Assignment of registered Trademark
Registered trademarks are assignable and transmissible to another and the registered proprietor of the Trademark has the power to assign the trademark. Registered Trademarks are assignable with or without the goodwill of the business in respect of all or some of the goods for which it is registered. Once, a person is entitled to a registered trademark by assignment or transmission, he needs to make an application to the Registrar (in the manner mentioned above) to register his title and to record the assignment. Thereafter, the Registrar shall, on receipt of the application and on proof of title to his satisfaction, register the Assignee as the proprietor of the trademark.
Documents required for Assignment
In order to file an application for recording assignment of a registered trademark, the following documents need to be submitted along with the documents mentioned above under step 3:
Deed of Assignment
A deed needs to be prepared through which the trademark will be assigned to the other party. The Deed must be executed by the Assignor and the Assignee. There must be a consideration and a nominal consideration of TK.850 (eight hundred and fifty takas) or USD 10.00 (ten) is sufficient. The document must be legalized in Bangladesh if the trademark registered in Bangladesh is being assigned.
Trademark registration number
A Trademark registration number is required.
Joint Request
An application needs to be made in order to register the title of a person who becomes entitled to a registered trademark by assignment or transmission. Such an application should be made on Form TM-24 or TM -23. The application is made by the such person alone or jointly with the registered proprietor.
Authorization of Agent
The agent can file the application on behalf of the assignor and assignee. However, the agent must be authorized by both the assignor and the assignee. The authorisation may be notarized.
Assignment of unregistered Trademark
An unregistered trademark shall not be assignable or transmissible except along with the goodwill of the business concerned. Nevertheless, an unregistered trademark may be assigned or transmitted otherwise without the goodwill of the business concerned if⎯
(a) at the time of assignment or transmission of the unregistered trademark, it is used in the same business as a registered trademark;
(b) the registered trademark is assigned or transmitted at the same time and to the same person as the unregistered trademark; and
(c) the unregistered trademark relates to goods or services in respect of which the registered trademark is assigned or transmitted.
Documents required assignment of unregistered trademark
The documents that need to be submitted for recording the assignment of an unregistered trademark are the same as those mentioned above for a registered trademark. However, for an unregistered trademark, the trademark application number needs to be submitted instead of the trademark registration number. If the assignment is without goodwill then the application for recording assignment should be made within 6 months of execution of the assignment deed irrespective of whether it is a registered or unregistered trademark. It takes 20 to 25 working days to record the assignment of the trademark.
Can foreign owners apply for Trademark Registration?
Foreign owners can apply for trademark registration in Bangladesh if the business for the trademark is carried out in Bangladesh. They can apply by signing a specific form known as ‘A POA’. However, this has to be done through a trademark attorney in Bangladesh.
For queries or legal assistance, please reach us at: E-mail:info@counselslaw.com
Phone:+8801700920980. +8801947470606. Address: Counsels Law Partners, House 39, Road 126 (3rd Floor) Islam Mansion, Gulshan 1, Dhaka.
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