A Complete Guide to Trademarks in Bangladesh: Registration, Protection & Enforcement
Understanding Trademarks in Bangladesh: Protection, Registration, and Enforcement
What is a Trademark?
A trademarks in Bangladesh identifies the product of its origin and guarantees its unchanged quality. A trademark advertises the product and distinguishes it from others and is governed by The Trademarks Act, 2009. According to section 2(8) of the Act, a trademark can be any symbol, word, number, phrase, design, or any combination thereof which is used to identify the source of goods or services. There are mainly three kinds of trademarks namely, registered trademarks, mark, and certified trademarks.
A registered trademark, or mark, refers to the exclusive right granted to an individual to use that mark in commercial transactions or business activities as the owner. Furthermore, a certification trademark is a forthcoming symbol that will be utilised in association with the goods, and the individual possessing the rights or any authorised person will be permitted to utilise it.
Understanding Trademarks:
Under modern business conditions, a trademark performs four functions:
- It identifies the product and its origin, representing the manufacturing company.
- It guarantees its unchanged quality.
- It advertises the product.
- It creates an image for the product.
Significance of Registration:
By obtaining trademark registration, you can effectively prohibit others from utilising an identical or comparable mark and logo, so mitigating the risk of harm to your brand’s reputation and trustworthiness. Section 25 of the aforesaid Act grants exclusive right to use the trademark in relation to those goods and services for which it has been registered guaranteeing that no one else may assert ownership over it.
Process of Registration in Bangladesh:
It is prudent to verify whether a comparable trademark is already registered under someone else’s ownership prior to commencing the registration process. The registration procedure is outlined as follows:
- Step 1: An individual or enterprise may submit a written application to the Registrar at the Trademarks Registry office located within the jurisdiction where the principle business is located.
- Step 2: Foreigners or those unable to file personally must authorize a lawyer or agent through a Power of Attorney, submitted via FORM TM-10 with associated fees and 15% VAT, for registration.
- Step 3: The Registrar evaluates the trademark to determine its distinctiveness. Upon approval, a Letter of Acceptance is issued, and the trademark is then published in the Trade Marks Journal. The duration of this process is typically 3 to 6 months.
- Step 4: Upon receiving the application it will be undergo an examination process as required by section 17 of the Act. The purpose of this requirement is to check whether any other person has any objection with regard to the same mark/s.
- Step 5: The proposed trademark is published in the Trade Marks Journal, inviting the public to file an opposition within two months.
- Step 6: After publication, any individual has a period of two months to object by submitting a notice of opposition using FORM TM-5. This process includes presenting counter-statements and appeals.
- Step 7: After the opposition period ends without any disputes, the Registrar informs the applicant to proceed with fee payment. Following payment, a Certificate of Registration, valid for 7 years from the filing date, is issued. Submission of the registration is done through the TM 11 form.
- Step 8: Moreover, trademarks are eligible for unlimited renewal by payment of the renewal fees. Failure to renew may lead to removal from the Registrar, requiring submission of form TM-12 for renewal.
Share this Article
Understanding the consequences of unregistered foreign Trademarks in Bangladesh:
While unregistered foreign trademarks do not have the same level of protection as registered trademarks in Bangladesh, they are still subject to legal action if violated. Some possible courses of action include:
- Common Law Protection: Even without registration, foreign trademarks may still receive protection under common law principles, especially if they can prove prior use or established goodwill in Bangladesh in accordance to the Paris Convention for the Protection of Industrial Property, 1883.
- Passing off Action: If someone is using an unregistered foreign trademark in a way that misleads consumers into believing it’s associated with another business or product, the owner of the trademark may bring a passing off action to prevent this deception and seek damages under the Trademarks Act, 2009.
- Unfair Competition Laws: Bangladesh’s laws against unfair competition may offer recourse if someone is unfairly benefiting from the unregistered foreign trademark’s reputation or goodwill in accordance to the Competition Act, 2012.
- Customs Enforcement: Bangladesh Customs authorities may provide assistance in preventing the importation or exportation of goods that infringe upon unregistered foreign trademarks. This can include seizing counterfeit goods at the border.
Infringement of the Mark:
Infringement Trademarks in Bangladesh arise when an individual utilizes a trademark that closely resembles an already registered trademark, without the consent of the trademark proprietor. This encompasses employing a similar trademark for goods or services akin to those for which the original trademark is registered, or utilizing a trademark that is liable to confuse consumers.
The trademark proprietor retains the prerogative to initiate legal proceedings to halt the unauthorized use of the trademark and to pursue compensation for any resulting damages guided by Section 26 of the Act. These actions can be pursued either through judicial channels or via administrative procedures.
Available remedies for Infringement of registered Trademarks:
The Department of Patents, Designs and Trademarks (herein referred to as ‘DPDT’) can conduct investigations into trademark infringement and take administrative action against the infringers. The DPDT can also assist trademark owners in resolving disputes and protecting their rights through negotiation, mediation, and alternative dispute resolution mechanisms.
Moreover, the District Judge Court has original jurisdiction in cases of Trademark, Patent or Copyright violations. In Bangladesh, individuals have access to various civil remedies to address trademark infringement. The following remedies are available for Trademark violation:
- An order of injunction can be sought from the District Judge Court having jurisdiction in the place where the infringement took place; and
- Monetary Damages may be obtained; or,
- Delivery up or destruction of infringing goods may be ordered; or,
- The delivery-up of the infringing labels and marks for destruction; or
Publish cautionary notices in newspapers
An injunction is an order issued by a court that compels the party that has violated trademark rights to cease using the trademark in question. This remedy is frequently sought to mitigate ongoing harm to the rights of the trademark owner and to prevent future instances of infringement.
Damages are a form of financial compensation granted to the owner of a trademark for any loss caused by the unauthorised use of the brand. This may encompass reparation for financial losses, as well as indemnification for any detriment to the positive reputation or standing of the Trademarks in Bangladesh.
In certain instances, the trademark owner may have the right to demand the delivery or destruction of infringing goods. This measure aims to prevent further harm to the trademark owner’s rights caused by the presence of infringing goods.
An account of profits is a legal requirement that obligates the party who infringed upon a trademark to provide a detailed report of any financial gains that were obtained as a direct consequence of the unauthorised use of the brand. This remedy is specifically formulated to prevent the party that is engaging in infringement from unfairly benefiting from their infringing conduct.
A trademark cautionary notice is a valuable tool for informing the public about the ownership and status of a trademark, deterring potential infringement, and defending against challenges to the trademark’s validity. It alerts competitors, investors, traders, and potential partners. While there are no set guidelines for publishing such notices, businesses often advertise them in newspapers several times a week for a short period before renewing them annually.
Lastly, section 73-76 of the Trademark Act, 2009 constitutes the penalty provisions for infringement trademarks in Bangladesh. The highest punishment for trademark infringement is outlined in section 73, which states the following: penalty for selling goods bearing a false trademark or trade description: imprisonment for a term of up to 2 years, and/or a fine. For a second or subsequent conviction, imprisonment for a term of up to 3 years, and/or a fine.
Challenges under the Act:
While the introduction of the Trademarks Act in 2009 was seen as a significant step forward for trademark protection and fulfilling TRIPS obligations in Bangladesh, it notably lacked any provisions mandating the compulsory registration of trademarks in the country. It is important to note that the law does not specifically provide a time frame within which a trademark may be registered as it is done through a step-by-step process and may also be subject to certain conditions/limitations.
In addition, Trademarks in Bangladesh is not a signatory to the Madrid Protocol, as a result foreign trademarks are not protected unless the owner files an application for registration in Bangladesh. The Act also does not address digital based businesses or e-commerce community. In light of the rapid expansion of e-commerce in global trade and business, the need for trademark protection in this domain has become a necessity.
Moreover, parallel trading also referred to as parallel importation or grey market trading, is the act of importing authentic branded products into a country using channels that are not authorized by the brand owner. These goods are typically intended for export to a market where they are sold at a lower price. Parallel traders exploit price disparities between countries by purchasing goods in one market and reselling them in another to make a profit.
The legality and acceptance of parallel trading exhibit substantial variation among different countries and regions. Certain countries have legislation or legal precedents that permit parallel trading such as the European Union, Switzerland, Norway, Japan etc., under specific circumstances, whereas others have stringent regulations or outright prohibitions on it i.e. US, Canada, Australia etc. While parallel trading is a well-known and widely practiced activity in many regions of the country, it is not specifically covered by the Trademark Act of 2009.
Conclusion
In conclusion, despite the significant advancement in trademark protection and compliance with TRIPS obligations brought about by the Trademarks Act of 2009 in Bangladesh, notable gaps exist within the legislation. Thus, addressing the aforementioned gaps and providing comprehensive protection to owners can actually evolve the landscape of law of Trademarks in Bangladesh and global commerce.
References:
- Trademarks Act, 2009
- Paris Convention for the Protection of Industrial Property, 1883.
- Madrid Agreement Concerning the International Registration of Marks (1891) and the Protocol Relating to that Agreement (1981)
- https://www.linkedin.com/pulse/trademark-law-bangladesh-bdlex-manupatra
- https://www.wipo.int/trademarks/en/#:~:text=What%20is%20a%20trademark%3F,protected%20by%20intellectual%20property%20rights
- https://resource.ogrlegal.com/trademark-registration-bangladesh/
- https://www.wipo.int/edocs/mdocs/mdocs/en/wipo_ipr_tyo_17/wipo_ipr_tyo_17_t15.pdf
- https://oldbaileybd.com/ipr-enforcement-import-and-export-rules-2019-nbr-to-boost-revenue-earnings-for-bangladesh/#:~:text=Under%20the%20current%20IPR%20Enforcement,with%20the%20relevant%20customs%20houses.
- https://testbook.com/key-differences/difference-between-registered-trademark-and-unregistered-trademark