Trademark Infringement: What Remedies Are Available in Bangladesh?

Trademark infringement is one of the most common forms of trademark-related litigation. Individuals who have had their trademark rights infringed upon sue the infringer/defendant in court, and seek some form of remedy to compensate them for the economic injury that they have suffered due to the infringement of their trademark rights. Compensation does not always have to mean an award of money, especially in trademark infringement cases.

Section 26 deals with the Infringement of Trademarks. Usage by a person other than a registered proprietor of the identical or similar trademarks, the Trade Mark deemed to be infringed. On the other hand, Section 27 deals with the acts that do not amount to infringement. Lawful user, permitted use, etc. are provided in the section.


What is Trademark Infringement?

According to the Trademark Act, 2009 Infringement is unauthorized use of a registered trademark. The Act gives the registered proprietor exclusive right to the use of a trademark in respect of the goods that the Trademark is registered.

Without the consent or authorization of the registered proprietor if anyone uses the registered mark commits infringement. Further use of a similar mark to the registered mark does also constitute an infringement of the registered mark.

Case law on Trademark Infringement
The Court always use its discretionary power to determine such infringement for the greater good. Even the Court is rigid enough to rectify the registered trademarks to provide a safe and non-confusing environment to the public at large to choose the right and good quality products by identifying the original brand by looking and hearing the name of the brand itself. In Baby Food Products Ltd. Vs Nabisco Biscuit and Bread Factory Ltd. 30 BLD (HCD) 2010 Page-27, it was held by the High Court Division that due to the deceptively similar name six Trademark registrations should be expunged and rectified from the Register of Trademarks. The Appellate Division in appeal by the Baby Food Products Ltd. has affirmed the decision of the High Court and held that whatever product the appellant is producing and selling in the trade name of NABICO is likely to deceive the people at large who will presume the products to be of the NABISCO being misled by the similarity in sound.



What Legal Rights and Protections Are Accorded to Registered Trademarks?

In accordance with Section 25 of the Trademarks Act, only the registered owner of a trademark can use the same and, in case of infringement of the registered mark, the owner reserves the right to initiate an infringement suit against the infringer before the court and obtain relief as enumerated in Section 97 of the act. Relief in this regard may include injunctions, damages or accounts of profits, together with delivery of the infringing material for destruction or erasure.



Passing Off

As per Section 96 (d) of the Act 2009, passing off arising out of the use by the defendant of any trademark which is identical with, or, deceptively similar to, the plaintiffs trademark, whether registered or unregistered. So, the passing off is indicating the prohibition mentioned above under Section 10 of the Act 2009. To avoid the passing off issue, the Registrar of Trademarks must see whether a trademark is deceptive or misleading and there are some prohibitions of registration of identical or deceptively similar trademarks. These prohibitions are as follows:

  • No trademark shall be registered in respect of any goods or description of goods or in respect of any services or description of services which is identical or deceptively similar to trademarks.
  • No trademarks shall be registered in respect of any goods or services if it is identical with or confusingly similar to or constitutes a translation or a mark or trade de4scription which is well-known in Bangladesh for identical or similar goods or services of another enterprise.
  • In determining whether a mark is well known the knowledge of the mark in the relevant sector of the public, including knowledge which has been obtained in Bangladesh as a result of the promotions of the mark, shall be taken into account.
Case law on Passing off
In the case of New Zealand Milk Brands Ltd. Vs Sanowara Dairy & Industries Ltd. 30 BLD (HCD) 2010, the High Court Division stated that the only test that has to be applied when the court is considering a case under Section 10 is the test of identity or resemblance. Even if the applicant could establish a longe user, if the respondent could establish no user at all, if there was a resemblance between the marks of the applicant and the respondent, and if there was a likelihood of deception, and if the respondent was first in the field and had their trademark registered, the applicants trademark could not be registered.



Distinction between infringement and passing off

There are some basic differences between the infringement of trademark and passing off and these are as follows:
  • In the infringement of trademark, registration is a must whereas registration is not so relevant for action under passing off,
  • In infringement, the defendant must use the trademark directly on the other hand the defendants product need not carry the same. If there is some representation, it is sufficient to take action under passing off.
  • If the marks of the defendant are deceptively similar, no further proof is required or necessary. On the other hand, the identity or similarity of the mark is not sufficient. The use of the mark is likely to deceive or cause confusion among the consumers.
  • Infringement is defined by the statute, whereas the passing off is highly influenced by the common law rights and remedies, like injunction etc.



Well-Know Trademark Protection in Bangladesh

In Bangladesh, the Trademark Registry recognizes well-known trademarks based on their International, National, and Cross Border reputation. As per the Trademark Act of 2009, protection of well-known trademarks is provided at 2 levels, which are as follows:

  • Against the registration of identical or similar marks.
  • Action against unauthorized access or misuse of a well-known trademark.


CIVIL REMEDIES against trademark infringement in Bangladesh

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 Magistrates Court, since the imitation or use of false trademarks is a non-cognizable and a bailable offense under Sections 482, 483, 485 and 486 of the Code of Criminal Procedure.

Besides civil infringement suit, IP 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 IP rights holders favor, then the court may grant a temporary or interlocutory injunction against the counterfeiter when the suit is filed.

Civil remedies include:
-an injunction restraining further use of the infringing mark;
-damages or an account of profits; and
-an order for delivery up of infringing labels and marks for destruction or erasure.

An injunction restraining further use of the infringing mark; damages or an account of profits; and an order for delivery up of infringing labels and marks for destruction or erasure. According to Section 96, the district courts are empowered to hear trademark disputes.




CRIMINAL REMEDIES against trademark infringement in Bangladesh

In cases of counterfeiting, a rights holder may file a criminal complaint with the police, which then investigates. 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 magistrates 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 magistrates order must be made to a district magistrate or session judge.

As per Section 73 of the 2009 Act, the punishment for applying for a false trademark so as to mislead consumers about the origin of the goods is imprisonment for up to two years but not less than six months or a fine up to taka two lac but not less than fifty thousand, or both and for a second or subsequent conviction, imprisonment up to three years but not less than one year or fine up to taka three lac but not less than one lac, or both. The courts also have the power to set the prison term and the amount of any fine.
-Such an offense shall be tried by the Metropolitan Magistrate or Magistrate of the first class.
-Besides, the Penal Code, 1860 by several sections (e.g. S. 482, 483, 485, 486, 487, 488) provides that such an offender may be punished with imprisonment of either description (simple or rigorous) for a term which may extend to three year, or with fine, or with both.
-The author concludes that though protection of unregistered trademarks is available under the Trademarks Act, 2009, it is better to nonetheless register well-known trademarks to avoid possible disputes.

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
  • The imposition of penalties on the infringer.


Customs Enforcement against trademark infringement in Bangladesh

In Bangladesh, all trading activities are regulated by the Ministry of Commerce under the Imports and Exports (Control) Act 1950. Upon receiving a complaint from a rights holder, the relevant customs authority may take steps against any person or entity that imports goods in violation of Sections 15 and 16 of the Customs Act. Section 15 of the Customs Act 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 copyrighted design 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 holders 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.

A rights holder may also approach the High Court Division to obtain an order directing Customs to detain or seize the counterfeit goods.




Administrative remedies

Under Section 42 of the Act 2009, an aggrieved person can apply to the Registrar of Trademark for removal of a registered trademark from the Register on the grounds either that the registered trademark lacks bonafide intention on the part of the owner to use it about those goods or services and there has been no such use till the date one month before the date of the present petition or the registered trademark was not used for five years or longer period up to a date one month before the date of the present petition.

Alternatively, under Section 43 of the Act 2009, an aggrieved person can apply to the Registrar of Trademarks for cancellation of trademark registration as a defensive trademark. Defensive trademark means a trademark consisting of any invented word has become so well-known as respects of any goods or services in relation to which it is registered and has been used, that the use thereof in relation to other goods or services, as the case may be, would be likely to be taken as indicating a connection in the course of trade.

FAQ

Registered trademark owners may file trademark infringement actions.

As per Section 86 of the Trademarks Act, the usual timeframe for infringement actions is three years from the date on which the cause of action arose.

Is it possible to have a descriptive trademark registered in Bangladesh?

The Limitation Act 1908 sets out the statute of limitations for filing infringement actions.

The Specific Relief Act 1877 sets out the rules and procedure governing the issuance of injunctions to prevent imminent or further infringement.

In case of infringement of a trademark, the defendant may use the following defenses:

- the doctrine of laches (if applicable);
- the doctrine of estoppel (if applicable);
- the dissimilarity between the marks (in cases where the plaintiff alleges similarity between the marks);
- the nature of the defendants goods are entirely different from that of the plaintiff;
- the defendants customer base is entirely different from that of the plaintiff; and
- the defendants goods and services are distinguishable from the plaintiffs goods and services.


Anyone aggrieved by the district judge order may appeal to the High Court Division.

Contact Person
J.A. Chaudhury Reagan

Advocate, Supreme Court of Bangladesh
+8801613336333
+8801711970318
info@supremeip.com
advreagan@gmail.com
WeChat ID: SUPREMEiP

Contact Person
J.A. Chaudhury Reagan

Advocate, Supreme Court of Bangladesh
+8801613336333
+8801711970318
info@supremeip.com
advreagan@gmail.com
WeChat ID: SUPREMEiP