Madrid Protocol accession: what it would mean for rights holders in Bangladesh

Bangladesh is not currently a member of the Madrid Protocol. A foreign brand owner who wants protection here files a national application through counsel admitted in Bangladesh — there is no international route in. An amendment to the Trademarks Act 2009 enabling accession has been reported to be in progress.

What would change

Under Madrid, a rights holder with a home registration can designate Bangladesh through WIPO rather than instructing a local agent to file. The designation is examined locally, and the local office either accepts it or issues a provisional refusal.

So the filing step — the straightforward, high-volume part — largely disappears for marks that are filed this way. What does not disappear, and in fact grows, is everything that happens when a designation meets resistance:

• Provisional refusals, and the responses to them.
• Office actions on relative and absolute grounds, which need local argument.
• Oppositions filed by third parties within the statutory window.
• Local representation requirements, which apply the moment a designation is contested.
• Rectification, cancellation and non-use attacks.
• Enforcement — which Madrid does not touch at all.

Who it helps and who it does not

For a brand owner with a large portfolio, accession is straightforwardly good: one designation instead of a national filing, in a standard form, on a predictable timetable.

For the Bangladeshi market it is more uneven. Practices whose revenue is filing volume lose their core product. Practices whose work is contested — oppositions, refusals, rectification, enforcement — are unaffected or busier, because a cheaper route in means more designations, and more designations mean more conflicts.

What to do in the meantime

File nationally now where protection is needed. Accession is not in force, the timetable is not fixed, and a mark that is unprotected while the amendment makes its way through is exposed to exactly the first-to-file risk that Bangladesh's system creates. Marks filed nationally before accession remain valid and are unaffected by it.