BANGLADESH Law and Practice Contributed by: A B M Shamsud Doulah, Rajin Ahmed and A B M Sohailud Doulah, Doulah & Doulah
6.3 Registration or Recording of an Assignment or Licence
Types of Licences and Additional Rights The following types of licences can be granted for both trade marks and copyrights. • Exclusive licence – the licensee has the sole right to use the trade mark or copyright, and even the owner cannot use it. • Non-exclusive licence – the licensee has the right to use the trade mark or copyright, but the owner can grant licences to others as well. • Sole license – only the licensee and the owner can use the trade mark or copyright (no third parties). • Perpetual licences – trade mark licences cannot be perpetual as they must comply with renewal and validity periods of the trade mark registration. Copyright licences can be perpetual if explicitly stated in the agreement. • Archival rights – a copyright licence may include archival rights, allowing the licensee to store, preserve or use the copyrighted material for future reference. Trade mark licences generally do not include archival rights, as they deal with active use in trade.
In Bangladesh, the registration and recordal require - ments for the assignment or licensing of trade marks and copyrights differ. Trade Marks Under the Trademarks Act, 2009, an assignment or licence of a registered trade mark must be recorded with the DPDT to be legally effective against third par - ties. • Assignment: the assignee must apply for registra - tion of the assignment in the prescribed manner with supporting documents, such as the assign - ment deed. If the assignment is not recorded, it may not be enforceable against third parties, and a subsequent bona fide assignee who records their assignment first may have a stronger legal claim. • Licence (Registered User Agreement): a trade mark licence is referred to as a Registered User Agree - ment under Bangladeshi law. The licensee’s rights must be registered with the DPDT; otherwise, the licensee may not be able to enforce their rights effectively. Risks of non-registration • Legal validity – if an assignment or licence is not recorded, it may not be recognised in legal dis - putes. • Third-party claims – a later assignee or licensee who registers their rights first may obtain superior legal status over the prior but unrecorded assign - ee/licensee. • Enforcement issues – unregistered licensees may struggle to take action against infringement. Copyright Under the Copyright Act, 2000, assignment or licens - ing of copyright does not require mandatory regis - tration to be valid. However, voluntary recordal with the BCO can serve as strong evidence in the case of disputes. Risks of non-registration • Proving ownership – without registration, the assignee or licensee may face difficulties in proving ownership or rights in legal disputes.
Licensing of Applications Trademark applications
In Bangladesh, a pending trade mark application can - not be licensed. Licensing is only possible after the
trade mark is registered. Copyright applications
Since copyright protection exists automatically upon creation, a copyright application can be licensed even before formal registration. Trade mark and copyright licensing in Bangladesh require written agreements, with trade marks requir - ing prior registration before licensing. Different types of licences are allowed, and copyright licences can be perpetual. Trade mark applications cannot be licensed, but copyright applications can be. Proper documentation and registration with relevant authori - ties help ensure enforceability and legal protection.
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