Bangabandhu Sheikh Mujibur Rahman Science

and Technology University,Gopalganj, 8100.

Assignment On Trademark
Course Title: Intellectual Property Law
Course Code: Law 317
Submitted By:
Name: Sariful Islam
Id No: 17 Law 019
Year: 3rd
Semester: 1st
Dept.: Dept. of Law,BSMRSTU.

Submitted To:
Name: Umme Habiba Mou,
Lecturer,Dept. of Law at BSMRSTU.
 Contents

1. Definition of Trademark.
2. Characteristics of Trademark.
3. Classification of Trademark.
4. How can acquire a trademark.
5. Who can apply for Trademark.
6. Registration procedure of Trademark.
7. Sign which may serve as a trademark.
8. Test the uniqueness of a Trademark/ Criteria of
protectability of Trademark.
 Definition of Trademark

Trademark is a type of intellectual property which implies any

sign,name,word,phase,logo,symbol,slogan,number,ticket,heading,bran
d,design,image or combination of these elements that individualizes the
goods of given enterprise and distinguishes them from the goods of its
competitors.

Characteristics of Trademark

There are some characteristics of trademark,these are given below:-

1) Trademark should be distinctive which distinguishes products from
other competitors.
 2) It identify the goods and origin of trademark.
3) It serves as a guarantee of unchanged equality of the goods.
4) It acts as a marketing and advertising devices.
5) It is very useful in the competitive market.
6) It should perfectly be an invented word.
7) It should be easy to pronounce and remember.
8) It should not be deceptive similarity and which not misleading or
contrary to the public.
9) It should be easy to spell correctly and write legibly.
10) It should not be descriptive. It should be short.
11) It should satisfy the requirements of registration.
12)It should not belong to the class of marks prohibited for registration.

Classification of Trademark

There are some types of trademark,these are:-

1) Service Marks,
2) Collective Marks,
3) Verification Marks,
4) Word Marks,
5) Device Marks.

1.Service Marks
Service mark is one kind of trademark that distinguishes the services one
person from that of another. The services of the service marks are
offered by individual or company. It is a mechanism available to protect
marks used in service industry.Thus,a business providing services like
computer hardware and software assembly and maintenance,
restaurant and hotel services,courier and transport, beauty and health
care,advertising and publishing, educational and the like are now in a
position to protect their names and marks from being misused by others.
In service mark,the substantive and procedural rules governing the
service marks are fundamentally the same.

2.Collective Marks
Collective marks are used by a group of companies or a particular
enterprise or members of the association so that can be protected by the
group collectively. Collective marks are used to inform public about a
particular feature of the product for which the collective mark is used.
The owner of such marks may be an association/public
institution/cooperative. Collective marks are also used to promote
particular products which have certain characteristics specific to the
producer in a given region.

3.Certification Marks
Certification marks are used to define standard. It may be used by any
body who meets the who meets the defined Standard. They assure the
consumers that the product has certified through certain prescribed
standards. The presence of certification mark on the product indicates
that the product has successfully gone through a standard test specified.
It assures the buyer/consumer that the manufactures have gone through
and audit process to ensure the equality of the product, for example;
Toys electorial goods etc. having such marking indicates to Safety and
the equality of the products.

4.Word Mark
Word marks may be letters or numerals. A word mark gives the
proprietor a right only in the world, letter or numerical. No right is sought
with respect to the representation of the mark.

5.Device Mark
Where the trademark lies in the unique representation of a word,letter
or numerical, it is called as a device mark.

How can acquisition a trademak

A trademark may be acquired either by ;
1.Registration, or
2.Use
1.Registration
According to sec.24(1) of the Trademark Act,2009,no person shall be
entitled l to institute any proceeding to prevent or to recover damages
for the infringement of an unregistered trademark. So one of person who
had design or used the trademark first, he is entitled to claim registration
for proprietorship thereof from the Registrar through following
prescribed manner of the law.Then the concern authority may certify
registration of the trademark. A registered trademark is legally secured
and has the advantage of simplicity.A registered trademark allow the
entrepreneur to plan the marketing of the products or services for which
it is to be used.So,a trademark acquired through registration by
obtaining registration from Registrar.

2.Use
A trademark also acquired through use can be kept alive and protected
for as long as it continues to be used.Use means the visual
representation of mark i.e. the repetition uses of a mark upon or on
physical or others relation to goods.The use must be sufficient in the
course of trade for which it is being used.

Who can apply for Trademark

Any person which can be individual, compy or legal entity claiming to be
the proprietor of a trademark already in use or proposed to be used in
Bangladesh may apply for registration of a trademark.

Registration procedure of Trademark

In order to be registered, a trademark must fulfil the following two

requirements:-
a)It distinguishes the products or services of one
enterprise(distinctiveness).
b) It is not misleading or contrary to the public order or such a nature as
to deceive the public (deceptive similarity).
After the fulfillment the above two requirements, according to sec.6 and
15 of the Trademark Act,2009,

1)The applicant shall apply in writing to the Registrar with necessary fees
containing following matters:-
I. The name of a company, individual, or firm representation a
special or particular manner.
II. The signature of the applicant or an officer of the applicant
company for registration of business.
III. One or more invented words which has never existed befor it
was invented and it has no meaning or no obvious meaning
untill one has been assigned it.
IV. Full name,address of applicant.
V. Whether applicants are manufacturers or merchants or
provider services.
VI. Goods or services for which the mark is to be registered.
VII. Whether the mark is being used in Bangladesh or proposed
to be used in Bangladesh by the other proprietor.
VIII. Black and White bromide prints (on photographic quality
paper) for a label or design.

2)After filling the application, the Registrar may either accept or reject
or order to correct or modify the application. If the Registrar may refuse
application or conditionally accept the application, he shall state in
writing the grounds for such refusal or conditional acceptance. According
to sec. 16,the Registrar may reject application on the following grounds,
namely –
I. That the application has been accepted under a mistake,
II. That the registration of applied trademark will be improper use or
it is necessary to impose restrictions and conditions on the
respected trademark.
III. That the mark is not distinctive.
IV. That is similar to another trademark which already registered or in
use.
V. That the applicants claim to proprietorship is not justified.
VI. That the adoption of mark is dishonest.

It is important to mention here that the Registrar shall give the applicant
an opportunity of being heard while rejecting the application.

3) When the application accepted, the Registrar shall publish the same
in the trademark journal or newspaper, this is done so as to give an
opportunity to the public to oppose the registration on the ground that
the mark is likely to deceive or cause confusion.

4) In course of no opposition, or in case of having bern opposed and has

bern decided in favour of the applicant, the Registrar shall register as a
trademark and issue a certificate of registration with the seal of
Trademark Registry.

*According to sec.22, the registration of a trademark is valid for a period

of 7 years and after expiration of years applicant can apply for renewal
the registration of trademark. And Applicant can renewal registration of
trademark for maximum 10 years.

Sign which may serve as a trademark

There are some kinds of sign which may serve to distinguish the goods of
a given enterprise from those of others, the following types and
categories of sign can be served as a trademark :-

1) Words: This category include company names, Surnames

,forenames, geographical names and any other words or sets of
words, whether invented or not, and slogan.
2) Letters & Numerals: Example are one or more letters,one or more
numerals or any combination thereof.
3) Devices: This category includes fancy,devices, drawing and symbols
and also two dimensional representations of goods or containers.
4) Colored Marks: This category includes words, devices and any
combinations thereof in color as well as color combinations.
5) Three Dimensional Signs: A typical category of three dimensional
signs is the shape of the goods or their packaging.
6) Audible Signs(Sound Mark): Two typical category of sound marks
can be distinguished namely those that can be transcribed in
musical notes on other symbol and others.
7) Olfactory Marks(Smell Marls): Imagine that a company sells its
good with a certain fragrance and the consumer becomes
accustomed to recognizing the goods by their smell.
8) Other Invisible Sign: Examples of these signs are recognised by
touch.

Test the uniqueness of trademark/ Criteria of

protectability of trademark

Law of trademark is based on mainly on two concepts;-

1.Distinctiveness,
2. Deceptive Similarity.
These two concepts apply in case of registration, revocation and
infringement.These two concepts play the prime role to test the
uniqueness of a trademark.
 *The term”Distinctiveness” and “ Deceptive Similarity “ clarify in
below:-

1.Distinctiveness
A trademark must distinguish the goods or services of one enterprise
from the goods or services of other enterprises. The term
distinctiveness means that it is adapted to distinguish goods with
which the proprietor of the trademark is connected in the course of
trade from goods. The test of whether a trademark is distinctive is
bound to depend on the understanding of the consumers or at least
the person to whom the sign is addressed. A sign is distinctive for the
goods to which it is to be applied when it is recognized by those to
whom it is addressed as identifying goods from a particular trade
source or is capable of being so recognized.
According to sec. 6(3) of Trademark Act, 2009, in determining whether
a trademark is adapted to distinguish from other enterprise, the
tribunal may have regard to the extent to which –
a) The trademark is inherently so adapted to
distinguish, and
b) By reason of the use of the trademark or of any
other circumstances, the trademark is in fact so
adapted to distinguish.

The distinctiveness of a trademark must be determined with due caution

and it must be determined with due caution and it must be determined
after considering the whole facts and circumstances.
In the case of “Singer company vs. Amjad Ali”, It was held that the word
Sagar and Singer are two dissimilar words and will create no confession
if registered as a trademark. The word Sagar has acquired sufficient
distinctiveness to be registered as a trademark.

In the another Case “Bomby Sweets & Com. Ltd. Vs. Liberty food com.”
Due to long continuance use and advertisement of the mark through
various media,the trademark of the appellant “ Potato Crackers “ has
become popular and the mark has acquired distinctiveness. The
appellant has been using the trademark “Potato Crackers” since 1986
and by expending huge amounts of money for advertising the mark,it has
become the most popular brand in the country and the petitioner being
allured by the goodwill and reputation of the respondent appellant's
mark subsequently adopted the words “Potato Chips” as its trademark
with color,design and get up exactly similar to the appellants marks. The
two trademarks are similar and therefore registration of petitioner's
trademark would be likely to cause confusion and deception and as such
registration of the same would be contrary to the provision of sec 8(a).
The High Court Division held that “if the names of the companies
manufacturing the chips i.e. ‘Liberty and Bomby ‘ are read in isolation,
they would indeed by two different marks,But in the present case the
names cannot be dissected from the overall design and get up.

2.Deceptive Similarity
Deceptive similarity means a mark which is likely to deceive or cause
confusion and nearly resembles another mark registered under the
Trademark Act. What constitutes similarity of a mark with another is
 a question of fact and must be determined from the surrounding
circumstances. Actual resemblances of two marks are not the sole
question for consideration. The test of uniqueness trademark here is
for intrinsic deception, inherent in the trademark itself when
associated with the goods for which it is proposed. This test should be
clearly distinguished from the test for the risk of confusing Customers
by the use of identical or similar trademarks for identical or similar
goods.There are certain factors to be taken into account in
determining the deceptive similarity –

I. Nature of the marks,i.e whether are invented words, words

having descriptive words,geographical names,surnames,
letters, numerals or devices.
II. The degree of resemblances between the marks phonetic
visual as well as similarly in idea.
III. The nature of goods in respect of which they are used on
likely to be used as trademarks.
IV. Similarity in the nature, character and purpose of goods of
the rival traders.
V. The mode of purchase of the goods or of placing orders for
the goods.
VI. Any other surrounding circumstances.

These factors may not be the sole touchstone for determining the
similarity between two marks.If in considering the overall surrounding
circumstances it is found that it would create confusion in the mind of
the public that may be a case of deceptive similarity. It may not necessary
that one will be injured and others will gain illegal benefit. It must be
judged both from their look,sound,nature of the customers and the
overall surrounding circumstances.
In the case of “Pak. Battery manufacturing com. Karachi vs. Md. Hussain
“ the plaintiffs were manufacturers of batteries under registered
trademark “3 star”, Defendants were also found manufacturing the same
goods under trademark “5 star”, both marks being identical in getting
up,color and design. The only difference is that the defendants branded
their mark 5 stras instead of 3 stars of the plaintiff. Further,it appeared
that the defendants were making all out efforts to resemble their mark
with that of plaintiff. It was held that Defendants goods or colorable
limitation of registered trademark 3 star and are likely to deceive the
customer and cause confusion in the course of trade and in
circumstances amounted to flagrant infringement of registered
trademark. Where the words used in two different trademarks are
different, but their mode of representation similar, there is no bar to
registration.