Madrid Protocol and the Trademark (Amendment) Act 2025: Is Bangladesh ready?

Bangladesh's forthcoming graduation from LDC status requires a substantial overhaul of its regulatory frameworks to meet international obligations. Among the priority areas is Intellectual Property (IP) law, which is of increasing interest to global partners. 

IP encompasses creations such as literary works, inventions, designs, and trademarks, all of which require robust protection mechanisms. Laws including the Patent Act, Design Act, Copyright Act, Trade Secrets Law, and Trademark Act collectively secure these rights, enabling individuals and businesses to innovate with confidence. Trademarks, in particular, safeguard a creator's unique identity in the market and incentivise innovation.

To align with global standards, the Ministry of Industries (MoI) has been working earnestly to amend the Trademark Act 2009. The result is a draft Trademark (Amendment) Act 2025, which includes 27 proposed amendments — a combination of new provisions and revisions to the existing act. 

One major goal is to integrate the international classifications and frameworks of the World Intellectual Property Organization (WIPO), particularly through adoption of the Nice Agreement and Vienna Agreement. 

While the proposed amendments to the Trademark Act are timely and necessary for Bangladesh's global integration, they must be guided by thorough analysis, widespread consultation, and strategic capacity-building. Only then can these reforms genuinely protect local innovation while positioning the country as a credible participant in the global IP landscape.

The proposed clause 19(Ka) addresses the adoption of the Madrid Agreement Concerning the International Registration of Marks (1891), while clause 19(Kha) introduces the Madrid Protocol, an essential update for facilitating international registration.

Significantly, the definition of a trademark will be expanded to include non-traditional elements such as sound, colour, scent, and packaging. A long-standing demand for the establishment of a dedicated court for trademark disputes is also addressed in the draft. 

Other noteworthy amendments include clearer timelines for registration, mechanisms for correcting errors, provisions for parallel imports, and the abolition of Chapter 9 which previously addressed textile-related trademarks.

Clause 91(Ka) empowers the Director General of the Trademark Office with enforcement authority against violators, while clause 91(Kha) introduces mobile courts into the enforcement framework. However, the appropriateness of mobile courts for civil rights cases like IP violations remains contested, as entrepreneurs have voiced reluctance about rapid legal proceedings without full due process.

To deliberate these changes, the Business Initiative Leading Development (BUILD) recently hosted a dialogue with lawmakers, legal practitioners, academics, and business owners. A key focus was the implications of joining the Madrid Protocol, particularly how it will internationalise Bangladesh's trademark registration through WIPO. 

Participants questioned whether the existing domestic infrastructure — including limited skilled personnel, outdated technology, and a lack of regional help desks — is equipped to handle such a leap.

While accession to the Madrid Protocol would allow businesses to file a single application for protection in 131 countries, offering clear advantages to exporters and innovators, it comes at a steep cost. 

Trademark registration fees under the Protocol are 903 Swiss Francs (approximately Tk134,228) for colour trademarks and 639 Swiss Francs (about Tk94,949) for black and white versions — plus VAT. These rates are prohibitively expensive for many SMEs, especially when multiple products require simultaneous registration. Presently, foreign applicants far outnumber local ones in certification — a 70:30 ratio — primarily due to the limited capacity of local enterprises.

The government has recognised the urgency of digitalisation and integration with WIPO databases, especially to verify the uniqueness of names and marks at the preliminary registration stage. 

Yet, language remains a barrier in international communications and compliance processes. The draft amendment does not yet clarify how conflicts between WIPO and domestic databases will be resolved, or what safeguards will be in place if a trademark is challenged or rejected post-registration.

Further, concerns were raised about how Bangladesh's nascent industries, which often imitate foreign designs, would withstand competition from established international brands once the market is liberalised. 

With few globally recognised Bangladeshi brands, there is apprehension that local industries may struggle. For instance, despite the pharmaceutical sector's growing exports, firms often prefer individual registrations over the Madrid route due to strategic and cost considerations.

Stakeholders urged caution, recommending that the country not rush into international commitments. Bangladesh must first assess its own capacity, educate entrepreneurs, and create a time-bound implementation roadmap. Without adequate preparation, premature alignment with the Madrid Protocol could result in widespread rejection of trademarks, undermining domestic industry.

The amendment also proposes the inclusion of parallel import provisions under clause 26(4Ka), which introduces the concept of "international exhaustion." While this is acknowledged under WTO and permitted in Bangladesh's Patent Act 2023, discrepancies remain between related statutes such as the Import Policy and the Customs Act 2023. 

For example, Article 6(Ga) of the Import Policy requires prior permission from brand holders before parallel imports, suggesting a potential legal misalignment. Effective implementation will demand synchronisation across all relevant laws and institutions, particularly Customs.

The dialogue also highlighted confusion regarding mobile versus special courts. Since intellectual property rights fall under civil jurisdiction, their resolution via mobile courts is legally questionable. The specific jurisdiction and framework of proposed special courts must be clearly articulated before incorporation into law.

One curious amendment is the proposed replacement of the term Registrar with Director General. While this may reflect bureaucratic changes, it clashes with terminology used in the Vienna Agreement and Madrid Protocol, where "Registrar" is standard. If the goal is international alignment, such inconsistencies could be counterproductive.

Bangladesh's interest in joining the Madrid Protocol aligns with broader economic strategies, such as the pursuit of an Economic Partnership Agreement with Japan, multiple Free Trade Agreements (FTAs), and potential participation in the Regional Comprehensive Economic Partnership (RCEP). These developments necessitate legal harmonisation across sectors. Immediate priorities include conducting impact studies, mapping stakeholders, and upgrading technological and institutional capacities.

A final point of contention was procedural: should Bangladesh first amend the Act and then sign the Protocol, or vice versa? The consensus leaned towards preparation before legal commitment. Signing international agreements without readiness creates binding obligations that could disrupt, rather than support, national development.

In sum, while the proposed amendments to the Trademark Act are timely and necessary for Bangladesh's global integration, they must be guided by thorough analysis, widespread consultation, and strategic capacity-building. Only then can these reforms genuinely protect local innovation while positioning the country as a credible participant in the global IP landscape.

Sketch: TBS

Ferdaus Ara Begum is the CEO of BUILD, a Public Private Dialogue Platform that works for private sector development. 

Disclaimer: The views and opinions expressed in this article are those of the author and do not necessarily reflect the opinions and views of The Business Standard.