Applications for service mark registration now accepted
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The Department of Patents, Designs and Trademarks of Bangladesh has started accepting applications for the registration of service marks.
Trademark legislation has existed in Bangladesh since the 1940s. However, protection for trademarks registered in relation to services, as opposed to goods, was introduced only earlier this year when the Trademarks Act 2008 was enacted. In the past, service mark owners have sought to gain some protection by registering their marks in relation to allied goods.
The introduction of the new service mark legislation strengthened Bangladesh’s IP system and took it a step further towards compliance with the Agreement on Trade-Related Aspects of Intellectual Property.
Although the Trademarks Act 2008 is yet to come into force, the Department of Patents, Designs and Trademarks is now accepting applications for the registration of service marks. These applications will not be examined until the new act comes into force. However, once registered, the marks will be protected from the date of the application. Under the act, service marks can be registered in Classes 35 to 45 of the Nice Classification. Examination procedures have yet to be determined, but it is likely that examiners will cross-search all relevant goods classes.
The new service mark legislation is of particular relevance to IP owners operating in the information and communications technology (ICT) industries. Bangladesh has made a commitment to developing its ICT industries in recent years and is now increasingly seen as an attractive outsourcing destination.
IP owners, particularly those operating in the service industries, are advised to review their trademark portfolios and consider whether they should be seeking to register service marks in Bangladesh. This review is particularly important for those service companies with existing defensive registrations in related goods classes. These registrations may soon - if they are not already - become vulnerable to cancellation on the grounds of non-use.
In addition, when clearing new brands for use on goods, brand owners should now consider whether related service classes should also be searched.
Gurpreet Gulati and Jon Parker, Rouse & Co International, Dubai
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