Session 2018-2019 B

Date of Submission
30th March, 2019
Table of Contents

Title Page No.

Concept of Trademark 01

What can be used as Trademark 02

What cannot be Trademarked? 02

Category or Types of Words which can be used as a Trademark 03

What Trademark Law Deals With? 04

Functions of Trademark 04

Advantages of Trademark Registration 05

Legal Requirements 07

Acquisition of Trademark 07

Procedure or Steps for Registration of a Trademark 08

Term or Renewal 10

Rights Conferred by Registration 11

Passing Off 11

Assignment and Transmission of Trademark 12

Licensing of Trademark 12

Trademark Infringement 12

Remedy for Infringement 12

Well Known Trademark 13

  Concept of Trademark
A trademark is a unique symbol or word(s) used to represent a business or its
products. Once registered, that same symbol or series of words cannot be used by any other
organization, forever, as long as it remains in use and proper paperwork and fees are paid.
Over time, trademarks become synonymous with a company name, so that we don’t
even need to see the name to recognize a particular business. Let’s think of the apple shape
with the bite taken out that Apple uses as its logo, the swoosh logo that Nike features on all
of its products, or the golden arches McDonald’s registered decades ago.
The fact that we so easily associate symbols and words with companies and their
brands is one of the biggest advantages of their use. When a customer sees a familiar logo
or phrase, they have instant recognition, which can drive preference and, ultimately, sales.
According to Cambridge Dictionary,
“A name or symbol on a product that shows it was made by a particular company,
and that it cannot be used by other companies without permission.”
According to Merriam-Webster,
“A device (such as a word) pointing distinctly to the origin or ownership of
merchandise to which it is applied and legally reserved to the exclusive use of the owner as
maker or seller”
A trademark is any symbol, word, number, phrase, design, or any combination
thereof which is used to identify the source of goods or services. The Trademarks Act, 2009
defines the term in Section 2(8). It provides for the following classification of marks:
 Registered Trademark
 Mark
 Certification Trademark
So, in general, trademark indicates that “a mark used by a manufacturer or dealer to
identify the origin or ownership of goods and to distinguish them from others.”
It is literally a “mark” that one business uses to distinguish its products or services
from another.
In a nutshell, “Trademark” means any sign capable of being represented graphically,
and of distinguishing goods and services of one undertaking from those of another.  A

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trademark may consist of words (including personal names), figurative elements, letters,
numerals or the shape of goods or their packaging.

 What can be used as Trademark

A trademark is typically a name, word, phrase, logo, symbol, design, image, sound or
a combination of these elements.

Name: The name of the company or business itself.

Word: Any particular unique word to associate the company or business or any other
legal entity.

Phrase: Certain logo to associate with the business organization.

Logo, Symbol, Design: Any specific art or creation of an unique visualization to

represent the legal entity or organization.

Image: An image of any sort which resembles with the view of the company.

Sound: Any particular sound which will give reminder to its consumers about the
company.

 What cannot be Trademarked?

Originally, only goods could be trademarked, but the law now protects both goods and
services. However, you can't trademark:

 Proper names or likenesses without consent from the person

 Generic terms, phrases, or the like

 Government symbols or insignia

 Vulgar or disparaging words or phrases

 Immoral, deceptive, or scandalous words or symbols

 Sounds or short motifs. These are covered by copyright instead.

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 Category or Types of Words which can be used as a Trademark

 Fanciful Marks: Fanciful trademarks are made-up terms invented for the single
purpose of functioning as a trademark. It comprises terms that have been invented
for the sole purpose of functioning as a trademark or service mark. They can be
either neologisms (words that don't mean anything in the English language) or
archaic words that are out of common usage. A fanciful trademark is distinctive and
only has a meaning when used in relation to a specific product. For this reason,
fanciful marks are the strongest type of trademarks. Famous examples of fanciful
trademarks include Exxon, Kodak, Pepsi, Clorox, and Xerox.
 Arbitrary Marks: Like fanciful marks, arbitrary marks are those trademarks or service
marks that consist of a word or symbol that has nothing to do with the products or
services being offered. Unlike fanciful marks, an arbitrary mark is a real word, but the
word is used such that there is no connection to the meaning. For example, the logos
“Apple” for personal computers, “Sun” in connection with computer technology, or
“Camel” in connection with cigarettes are arbitrary marks. They are different from
descriptive marks, which describe some aspect of the products or services. Neither
“Apple” nor “Sun” describes any aspect of computers. “Camel” does not describe
anything about cigarettes.
 Suggestive marks: Suggestive marks are those that, when applied to the goods or
services at issue, require imagination, thought, or perception to reach a conclusion
as to the nature of those goods or services. Many business owners want a mark that
explains what a service or product is but that still can be protected. Suggestive marks
can be helpful from a business perspective. They usually make a strong impression of
what the products or services might be which can cut down on explaining the
product in marketing or advertising materials. It may take more time and more
exposure for the public to build up an association between a fanciful or arbitrary
mark and the goods or services. For example: Coppertone, Jaguar, Greyhound etc.
 Descriptive Marks: Descriptive marks are those that clearly describe services or
products to which the mark is applied. It describes an ingredient, quality,
characteristic, function, feature, purpose, or use of the specified goods or services.
They can be difficult to distinguish from suggestive marks, but generally descriptive

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 marks allow a member of the public to figure out the nature of the goods without
any imagination or thought.
When a mark is only descriptive, it does not qualify for trademark protection. For
example, “Light” has been found to be merely descriptive of a product’s weight
when applied to portable computers. Descriptive marks can become descriptive,
however, by obtaining a secondary meaning. For example, “Sharp” has developed a
secondary meaning in connection with its use on the television brand. Other
examples may include Spray ‘n Wash, Park ‘n Fly, Vision Centre, Sleepwell Mattress.
 Generic Terms: Generic marks are terms that name a product and cannot be used as
trademarks under the reasoning that no manufacturer or service provider should
have the exclusive right to use words that generically identify a product. For
example, “email” would be a generic mark. Trademarks that would otherwise be
valid can become generic if the public misuses the mark to identify a type of good or
service rather than distinguish the owner’s goods or services. For example: zipper,
escalator, aspirin, butterscotch etc.

 What Trademark Law Deals With?

 Trademark law deals with the definition of trademark and other relevant definitions
which are related to the trademark law.
 Trademark law deals with the mechanism of registration; protection of trademark
and prevention of the fraudulent trademark.
 It provides for the rights acquired by registration of trademark,
 The modes of transfer and assignment of the rights,
 The nature of infringements, penalties for such infringement and
 Remedies available to the owner in case of such infringement.

 Functions of Trademark
 Origin Function: Originally trade marks were used to identify the physical source of
the goods on which they were used. However, with the growth of mass production,
the role of trademarks changed and, instead of informing consumers about the
identity of a specific, known source, marks began to be viewed as an indication that

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 all goods bearing the mark came from a single source. The identity of this source was
not necessarily known. For example, if the source had a good reputation, or if
consumers had experienced goods from that source before and wanted to make
repeat purchases. Such reasoning brings us close to the quality guarantee function.
 Choice Function: It enables consumers to choose goods and services with ease while
shopping. It is convenient for the consumers to choose which product they intend to
buy. It gives the consumers options to choose from several products. Trademarks
make easier for the consumers to buy their desirable things and necessities.
 The Quality Guarantee Function: The quality guarantee function assumes that
consumers will use trade marks to identify goods which they know from experience
to be satisfactory. Consumers who have had positive experiences with goods will
note the trade mark that they bear and will look for that mark again when making
future purchases of those goods. Moreover, if they view the mark on different
goods, they will assume from their past experiences of goods bearing the mark that
the new goods will be of the same quality as the previously experienced goods, even
though the goods are different in nature.
 The Marketing or Advertising Function: The advertising function is the least
understood of the trade mark functions. There is no consensus on what the
advertising function actually is, but the best explanation is that, where marks are
used in advertising, an image can be built up around them, separate from the
physical nature of the goods themselves, which will be evoked whenever consumers
are subsequently exposed to the mark.
 Economic Function: Established trade mark is a valuable asset. Trademarks may be
licensed or franchised. By having a popular trademark, any legal entity can be
benefited economically. It can be licensed to other parties in exchange for monetary
benefit. One of the intentions behind registering a trademark is to be financially
benefitted by attaching uniqueness to a product.

 Advantages of Trademark Registration

There are a lot of advantages of Trademark registration. These are the following –

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 i. Brand Protection: It protects the hard earned goodwill in the business. It also
protects the Name / Brand name from being used in a same or similar fashion,
by any other business firm, thus discourages others from cashing on the well
built goodwill. It gives the products a status of Branded Goods.
ii. Exclusive Rights: Trade mark registration gives the proprietor the right to
exclusive use of the mark in respect of the goods or services covered by it.
Possibly the most important reason for registration of a trade mark is the
powerful remedies against unauthorized use.
iii. Hypothecation / Security: A registered trade mark can be hypothecated as
security, meaning that a registered trade mark can be pledged as security to
secure loan facilities much the same way as immovable property can be
bonded.
iv. Intangible Property: A very important reason for registration is to create the
trade mark as an identifiable intangible property in the legal sense. Trade
mark registration is a value store or receptacle of the value attaching to the
reputation or goodwill that the product enjoys.
v. Licensing: A registered trade mark can be licensed. A trade mark license can
be recorded on the trade mark register, giving the licensee rights to institute
legal proceedings in the event of infringement.
vi. Assignment: A registered trade mark can be transferred. The same is not
possible for a common law trade mark, which can only be transferred with the
business. 
vii. Deterrent: Trademark registration deters other traders from using trademarks
that are similar or identical to ours in relation to goods and services like ours.
By using the ® symbol, we put others on notice of our rights. Moreover, a
registered mark can be found when others search the official register before
choosing to commence using a particular name.
viii. Use in Proceedings: A trade mark registration is prima facie evidence of
validity of the registration and the rights conveyed by registration. In legal
proceedings relating to registered trademarks the fact that a person is
registered as the proprietor of the trade mark is evidence of the validity of the
original registration of the trade mark, unless the contrary is proved.

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 ix. The right to use the symbol ® or “R” or word registered: Once the trademarks
are registered the symbol ® or “R” or word “Registered” may be used for the
goods and services listed in the registration.
x. Foreign Territories: A registered mark can be used as a basis to obtain
registration in some foreign countries, facilitating protection of the brand
worldwide as the business expands.

 Legal Requirements
 It cannot comprise or consists of any scandalous or obscene matter.
 The selected mark should be capable of being represented graphically (that is
in the paper form).
 It is not misleading or contrary to the public order.
 It cannot be in such a nature as to deceive the public.
 It should be capable of distinguishing the goods or services of one undertaking
in relation to which it is being used from those of others.
 It should be used or proposed to be used in relation to goods or services for
the purpose of indicating a connection in the course of trade between the
goods or services and some person having the right to use the mark with or
without revealing identity of that person.

 Acquisition of Trademark
A Trademark may be acquired by registration or through use.

By Registration: Trademark protection right is an indispensable right to trademark

proprietor. It must be ensured for a smooth industrial development and to earn profit by
using it. It claims exclusive rights. According to Article 16.1 of the TRIPS Agreement, the
owner of a registered trademark must be granted an exclusive right to prevent all third
parties not having the owner’s consent from using in the course of trade identical or similar
signs for goods or services which are identical or similar to those in respect of which the
trademark is registered if such use would result in a likelihood of confusion. In the case of
use of identical sign for identical goods or services, a likelihood of confusion must be
presumed. In Bangladesh trademark protection is ensured to the trademark proprietor by

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registration. Any other person than a registered proprietor, can get trade protection as
registered users, or by grant of license, or by means of assignment or transmission. Here the
provisions of infringement and falsification of trademarks also play an important role in
providing trademark protection to the trademark owners. The law relating to trademarks is
against trafficking in trademarks. Under the Trademarks Act, 2009, well known mark (even
unregistered) also gets protection.

According to Section 24(1) of the Trademarks Act, 2009, no person shall be entitled to
institute any proceeding to prevent, or to recover damages for, the infringement of an
unregistered trademark.

By Use: A Trademark can be acquired by using it for the first time before anyone else. But
the person using it has to be the first to use it as their trademark. Otherwise, it may fall
under the category of infringement.

 Procedure or Steps for Registration of a Trademark

There are various steps involved in the procedure for registration. According to
Section 15 to 20 of the Trademarks Act, 2009 these are described below –

Step 1: FILING OF APPLICATION – SECTION 15

 Any person claiming to be the proprietor can file an application for registration of a
mark used or proposed to be used.
 The person(s) shall file separate application for each class of goods or services. The
application must be filed at the Head office or any branch of the Trademark Registry
having territorial jurisdiction over the principal place of business.
 If the person does not carry on business in Bangladesh, the application must be filed
in the office having territorial jurisdiction over the place mentioned in the address
for service in Bangladesh.

Requirements

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  Name of the Applicant(s)
 Address and Nationality
 Specification of goods
 Fees: 3500 taka
 Form- “TM-1”.

Step 2: ACCEPTANCE – SECTION 15

 The Registrar may accept the application absolutely and go ahead with further
process.
 He may refuse to accept the application recording the grounds of refusal.
 He may conditionally accept the application, i.e. subject to amendments,
modifications, conditions or limitations.

Step 3: ADVERTISEMENT – SECTION 17

 After the conditional or absolute acceptance of the application, the Registrar may
advertise the application in the prescribed manner along with the prescribed fees.
 If there are any corrections in the application under Section 19, it will be advertised
again after such correction to the satisfaction of the Registrar.
 Form- “TM-9”
 Fees- 1000 taka.

Step 4: OPPOSITION – SECTION 18

 Within 2 months from the date of advertisement of the application, any person may
oppose the same by serving due notice to the Registrar via form TM-5 along with the
prescribed fees (2000 taka).
 He shall, within 1 month from the date of receipt of the notice, serve a copy of the
same to the applicant.
 Thereafter, the applicant shall file a counter within 2 months from the date of
receipt of such notice to him via form TM-6 and the prescribed fees (1500 taka). If a
counter is not filed, the application shall be deemed to have been abandoned.

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  The Registrar shall serve a copy of such counter to the opponent.
 All the evidences upon which the applicant and opponent rely shall be submitted in
the prescribed time and manner to the Registrar, and they shall be granted an
opportunity of being heard if so desired upon application via form TM-7 or TM-23
along with prescribed fees (1000 taka).
 The Registrar, after following due process of opposition shall decide whether to
accept, conditionally accept, or reject the application.
 Notwithstanding anything contained in the Act, the opposition proceedings must be
wound up/ concluded in 120 working days.

Step 5: REGISTRATION – SECTION 20

 If the application is accepted or not opposed or the notice period of opposition has
expired, or it has been opposed and the decision is in favour of the applicant, the
trademark shall be registered by the Registrar.
 The applicant shall be issued a certificate of registration with the seal of the
trademark registry.
 Such certificate shall be issued within 150 working days from the date of filing of
application.
 The duration of the trademark shall be of 7 years, and can be renewed by paying the
prescribed fees, from time to time.
 The Registrar may renew the registration of the trademark for 10 years from the
date of expiration of original registration or the last renewed registration on
application by the applicant .It takes around 24-36 months to get a trademark
registered in Bangladesh in a smooth case.

 Term or Renewal
According to Section 20 of the Trademarks Act, 2009 –
 A registered trademark is valid for an initial period of seven (7) years from the
date of filing and renewable thereafter for successive periods of Ten (10)
years.

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  Renewal fees must be paid before the expiry date but not more than six
months prior the expiry. Late renewals available, normally up to four months
after expiry date, with payment of late fees. Extensions at the direction of
Registrar are liberally granted with payment of additional fees.

 Rights Conferred by Registration

Registration of a trademark confers the following rights under Section 25:
 Exclusive right to use the trademark in relation to those goods and services for which
it has been registered.
 Obtain relief against infringement of the same in accordance with the Act.

It also provides that no person except the registered proprietor/ owner of the trademark
shall use the same in respect of the goods and services for which it is registered under
the Act, without the consent of the registered owner.

 Passing Off

Passing off is a common law tort, which can be used to enforce unregistered
trademark rights. The law of passing off prevents one person from misrepresenting his
goods or services as that of another.

The concept of passing off has undergone changes in the course of time. At first it was
restricted to the representation of one person's goods as those of another. Later it was
extended to business and services. Subsequently it was further extended to professions
and non-trading activities. Today it is applied to many forms of unfair trading and unfair
competition where the activities of one person cause damage or injury to the goodwill
associated with the activities of another person or group of persons.

 Assignment and Transmission of Trademark

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 The Act, in Chapter V, comprehensively provides for assignment and transmission of a
registered trademark by the registered proprietor, with or without the goodwill (Section
34).  An unregistered trademark shall not be assignable or transmissible except along with
the goodwill of the business concerned (Section 35) under certain circumstances provided in
the same section, it can be assigned or transmitted without the goodwill. Moreover, Section
38 incorporates assignment and transmission otherwise than in connection with the
goodwill with conditions of fulfillment attached.

 Licensing of Trademark

Licenses must be recorded with the authority to be effective. Application for record must
be made to the Registrar.

 Trademark Infringement

• Trademark Infringement is a violation of exclusive rights attaching to a trademark

without the authorization of the trademark owner or any licensee.
• Trademark infringement mostly occurs when a person uses a trademark which may
be either a symbol or a design, with resembles to the products owned by the other
party.
• The trademark owner may begin a legal proceeding against a party, which infringes
its registration.

 Remedy for Infringement

Where the rights of a proprietor of a registered trademark has infringed, s/he can
initiate civil proceeding or criminal proceeding for remedy. Any suit regarding the
infringement of trademark, or to establish the right or any ratified right respecting
trademark shall be instituted in the Court of District Judge within whose jurisdiction the
infringement occurred. A criminal proceeding has to be instituted in the Court of
Metropolitan Magistrate or any other 1st class Judicial Magistrate. Remedy in a suit for
infringement may be availed in the form of injunction, damages, an accounts of profit,

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 destruction or erasure of falsifying trademark, delivery up the goods marked with false
trademark.

 Well Known Trademark

Well-known trade and service marks enjoy in most countries protection against signs
which are considered a reproduction, imitation or translation of that mark provided that
they are likely to cause confusion in the relevant sector of the public. Well-known marks are
usually protected, irrespective of whether they are registered or not, in respect of goods
and services which are identical with, or similar to, those for which they have gained their
reputation. In many countries, they are also, under certain conditions protected for
dissimilar goods and services. It should be noted that, while there is no commonly agreed
detailed definition of what constitutes a “well-known mark; countries may take advantage
of the WIPO Joint Recommendation Concerning Provisions on the Protection of Well-Known
Marks.

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