International Trade Mark Registration and Madrid Portfolio Management

by Barrister Tahmidur Rahman | Sep 17, 2026

Technology, IP & DataOne brand, protected in every market8 min read

International Trade Mark Registration and Madrid Portfolio Management

International trade mark registration for Bangladeshi brands expanding abroad and foreign brands entering Bangladesh: national DPDT filings, Madrid System applications where the owner is entitled, later designations, renewals and the ownership, name and licence changes that keep a growing brand portfolio enforceable.

Overview

How we manage international trade mark registration for Bangladesh-linked brands

A brand that sells in several countries needs rights in each of them. International trade mark registration is the work of choosing where to file, which route to use and how to keep the resulting portfolio accurate as the business changes. We advise Bangladeshi exporters, consumer brands, technology companies and foreign rights holders entering Bangladesh, combining national filings at the Department of Patents, Designs and Trademarks with Madrid System and overseas filings coordinated through counsel abroad. This work forms part of our technology, IP and data practice and links closely with our licensing, franchising and distribution teams in Dhaka.

The Madrid System, administered by WIPO, lets an owner file one international application based on a home application or registration and designate many member countries, then manage renewals and changes centrally. Bangladesh is not yet a member. WIPO and the government have been working on preparation for accession, and seminars on the Madrid Protocol were held in Dhaka in 2026, but until accession takes effect Bangladesh cannot be designated. Foreign owners therefore need a national trade mark registration here under the Trademarks Act 2009, and Bangladeshi owners need a qualifying link to a member country to use the system abroad.

For Bangladeshi brands, the practical options are direct national filings in each target market, a regional filing such as an EU trade mark, or a Madrid application filed through a group company that is genuinely established, domiciled or a national in a member country. Each option affects cost, speed, ownership and how licences flow back to the Bangladesh business. Under the Madrid System, an international registration depends on its base mark for five years, so a weak base filing can put every designation at risk. We assess these points before recommending a structure for any trade mark registration programme.

Trade mark registration portfolios drift. Companies merge, rename, relocate and sell brands, and licensees and distributors come and go. Under Madrid, changes of ownership, name and address, limitations, renunciations and cancellations are recorded with the International Bureau, while national registrations, including those in Bangladesh, must be updated separately at each office. A transferee must also be entitled to hold an international registration. We run designation and change control for each client so that every record, from the base registration to each national file, matches the corporate position, the licence agreements and the evidence needed for enforcement.

We coordinate closely with trade mark counsel in the UK, US, UAE, China, India and Singapore and with agents in other markets when a designated office issues a provisional refusal or local action is needed. We also handle Bangladesh oppositions, non-use and cancellation actions, and infringement and counterfeiting work in Bangladesh, with our disputes team where proceedings are needed. For a clearance search, a filing plan or a portfolio clean-up before a sale or investment, contact our Dhaka office with the marks, goods and services, target markets and any existing trade mark registration numbers.

01 · What we handle

Core workstreams

  • Clearance and filing strategy
  • Bangladesh national filings
  • Madrid applications and designations
  • Designation and change control
02 · How it runs

Four clear stages

  1. 01Audit and clear
  2. 02Choose the route
  3. 03File and prosecute
  4. 04Control changes
03 · Start here

Talk to a partner

Consultations in Dhaka or by video. Scope, team and fees are agreed in writing first.

Book →
How we help

What our trade mark portfolio work covers

Workstream 01Technology, IP & Data

Clearance and filing strategy

  • Audit and clear
  • Choose the route
  • File and prosecute
  • Control changes
Workstream 02Technology, IP & Data

Bangladesh national filings

  • Audit and clear
  • Choose the route
  • File and prosecute
  • Control changes
Workstream 03Technology, IP & Data

Madrid applications and designations

  • Audit and clear
  • Choose the route
  • File and prosecute
  • Control changes
Workstream 04Technology, IP & Data

Designation and change control

  • Audit and clear
  • Choose the route
  • File and prosecute
  • Control changes
Workstream 05Technology, IP & Data

Renewals and use evidence

  • Audit and clear
  • Choose the route
  • File and prosecute
  • Control changes
Workstream 06Technology, IP & Data

Oppositions and enforcement

  • Audit and clear
  • Choose the route
  • File and prosecute
  • Control changes
01

Clearance and filing strategy

We run or coordinate searches in Bangladesh and target markets, assess conflicts with earlier marks and local-language equivalents, and recommend which marks, classes and specifications to file. We then compare national, regional and Madrid routes for each market, with costs and timelines, so that the client approves a filing plan built around launch dates, distribution agreements and realistic enforcement needs rather than habit. Searches include Bangla-script and phonetic equivalents.

02

Bangladesh national filings

We prepare and file applications at the DPDT under the Trademarks Act 2009, including Bangla transliterations where useful, respond to examination objections, manage publication and oppositions, and secure registration. For foreign owners who use Madrid elsewhere, we coordinate the separate Bangladesh trade mark registration so specifications, owner details and priority claims stay consistent with the international portfolio and avoid later conflicts. Trade mark registration documents are prepared for signature in one pack.

03

Madrid applications and designations

Where the owner or a group company is entitled, we work with counsel in the office of origin on the base application and international application, choose initial designations and plan subsequent designations as the business expands. We track the five-year dependency period, provisional refusals and statements of grant, and keep the client informed of every decision point in the international trade mark registration process. Costs are reported per designation.

04

Designation and change control

We record changes of ownership, name and address, limitations, renunciations and cancellations with the International Bureau and with national offices, including the DPDT. Before a restructuring, brand sale or licence, we check whether the new owner is eligible to hold the international registration and plan any national filings needed, so that no market is left with outdated or inconsistent records. Every change is logged with its supporting evidence.

05

Renewals and use evidence

We diarise renewals across the portfolio, advise which marks and classes are still worth maintaining, and collect evidence of use in Bangladesh and abroad. Good evidence files protect against non-use cancellation actions and support infringement and opposition cases. We also review whether marks are being used as registered, since inconsistent use can weaken a trade mark registration over time. Lapses are always a deliberate decision.

06

Oppositions and enforcement

We file and defend oppositions, rectification and cancellation actions, and coordinate responses to provisional refusals abroad. In Bangladesh, we act against infringers and counterfeiters through demand letters, civil suits, enforcement agencies, customs and online marketplace complaints. Where a conflict involves a former distributor or licensee, we review the contract alongside the registration to choose the most effective route. Early evidence gathering improves outcomes. We report results in plain terms.

RecognitionThe Legal 500Asia Pacific ranks Tahmidur Remura Wahid (TRW) Law Firm for dispute resolution in Bangladesh.
Cross-border reach6 jurisdictionsMatters coordinated with counsel in the UK, US, UAE, China, India and Singapore.
Bar and admissionsDhaka and LondonBarristers and advocates in Bangladesh, with a solicitor of England and Wales (non-practising).
HeadquartersDhakaHouse 410, Road 29, Mohakhali DOHS. Consultations in person or by video.
Who leads this work

Partner-led, on every matter.

Technology, IP & Data matters at TRW are led by partners, supported by associates, with one responsible lawyer from first advice to final outcome.

Meet the firm →
01

Can we designate Bangladesh in a Madrid international trade mark registration?

Not at present. Bangladesh is not yet a member of the Madrid System, so it cannot be designated in an international application or a subsequent designation. WIPO has supported Bangladesh's preparation for accession, including a national seminar in Dhaka in 2026, but until accession takes effect a foreign owner needs a national trade mark registration filed directly at the DPDT under the Trademarks Act 2009. We file these applications for foreign owners and their counsel, and we will advise on how to integrate Bangladesh into a Madrid portfolio once membership is in force. Until then, filings run in parallel.

02

Can a Bangladeshi company use the Madrid System to protect its brand abroad?

Only through a qualifying link to a member country. A Madrid applicant must be a national of, domiciled in, or have a real and effective industrial or commercial establishment in a member. A company that is only Bangladeshi cannot currently file. Groups with a genuine subsidiary or establishment in a member country, such as the UK, an EU state or the UAE, may file through that entity, using a base application there. The ownership, licensing and tax consequences must then be planned, because the overseas entity will own the international trade mark registration. Trade mark registration abroad then needs coordination.

03

What is the risk of the five-year dependency period under Madrid?

For five years from the international registration date, the international registration depends on the base application or registration in the office of origin. If the base mark is refused, cancelled or limited during that period, the international registration is cut back to the same extent in every designated country. That is often called central attack. Owners can transform affected designations into national applications within a limited time, keeping the original date, but at extra cost. We therefore check that the base mark is strong and broad enough before the international application is filed. Careful base filings reduce this risk.

04

We are selling a brand. How do we transfer the registrations?

The sale agreement should list every trade mark registration and application by country, and the buyer should check eligibility to hold any international registration. Under Madrid, the change of ownership is recorded with the International Bureau for some or all designated countries, and national registrations, including Bangladesh filings, are recorded at each office using local forms and evidence. Partial transfers by goods or territory are possible but need care. We prepare the assignment, a recordal checklist and the closing deliverables so the buyer can enforce and renew the brand from day one. Delays in recordal can block renewals.

05

How long does trade mark registration take in Bangladesh at the DPDT?

Timing depends on examination workload, objections, publication and whether anyone opposes. A straightforward application can still take a considerable time from filing to registration, and contested files take longer. Rights are generally treated as dating from the filing date once registration is granted, so early filing is important. We monitor the application, respond to objections promptly and advise on interim steps, such as confidentiality and contract protection with distributors, while the trade mark registration is pending. We give a realistic estimate at the start rather than a promise the office cannot keep. Filing early remains the best protection.

06

What happens when a designated office issues a provisional refusal against our mark?

A provisional refusal means the designated office has found an obstacle under its own law, such as an earlier conflicting mark, an unacceptable specification or lack of distinctiveness. It applies only in that country, and the international registration continues elsewhere. The owner usually responds through local counsel within a fixed time limit, by argument, evidence, amendment or agreement with the earlier owner. We coordinate the response, assess whether the market justifies the cost and update the portfolio schedule with the outcome, so the brand team always knows where the brand stands. Each response is costed before filing.

07

Do we need to use the mark to keep the registration valid?

Yes, in most countries a registered mark becomes vulnerable to cancellation if it is not used for a continuous period set by local law, and use must usually be genuine and for the registered goods or services. Bangladesh law also allows non-use challenges. Owners should keep dated evidence of use in each market, such as invoices, packaging, advertising and online listings, and review whether the mark is used in the registered form. We organise evidence files and advise on refiling where a business has changed its logo or range. Non-use rules differ between markets, so local checks matter.

08

How should brand licences be handled across the whole portfolio?

Licences should match the registrations: the same owner, marks, goods and territories. In Bangladesh, recording a licensee or registered user can support enforcement and the payment of royalties abroad, which also involves foreign exchange rules, Bangladesh Bank reporting and withholding tax. Under Madrid, licences can be recorded for some designated countries. Quality control clauses help preserve the mark and its reputation. We draft the licence and the recordal filings together, so that the trade mark registration portfolio and the commercial arrangements support each other rather than conflict. A recorded licence also helps evidence use of the brand.

How a matter runs

From first call to resolution.

  1. 01

    Audit and clear

    We list existing marks, filings and use by market, run clearance searches for new marks, and identify gaps, conflicts and outdated records across the Bangladesh and international portfolio before any new filing is approved. Priorities are ranked by risk, and the findings are summarised in a short report with recommended next steps.

  2. 02

    Choose the route

    We recommend national, regional or Madrid filings for each market, confirm entitlement and the base mark, and agree a filing budget and timetable with the client and overseas counsel. Entitlement is confirmed in writing, and no filing fees are incurred until the client has approved the budget.

  3. 03

    File and prosecute

    We file the Bangladesh application at the DPDT and coordinate international filings, then manage objections, provisional refusals and oppositions until each trade mark registration is secured or a decision is taken to withdraw. The client receives a short update after each office action or deadline, so nothing waits on missing instructions.

  4. 04

    Control changes

    We record ownership, name, address and licence changes in every office, diarise renewals, maintain evidence of use and keep one portfolio schedule that matches the corporate and commercial position. The schedule is reviewed annually against the registers, so that owner names and addresses match in every office.

“Demonstrates an extraordinary command over both domestic litigation and international arbitration.”

The Legal 500 Asia Pacific, Bangladesh: Dispute resolution, client feedback

FAQ

Questions, answered.

Still unsure? Email info@trw.co with a short outline of the matter.

What does trade mark registration protect in practice?
Trade mark registration gives the owner the exclusive right to use a sign, such as a name, logo, slogan, colour combination or shape, for the goods and services covered, and to stop others using identical or confusingly similar signs. In Bangladesh, registration is granted by the DPDT under the Trademarks Act 2009. Protection is territorial, so each country where the brand trades needs its own right. Trade mark registration is the foundation for enforcing the brand against copies.
Is Bangladesh a member of the Madrid Protocol?
Not at the time of writing. Bangladesh has been preparing for accession with WIPO support, and seminars on the Madrid System took place in Dhaka in 2026. Until membership takes effect, Bangladesh cannot be designated, and Bangladeshi companies cannot file Madrid applications unless they have a qualifying link to a member country. We monitor progress and will update clients as the position changes. Planning a Bangladesh national filing now avoids gaps while accession progresses. Foreign owners should file now.
Should we register in Bangla script as well?
If the brand will be used or known locally in Bangla, filing the Bangla version or transliteration is often worth considering, because infringers frequently use local-script versions of popular marks. The decision depends on how customers refer to the brand and the cost of an extra filing. We review packaging, advertising and customer usage before recommending additional trade mark registration filings. Many brand owners also register device marks combining both scripts. Mixed-script marks are common locally.
Can a local distributor register our mark in Bangladesh?
It happens, especially where a foreign owner delays filing. Distribution agreements should confirm that all rights belong to the owner and require the distributor to assign any filings made in its name. If a distributor or third party has already filed, opposition, rectification or negotiation may be needed. Filing early is the most effective protection against this risk. Distribution agreements should also require cooperation with any trade mark registration recordals and transfers. We can audit existing filings.
How many classes should we file in for each market?
File in the classes covering goods and services the brand actually sells or genuinely plans to sell soon, plus any closely related classes where confusion or counterfeiting is likely. Over-broad specifications cost more and can be challenged for non-use. We review the product roadmap and advise on a specification that protects the business without wasting fees across the portfolio. Classes can be added later by new filings, but not by amending an existing application. Fees rise with each class.
How long does trade mark registration last?
Registrations are renewable, so a mark can be protected indefinitely as long as renewal fees are paid on time and the mark is used. International registrations under Madrid run for ten-year periods, while national terms and renewal rules vary by country, including in Bangladesh. We diarise every renewal and send reminders well before each deadline, with a recommendation on whether to renew. Missing a renewal can lead to loss of the right, sometimes with only a short grace period.
What if our mark is already registered by someone else abroad?
We first check whether the earlier mark covers the same goods, whether it is in use and whether it is vulnerable to cancellation for non-use or bad faith. Options include opposition, cancellation, a co-existence agreement, purchase of the earlier mark or rebranding in that market. The right route depends on cost, timing and how important the market is commercially. We advise on the options and likely costs before any approach is made to the earlier owner.
What do you need to start a filing plan?
Send the marks and logos, the goods and services, target markets with launch dates, existing registrations or applications, and details of any distributors or licensees. We will confirm the urgent steps, recommend routes for each market and provide a staged budget for the trade mark registration programme before any filing is made, usually within a few working days. Initial discussions are confidential and free of obligation. Draft logos are fine at this stage, and we can advise on design choices that are easier to protect.

Register your brand before someone else does

Speak with the partners about trade mark registration in Bangladesh or across borders.

Book a consultation →
trade mark registration: TRW & Co, Dhaka
Call the Dhaka office+880 1708 000660WhatsApp · message usMessage our team
Message TRW on WhatsApp