The present legal basis of trade mark protection in Bangladesh is the Trademark Act of 2009 and Trademark Rules 1963. The 2009 Act gives the registered proprietor of a trademark in respect of any goods the exclusive right to the use of trademark in relation to those goods. That right is deemed to be infringed by any person who, not being the registered proprietor of the trademark or a registered user thereof using by way of permitted use.
Following are the circumstances under which a person is deemed to have infringed a registered trademark (the 2009 Act, sec.26):
1. Where a person uses a trademark which is identical or similar to the registered trademark used in the course of trade for the similar goods or services not being a “registered proprietor” or “permitted user” and cause confusion on the part of the public.
2. Where the registered trade mark is used in the course of trade for the goods or services which are not similar, but has reputation in Bangladesh and the use of the mark by the person without due cause, takes unfair advantage of or is detrimental to the distinctive character or repute of the registered trade mark.
3. Where a person who is not being duly authorized by the registered proprietor or a registered user uses the trade mark on a material intended to be used, for labeling or packaging goods, as business papers or for advertising goods or services.
4. Where a person not being a „registered proprietor‟ or „permitted user‟ uses a registered well-known trademark for the identical or similar goods or services for which the mark has been registered.
5. Where a person not being a „registered proprietor‟ or „permitted user‟ uses a registered well-known trademark for the goods or services not being identical with or similar to those in respect of which the mark has been registered, by using of the mark in relation to those goods or services, would indicate a connection between those goods or services and the owner of the registered well-known mark and that the interests of the owner of the registered well-known mark are likely to be damaged by such use.
- CIVIL ENFORCEMENT: The Trademark Act, 2009 provides for both infringement suits and passing off actions in case of registered and unregistered trademarks respectively. In the case of infringement suits, the trademark must be registered in Bangladesh as per Section 24(1) of the act. In the case of civil proceedings, passing-off proceedings can be instituted before an assistant judge or joint district judge. However, trademark infringement suits can be instituted only at a district court or higher.
The Code of Civil Procedure establishes that rights holders may file suits for permanent injunctions before the Dhaka District Court. If the infringement is proved, a suit for damages may then be filed separately.
- Preliminary Measures – The administrative authorities have no direct jurisdiction over counterfeiters and the seizure and/or confiscation of the infringing goods in question. The law governing agencies such as the police, the Bangladesh Rifles and the Rapid Action Battalion takes cognizance of any matter relating to counterfeiting only after being directed to by the Chief Judicial Magistrate’s Court, since the imitation or use of false trademarks is a non-cognizable and bailable offence under Sections 482, 483, 485 and 486 of the Code of Criminal Procedure.
In addition to a civil infringement suit, rights holders may file an application for a temporary injunction under Order 39, Rules 1 and 2 of the Code of Civil Procedure. If it is proved that there is a prima facie arguable case and that the balance of inconvenience is in the rights holder’s favour, then the court may grant a temporary or interlocutory injunction against the counterfeiter when the suit is filed.
- Remedies – The following remedies are available by way of civil action:
• Temporary injunction;
• Permanent injunction and attachment order with a declaration that the goods are counterfeit; and
• Claim for damages.
It can take up to three to four years for a case to be finally decided.
- CRIMINAL PROSECUTION: The following are criminal offences punishable under the Bangladesh Penal Code, 1860:
• Using a false trademark so as to mislead consumers about the origin of the goods; and
• Counterfeiting a trademark used by another person.
The punishment for using a false trademark is imprisonment for up to one year or a fine, or both. The punishment for counterfeiting is imprisonment for up to two years or a fine, or both. The courts also have the power to set the prison term and the amount of any fine. In addition, the Penal Code identifies a number of activities as criminal offences and sets out various enforcement measures available to rights holders. Two such offences, and their punishments, are as follows:
• making or possessing any instrument for the purpose of counterfeiting a trademark – the punishment for this offence is imprisonment for up to three years or a fine, or both; and
• selling, exposing or possessing for sale or any purpose of trade or manufacture any goods bearing a counterfeit mark – the punishment for this offence is imprisonment for up to one year or a fine, or both.
- Preliminary Measures – In cases of counterfeiting, a rights holder may file a criminal complaint with the police, which then investigate. If the complaint is proved, the case then goes to trial before a court. In addition, police officials may launch raids against counterfeit and pirated goods and may take legal action.
All criminal proceedings begin in the magistrate’s court. All criminal cases relating to false trademarks or counterfeiting are tried by a magistrates court (first or second class, or a metropolitan magistrate in an urban area). Any appeal against the magistrate’s order must be made to a district magistrate or session judge.
- Remedies – Remedies available in criminal actions include the following:
• Raids on the premises where the counterfeit goods are stored;
• Seizure of the goods;
• Destruction of the counterfeit goods; and/or
• Imposition of penalties on the infringer.
- BORDER MEASURES (CUSTOMS): In Bangladesh, all trading activities are regulated by the Ministry of Commerce under the Imports and Exports (Control) Act 1950. In addition, Section 15 of the Customs Act, 1969 prohibits the import of goods, whether by air, land or sea, that fall within the following categories:
• Goods marketed under a counterfeit trademark or false trade description;
• Goods made or produced outside Bangladesh and intended for sale under a design in which copyright exists under the Patents and Designs Act in respect of the class to which the goods belong or any fraudulent or obvious imitation of such design without a license or the rights holder’s written consent; and
• Goods made or produced outside Bangladesh and marketed under any name or trademark being or purporting to be the name or trademark of any manufacturer, dealer or trader in Bangladesh.
As per Section 17 of the Customs Act: “if any goods bearing registered trademarks are imported into or attempted to be exported out of Bangladesh in violation of the provision of Section 15 or of a notification under Section 16, such goods shall, without prejudice to any other penalty to which the offender may be liable under this act or any other law, be liable to be detained and confiscated and shall be disposed of in such a manner as may be prescribed.”
There is no provision for the recordal of trademarks with Customs. However, upon receiving a complaint from a rights holder, Customs may take steps against any person or entity that imports goods in violation of Sections 15 and 16 of the Customs Act. Moreover, a rights holder may approach the High Court to obtain an order directing Customs to detain and/or seize the counterfeit goods.