Introduction

Trademark law allows sellers or providers of goods or services to distinguish their products from others in the marketplace with identifying words, logos, or symbols. Federal trademark law grants protection to federally registered trademarks, but federal registration is not required for trademark protection. State laws and common law also create trademark rights. Trademark law research involves primary legal sources such as statutes, cases, and administrative law-potentially, at both the state and federal levels. Legislative history research can be necessary to ascertain the legislative intent behind particular statutory language. n most instances, it is best to begin your research with a review of secondary sources and practice aids such as research guides, background materials, treatises, and law review articles. Secondary sources help you frame your questions before you begin researching !the law! and often provide references to primary sources, rules, or forms. "s you continue your research, you may want to consult current awareness tools to keep current on legal developments that may affect your research. This guide is designed to point out the best sources available for trademark research at #$. Some of the resources are free nternet sources, but many are subscription services available to members of the #$ Law community. %here possible, this guide will link to other guides which can provide even more detail or resources on a particular sub&ect.

Definition of 'Trademark' " symbol, word, phrase, logo, or combination of these that legally distinguishes one company's product from any others. "ny infringement on a trademark is illegal and therefore grounds for the company owning the trademark to sue the infringing party. Usage Trademarks are used to claim e(clusive properties of products or services. The usage of trademarks by its owner can cause legal issues if this usage makes him guilty of false advertising or if the trademark is offensive. Trademarks can be owned, but also licensed. )any toy suppliers are licensees. For e(ample*

The Lego +roup purchased a license from Lucasfilm in order to be allowed to launch Lego Star %ars. TT Toys Toys is a manufacturer of licensed ride-on replica cars for children.

The unauthori,ed usage of trademarks by producing and trading counterfeit consumer goods is known as brand piracy. The owner of a trademark may pursue legal action against trademark infringement. )ost countries require formal registration of a trademark as a precondition for pursuing this type of action. The $nited States, -anada and other countries also recogni,e common law trademark rights, which means action can be taken to protect an unregistered trademark if it is in use. Still common law trademarks offer the holder in general less legal protection than registered trademarks. A trademark may be designated by the following symbols:

. /the !trademark symbol!, which is the letters !T)!, for an unregistered trademark, a mark used to promote or brand goods0 /which is the letters !S)! in superscript, for an unregistered service mark, a mark used to promote or brand services0 1 /the letter !2! surrounded by a circle, for a registered trademark0

" trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements. There is also a range of non-conventional trademarks comprising marks which do not fall into these standard categories, such as those based on color, smell, or sound.
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Making an application: "nyone claiming to be the proprietor of a trademark may apply to the 2egistrar for the registration of the said mark. #angladeshi nationals and foreigners have equal right in this regard but a foreign applicant must be represented by a local agent.

3 e!uirements for the application* a. 4ame of the )ark 5Logo56evice prints or representation. b. 4ame of the "pplicant. c. "ddress and nationality of the "pplicant. d. Status of the applicant i.e. )erchandisers 5 )anufacturers 5Service 7roviders e. Specification of +oods5Services and -lass. f. $ser date of the mark /whether the mark is in use or proposed to be used in #angladesh0. g. +eneral5 Specific 7ower of "ttorney. 7ower of "ttorney /78"0 may be filed subsequently. 3"#amination: The mark is thoroughly e(amined as regards 9 /i0 6istinctiveness: /ii0 Similarity or being identical or nearly resemble with e(isting trademarks on the 2egister of Trademarks: /iii0 ;urt religious susceptibilities of any class of #angladesh, and /iv0-ompliance with the requirements of the Trade )arks "ct. 3$rocedure for registration of a trademark in %angladesh <. &onduct A'ailability (earch /optional0. =. )iling the Application* "n application is made in the prescribed manner to the 2egistrar of Trade )arks.

>. Acknowledgement of Application* The 2egistrar, on receipt of the application, issues 8fficial Filing 2eceipt. The document contains all relevant filing details on the trademark e.g. "pplication 4umber, date of application, the trademark etc.0. ?. "#amination of the Application* The 2egistrar e(amines the trademark for distinctiveness, identical or similarity with e(isting registered trademarks and general compliance with the requirements of the Law. f the 2egistrar is satisfied, he issues a Letter of "cceptance for the mark to be advertised in the Trade )arks @ournal for opposition purposes. 8therwise, the 2egistry raised ob&ection seeking written reply regarding ob&ections. ?.<. efusal of Application* %here an application is refused, the "pplicant through its local agent must submit reply to the show cause notice and may seek a hearing in the matter within three *+, months otherwise: the application will be deemed abandoned. ?.=. Acceptance of Application* f the A(aminer is satisfied as to /?.<0 above, the 2egistrar accepts the mark for advertisement in the Trade )arks @ournal. B. -pposition $roceedings* %hen a trademark is advertised, any person may within two /=0 months from the date of the publication give notice of 8pposition to the 2egistrar on Form T)B. The 2egistrar shall send a copy of the 4otice of 8pposition to the "pplicant and the "pplicant shall within Two month of receipt of the 4otice of 8pposition, file a -ounter-Statement of the grounds for which it relies for its application to be registered. Failure to file the -ounterStatement within the prescribed period will result in the application being deemed abandoned. The applicant may seek e(tension of time for filing -ounter-Statement along with +ovt. fees. %here a -ounter-Statement is filed, the 2egistrar shall furnish a copy thereof to the 8pponent. The parties are required to file evidence by way of "ffidavit and the 2egistrar shall, after hearing the parties, decide on whether the application should be registered or not. The 2egistrarCs decision shall be sub&ect to appeal to the ;igh -ourt. D. egistration %here no opposition is received at the e(piration of the opposition period or the opposition is determined and resolved in favour of the "pplicant, the 2egistrar is obliged to issue a -ertificate of 2egistration for the trademark on payment of the prescribed fee. The registration date of the trademark will be the date of filing.

Term of egistration " registered trademark is valid for an initial period of seven /E0 years from the date of filing and renewable thereafter for successive periods of Ten /<F0 years.

enewal "pplication for renewal of a trademark may be made to the 2egistrar in the prescribed manner, not more than si( /D0 months before the e(piration of the last renewal. 2enewal is for Ten /<F0 years. " -ertificate of 2enewal is issued by the 2egistrar as evidence of payment of the renewal fee due at that period. -lients are advised that the renewal fee due on a mark cannot be paid until the mark is registered. -lients are therefore advised that they need not worry about the renewal fee until the mark has been registered. 37ost 2egistration )atter "ssignment of Trademarks The 2egistered proprietor of a Trade mark has power to assign the mark and a registered Trade )ark is assignable and transmissible with or without goodwill of the business in respect of all or some of the goods for which it is registered. %here a person becomes entitled by assignment or transmission to a registered trademark, he shall make application to the 2egistrar /in the prescribed manner0 to register his title and the 2egistrar shall, on receipt of the application and on proof of title to his satisfaction, register the "ssignee as the proprietor of the trademark. To file application for recordable of assignment in #angladesh, the following documents are required 9 /i0 Deed of Assignment - The 6eed must be e(ecuted by the "ssignor and the "ssignee. " nominal consideration of $SG <F.FF is sufficient. The document must be legali,ed in the country concerned. /ii, )orm TM./0 or )orm TM./+*1oint e!uest, -"n application to register the title of a person who becomes entitled by assignment or transmission to a registered trade mark shall be made on Form T)-=? or T) -=> according it is made by such person alone or con&ointly with the registered proprietor. /iii0 Authori2ation of Agent - The authori,ation is to be e(ecuted by both the "ssignor and the "ssignee. t may be notari,ed. 3Licensing of Trademarks /2egistered $ser0
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There is provision under the Trademark Law for the registration of a person other than the registered proprietor of a trademark as a 2egistered $ser. n order to file application for 2egistered $ser in #angladesh, the following documents are required 9 /i0 2egistered $ser5License "greement /ii0 T) Form -=H /iii0 Statement of -ase by an "ffidavit. /iv0"uthori,ation of "gent 3&hange of 3ame4Address of the proprietor f there is a change in the name and5or address of the proprietor, such change must be recorded against the trade mark. The proprietor may make application in the prescribed manner to alter its name and5or address on the 2egister of Trade marks. The 2egistrar, if satisfied with the application, will issue a 7roof of record of -hange of 4ame5"ddress evidencing the recordable of such change in the 2egister. To apply for the change of name of the proprietor of a trademark in #angladesh, a -ertified True -opy of the -ertificate of -hange of 4ame5"ddress or any equivalent document /e.g. A(tract of -ompany 2egister0 issued by the appropriate authority in the proprietorCs country of origin attesting to the change of name5address. %here such document is not in the Anglish language, a certified Anglish translation will be required. )oreign $riority4&on'ention Applications The Law makes provision for an "pplicant to claim priority of a foreign trademark within D months from the date of application to the member country of 7aris -onvention or %T8 in #angladesh. (er'ice Marks Service )arks can be registered in #angladesh. "pplicants can now apply for registration of service marks in #angladesh in nternational -lasses >B to ?B. The nternational 4ice -lassification of Services is applicable for this purpose.

Trademarks Act5 /667 Act 3o8 9I9 of /667 6

 The egister of Trademarks8 /<0 For the purpose of this "ct, a book or record to be called 2egister of Trademarks shall be kept at the Trademarks 2egistry where in all registered trademarks with the names, addresses, and descriptions of the proprietors, notifications of assignments and transmission, the names, addresses and descriptions of registered user, disclaimers, conditions, limitation and such other matters relating to registered trademarks shall be recorded in writing in prescribed manner. /=0 Sub&ect to the superintendence and direction of the +overnment, the 2egistrar shall maintain and preserve the 2egister. />0 There shall be kept at the Trademarks 2egistry and at each branch office of the 6epartment, a copy of the 2egister and such other documents mentioned in section <<D of this "ct as the +overnment may, by notification in the official +a,ette, direct. /?0 4o notice of any trust, e(press or implied or constructive, shall be entered in the 2egister and no such notice shall be receivable by the 2egister.

B. egistration of certain class of goods or ser'ices8 /<0 " trademark may be registered in respect of certain class of goods, or, service by complying the requirements determined for the respective class or classes. /=0 "ny question arising as to the class of any goods or services shall be disposed of by the 2egistrar whose decision in the matter shall be final. D. e!uisites for registration in the egister8 " trademark shall not be registered in the 2egister unless it contains or consists of at least one of the following essential particulars /a0 The name of a company, individual, or firm, represented in a special or particular manner: /b0 The signature of the applicant for registration or some predecessor in his business:

/c0 8ne or more invented words: /d0 one or more words having no direct reference to the character or quality of the goods or services, as the case may by, and not being, according to its ordinary signification, a geographical name or a surname or a personal name or any common abbreviation thereof or the name of a sect, caste or tribe in #angladesh: /e0 "ny other distinctive mark.
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/=0 " name, signature or word which does not fall within the description in clauses /a0, /b0, /c0 and /d0 of sub-section /<0 e(cept in clause /e0 of this sub-section shall not be registered in the 2egister e(cept upon the evidence of its distinctiveness. />0 For the purposes of this "ct, the e(pression, Idistinctive mark,J in relation to the goods or services in respect of which a trademark is proposed to be registered, means a trademark which distinguishes the goods or services, as the case may be, of the proprietor from the goods or services, of the same kind in such trade and in the case of which no such connection subsists, either generally or, where the trademark is proposed to be registered, sub&ect to limitations. Meaning of applying trademarks and trade descriptions8 /<0 " person shall be deemed to apply a trademark, mark or trade description to goods or service, as the case may be /a0 "pplies it to the goods themselves or services themselves, as the case may be: or /b0 applies it to any package in or with which the goods or services, as the case may be, are sold, or e(posed for sale, or had possession for sale or for any purpose of trade or manufacture: or /c0 places, encloses or anne(es any goods or services, as the case may be, which are sold, or are e(posed for sale, or had in possession for sale or for any purpose of trademark on manufacture, in or with any package or other things to which a trademarks or mark or trade description has been applied: 8r /d0 applies a trademark or mark trade description any manner reasonable likely to lead to the belief that the goods or services, as the case may be, in connection with which it is used are designated or described by that trademark or mark or trade description: or /e0 in relation to the goods or services, as the case may be, uses a trademark or trade description in any sign, advertisement, invoice, catalogue, business letter, business paper, price list, or other commercial document, and goods or services, as the case may be, are delivered to a person in pursuance of a request or order made by reference of the trademark or trade description as so used

)alsifying and falsely applying trademarks8 /<0 " person shall be deemed to falsify a trademarks who, either
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/a0 %ithout the assent of the proprietor of the trademark, makes that trademark, or a deceptively similar mark: or /b0 Falsifies any genuine trademark, whether by alteration, addition, effacement or otherwise. /=0 " person shall be deemed to falsely apply to goods or services, as the case may be, a trademark who, without the assent of the proprietor of the trademark /a0 applies such trademark or a deceptively similar mark to goods or services, as the case may be, or any package containing goods: /b0 $ses any package bearing a mark which is identical with or deceptively similar to the trademark of such proprietor, for the purpose of packing, filling, or wrapping therein any goods of the proprietor of the trademark. />0 "ny trademark falsified as mentioned in sub-section /<0 of this section or falsely applied as mentioned in sub-section /=0 of this section, shall be deemed to be a false trademark, /?0 n any prosecution for falsifying a trademark or falsely applying a trademark to goods or services, the burden of proving the assent of the proprietor shall lie on the accused. $enalty for applying false trademarks and false trade description5 etc8 f a person /a0 Falsifies any trademark, /b0 Falsely applies for any trademark or to goods or services, /c0 )akes, disposes of, or has in his possession, any die, block, machine, plate or other instrument of the purpose of falsifying, or of being used for falsifying a trademark, /d0 applies any false trade description to goods or services, /e0 applies to any goods to which an indication of the country or place in which they were made or produced or the name and address of the manufacturer or producer or supplier, as the case may be, or person for whom the goods or services are manufactured, produced or supplied is required to be applied under section <FH of this "ct, a false indication of such country, place, name or address. /f0 tampers with, alters or effaces an indication of origin which has been applied to any goods or services to which it is required to be applied under section <FH, or /g0 -auses any of the things mentioned from clause /a0 to /f0 to be done. he shall, sub&ect to the provisions of this "ct be punished with imprisonment for a term which may e(tend = /two0 years but not less than D /si(0 months or with fine which may e(tend to taka = /two0 lac but not less
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than BF /fifty0 thousand or with both and for a second or subsequent conviction, with imprisonment for a term which may e(tend to > /three0 years but not less than < /one0 year, or with fine which may e(tend to taka > /three0 lac but not less than < /one0 lac, or with both.

$enalty for selling goods to which a false trademark or trade description is applied8 f a person sells, or e(poses for sale, or has in his possession for sale or for any purpose of trade or manufacturer any goods or things to which a false trademark or a false trade description is applied or which, being required under section <FH to have applied to them an indication of the country or place in which they were made or produced or the name and address of the manufacturer or producer or the person for whom the goods are manufactured or produced are without the indication so require, he shall, unless the proves /a0 that, having taken all reasonable precautions against committing an offence against this section, he had at the time of the commission of the alleged offence no reason to suspect the genuineness of the trademark or trade description or that any offence had been committed in respect of the goods: and /b0 that, on demand by or on behalf of the prosecutor he gave all the information in his power with respect to the person from whom he obtained such goods or things: or /c0 That otherwise he acted innocently, #e punished with imprisonment of either description for a term which may e(tend to = /two0 years, or with fine, or with both, and in case of a second or subsequent conviction, with imprisonment of either description for a term which may e(tend to > /three0 years, or with fine, or with both.

$enalty for remo'al or piece.goods5 etc8 f any person removes or attempts to remove or causes or attempts to cause to be removed for sale from any premises referred to in section DH of this "ct, or sells or e(poses of sale or has in his possession for sale or for any purpose of trade or manufacture piece goods or cotton yarn or cotton thread which is not marked as required by that section, every such piece and every such bundle of yarn and all such thread and everything used for the packing thereof shall be forfeited
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to the +overnment and such person shall be punished with fine which may e(tend to five thousand taka.

$enalty for falsely representing a trademark as registered8 /<0 f any person makes any representation /a0 %ith respect to a mark not being a registered trademark, to the effect that it is a registered trademark: or /b0 with respect to a part of a registered trademark not being a part separately registered as trademark, to the effect that it is separately registered as a trademark: or /c0 to the effect that a registered trademark is registered in respect of any goods or services in respect of which it is not in fact registered: of /d0 to the effect that the registration of a trademark gives an e(clusive right to the use thereof in any circumstances in which, having regard to limitations entered on the 2egister, the registration does not in fact give that right: he shall be punished with imprisonment for a term which may e(tend to < /one0 year but not less than D /si(0 months, or with fine which may e(tend to taka < /one0 lac but not less than BF /fifty0 thousand, or with both. /=0 For the purposes of this section, the use in #angladesh in relation to a trademark of the word IregisteredJ, or of any other e(pression referring whether e(pressly or impliedly to registration, shall be deemed to import a reference to registration in the 2egister, e(cept /a0 %here that word or other e(pression is used in direct association with other words delineated in characters at least as large as those in which that word or other e(pression is delineated and indicating that the reference is to registration as a trademark under the law of a country outside #angladesh being a country under the "ct of which the registration referred to is in fact in force: or /b0 %here that other e(pression is of itself such as to indicate that the reference is to such registration as is mentioned in clause /a0 of this sub-section.

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 To make rules8 /<0 The +overnment may by notification in the official +a,ette, make rules to carry out the purposes of this "ct. /=0 n particular, and without pre&udice to the generality of the forgoing power, such rules may /a0 prescribe the classification of goods or services according to international classification for the purpose of the registration of trademarks, and empower to amend the 2egister so far as may be necessary for the purpose of adapting the entries therein: /b0 2equire the making of duplicated trademarks and other documents connects therewith: /c0 7rovide for securing and regulating the publication, sale or distribution of copies of trademarks and other documents connected there with: /d0 )ake arrangement to amend the entries in the 2egister: /e0 7rescribe the conditions and restrictions sub&ect to which the 2egister may be inspected: /f0 7rescribe the form of certificates of registration /g0 )ake provisions regarding not to accept any application under section ??/<0: /h0 7rescribe the further documents, information or evidence to accompany an application under sub-section /<0 of section ?B: /i0 prescribe classes of goods as te(tile goods for the purpose of section DD: /&0 2egulate the awarding of costs by the 2egistrar under section K<:

&onclusion

he application procedure for a domain name will include checks to make sure that the requested domain name does not infringe upon trademarks, avoiding e(tortion and grabbing almost entirely as a result, and also limiting confusion. 6ue to the growing number of sites on the nternet and the inevitable similarity of na mes, the confusion
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problem cannot be completely solved, but through our proposal, the trademark infringements that cause many of these problems will be greatly reduced. To facilitate this process, we propose that the governing committee work with the %orl d ntellectual 7roperty 8rgani,ation /% 780 to create a searchable database of trademarks. %hile it would be impossible to create a complete directory, even a partial directory could help alleviate problems with the registration of a domain name before th e name is registered. This way a person or corporation could be stopped from registering a trademarked domain name, rather than forcing the company to attack the domain holder after they have already registered the name. This would effectively eliminate cases like those involving.

eference:
http://lawlibraryguides.bu.edu/trademarks http://www.legalsteps. !m.bd/trademark.html"#!p http://www.trademarks. !m.bd/ http://www.dpdt.g!$.bd/#%&' t&d!w(l!ad.html http://www.bipl!bd. !m/trademark&registrati!(&i(&ba(gladesh.html http://bdlaws.mi(law.g!$.bd/pri(t&se ti!(s&all.php)id*184

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