Industrial Design Registration in Bangladesh

Bangladesh enacted the Bangladesh Industrial Design Act, 2023, which now governs the registration of industrial designs, replacing the provisions related to designs under the older Patents and Designs Act, 1911. The Department of Patents, Designs and Trademarks (DPDT) under the Ministry of Industries is the authority responsible for the registration. The Rules under the 2023 Act are anticipated and will provide further procedural details.

This guide outlines the general step-by-step process for registering an industrial design in Bangladesh, based on the Act and information from the DPDT.

Overview of the Registration Process

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The registration process generally involves application, examination, publication, potential opposition, and then registration.

Step-by-Step Guide to Industrial Design Registration

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Here is a more detailed breakdown of the process:

Step 1: Application for Registration

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1. Eligibility: Any person claiming to be the proprietor of a new or original design not previously published in Bangladesh may apply. This includes individuals or legal entities, or their legal representatives. If two or more persons have jointly created a design, they may apply for joint registration.
2. Prescribed Form and Fees: The application must be made to the Director General of the DPDT in the prescribed form and manner, accompanied by the stipulated fees. Each design generally requires a separate application.
3. Required Documents:
   • A completed application form.
   • Representations of the design (e.g., drawings, photographs). The Act specifies “a representation of the design”. If the design is embodied in a two-dimensional object, a sample might be required. (The DPDT charter previously mentioned submitting four copies of a description of the novelty; the new requirements should be confirmed).
   • A statement describing the features of novelty claimed for the design.
   • A statement justifying the applicant’s right to registration if they are not the designer.
   • The application must specify the class or classes of goods in which the applicant claims to register the design according to the Locarno Classification.
   • If claiming priority under the Paris Convention (based on an earlier application in a convention country), a certified copy of the priority application, along with details like the date, number, and country of the first application, must be submitted. The priority period is six months from the date of the first filing.
   • Power of Attorney, if the application is filed through an agent or representative.
   • Proof of payment of the prescribed fees.
   • Any other documents as may be prescribed under the Act and Rules.
4. Filing: The application and supporting documents are to be submitted to the DPDT. Upon submission, the applicant should receive an application number and a receipt for the fee.

Step 2: Examination of the Application

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1. Formality and Substantive Examination: The DPDT will examine the application to ensure it complies with the formal requirements and that the design meets the substantive criteria for registration. This includes assessing:
   • Novelty and Originality: The design must be new or original, meaning it has not been disclosed to the public anywhere in the world by publication in tangible form or by use or in any other way, prior to the filing date or, where applicable, the priority date of the application.
   • Industrial Applicability: The design must be capable of being applied to an article by an industrial process.
   • Non-registrability: The design should not fall under categories that are not protected, such as:
     • Designs dictated solely by technical or functional considerations.
     • Designs contrary to public order or morality.
     • Designs comprising any scandalous or obscene matter.
     • Designs that include official symbols or emblems (e.g., national flag, national emblem, or insignia of any country or international organisation) unless authorised.
     • Designs that are not significantly distinguishable from known designs or combinations of known design features.
2. Objections and Response: If the examiner finds any objections or deficiencies (e.g., lack of novelty, missing documents), the DPDT will notify the applicant. The applicant will be given an opportunity to respond to the objections, make necessary amendments to the application (without altering the original design substantially or extending the scope of protection), or request a hearing within a prescribed period. Failure to respond adequately may lead to the application being refused or considered withdrawn.

Step 3: Publication of the Application

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1. Publication: If the application meets all requirements and no objections are outstanding, or if objections have been successfully overcome, the Director General will order the application to be published. The application will be published in the official gazette or on the DPDT’s website in the prescribed manner.

Step 4: Opposition to Registration

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1. Opposition Period: After the publication of the application, any person may, within 30 days from the date of publication, give notice in writing in the prescribed manner to the Director General of opposition to the registration of the design.
2. Grounds for Opposition: Opposition can be based on grounds such as the design not being new or original, the applicant not being the proprietor, or the design not being registrable under the Act.
3. Handling Opposition: If an opposition is filed, the DPDT will send a copy of the notice of opposition to the applicant. The applicant must file a counter-statement within a prescribed time. The DPDT will then furnish a copy of the counter-statement to the opponent. The matter will be decided after giving both parties an opportunity to be heard, based on the evidence and arguments presented, according to the prescribed procedures.

Step 5: Registration and Certificate Issuance

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1. Grant of Registration: If the application is not opposed within the stipulated period, or if any opposition is successfully resolved in favour of the applicant, the Director General will register the industrial design.
2. Certificate of Registration: Upon registration, the DPDT will issue a Certificate of Registration to the applicant. The design is registered as of the date of the application for registration. The registration details will be entered into the Register of Designs.
   • The DPDT citizen charter under the old system estimated a general timeline of around 290 working days for design registration; however, this may vary under the new Act and depending on the specifics of the application.

Step 6: Term of Registration and Renewal

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1. Initial Term: The registration of an industrial design is initially valid for a period of ten years from the date of filing the application for registration.
2. Renewal: The registration can be renewed for three further consecutive periods of five years each. This means a design can be protected for a maximum total period of 25 years.
   • An application for renewal, along with the prescribed renewal fee, must be submitted to the DPDT before the expiry of the current term of registration, or within such further period (not exceeding six months) and upon payment of such prescribed surcharge.
   • The DPDT charter previously mentioned a renewal fee of BDT 10,000 per renewal term; this should be verified under the new Act and Rules.

For assistance with registering your industrial design in Bangladesh, please contact:

• Osman Goni
  • Phone: +8801715569498
  • Email: [email protected]
• Faizul Islam
  • Phone: +8801751230943
  • Email: [email protected]