Protecting Your Brand: Exploring Trademark Infringement Solutions in Bangladesh

Understanding Trademark Infringement in Bangladesh

Trademark infringement in Bangladesh occurs when an individual or entity uses a trademark identical or confusingly similar to an existing registered trademark without the owner's permission. This unauthorized use can lead to consumer confusion and damage the reputation of the original trademark owner.

To establish trademark infringement in Bangladesh, the trademark owner must demonstrate:

• The similarity between the infringing mark and the registered trademark
• The likelihood of consumer confusion
• The unauthorized use of the trademark

Civil Remedies

When faced with trademark infringement, trademark owners in Bangladesh have several civil remedies at their disposal:

• Injunctions: Courts can issue orders requiring the infringing party to cease using the trademark in question. This remedy helps prevent ongoing harm to the trademark owner's rights and deters future infringements.
• Damages: Monetary compensation may be awarded to the trademark owner for losses incurred due to the infringement. This can include:
  • Lost profits
  • Damage to goodwill or reputation
  • Legal fees and costs associated with pursuing the case
• Account of Profits: The court may order the infringing party to disclose and hand over any profits gained from the unauthorized use of the trademark. This remedy aims to prevent unjust enrichment.
• Delivery or Destruction of Infringing Goods: In some cases, the court may order the infringing party to surrender or destroy any goods bearing the infringing trademark. This helps prevent further distribution of counterfeit products.

Criminal Remedies

The Trademarks Act, 2009 of Bangladesh provides criminal remedies for severe cases of trademark infringement:

• Fines: Infringers may face fines of up to 50,000 Taka (approximately $590 USD) for each instance of trademark infringement.
• Imprisonment: The court may impose a prison sentence of up to three years for each instance of trademark infringement.
• Seizure of Infringing Goods: Law enforcement agencies can seize counterfeit goods, and the infringing party may be required to pay additional damages to the trademark owner.

It's important to note that criminal remedies are typically reserved for serious cases of trademark infringement and are often pursued in conjunction with civil remedies.

Customs Enforcement

Bangladesh's customs authorities play a crucial role in preventing the import and export of counterfeit goods:

• The Ministry of Commerce regulates trading activities under the Imports and Exports (Control) Act 1950.
• Customs authorities can take action against individuals or entities importing goods that violate Sections 15 and 16 of the Customs Act.
• Section 15 prohibits the import of:
  • Goods with counterfeit trademarks or false trade descriptions
  • Goods produced outside Bangladesh intended for sale under copyrighted designs without proper licensing
  • Goods marketed under names or trademarks of Bangladeshi manufacturers without authorization
• Section 17 of the Customs Act allows for the detention, confiscation, and disposal of goods imported or exported in violation of Sections 15 or 16.
• Trademark owners can petition the High Court Division for an order directing Customs to detain or seize counterfeit goods.

Administrative Remedies

Administrative remedies offer a more efficient and cost-effective approach to addressing trademark infringement in Bangladesh:

• Registrar of Trade Marks: Under the Trade Mark Act, 2009, the Registrar has the authority to:
  • Suspend or cancel infringing trademark registrations.
  • Impose fines
  • Issue cease and desist orders
• Department of Patents, Designs and Trademarks (DPDT): This government agency can:
  • Conduct investigations into trademark infringement
  • Take administrative action against infringers
  • Assist in dispute resolution through negotiation and mediation
• Removal of Registered Trademarks: Under Section 42 of the Act 2009, an aggrieved party can apply for the removal of a registered trademark if:
  • The owner lacks genuine intent to use the trademark
  • The trademark has not been used for five years or longer
• Cancellation of Defensive Trademarks: Section 43 of the Act 2009 allows for the cancellation of defensive trademark registrations under specific circumstances.

Defenses Against Trademark Infringement

Accused infringers in Bangladesh may employ several defenses:

• Fair Use: Using a trademark for comparative advertising or news reporting may be considered fair use.
• Prior Use: Demonstrating the use of the trademark before the plaintiff's registration can be a valid defense.
• Non-Infringing Use: Proving that the use of the trademark is unlikely to cause consumer confusion.
• Lack of Knowledge: Showing that the use of the trademark was unintentional and without prior knowledge of its existence.
• The invalidity of the Trademark: Challenging the validity of the plaintiff's trademark registration.
• Doctrine of Laches: Arguing that the plaintiff unreasonably delayed in asserting their rights.
• Doctrine of Estoppel: Claiming that the plaintiff's conduct prevents them from asserting their rights.
• Dissimilarity Between Marks: Demonstrating significant differences between the defendant's mark and the plaintiff's trademark.
• Different Nature of Goods or Services: Showing that the defendant's products or services differ entirely from the plaintiff's.
• Distinct Customer Base: Proving that the defendant's target market differs entirely from the plaintiff's.

Case Law on Trademark Infringement

Bangladesh's courts have established precedents in trademark infringement cases:

In the case of Baby Food Products Ltd. vs. Nabisco Biscuit and Bread Factory Ltd. (30 BLD (HCD) 2010 Page-27), the High Court Division held that six trademark registrations should be expunged and rectified due to deceptive similarity. The Appellate Division affirmed this decision, stating that the use of "NABICO" was likely to deceive consumers who might confuse it with "NABISCO" products.

This case highlights the courts' commitment to protecting consumers from confusion and maintaining the integrity of registered trademarks.

Seeking Legal Assistance

Given the complexity of trademark infringement cases in Bangladesh, it is highly recommended that you seek the assistance of an experienced trademark attorney or lawyer. These professionals can:

• Provide expert guidance on protecting trademark rights
• Assist in filing and prosecuting trademark applications
• Represent trademark owners in infringement cases
• Navigate the various remedies available under Bangladeshi law
• Negotiate settlements and licensing agreements

By working with a knowledgeable legal professional, trademark owners can protect their intellectual property rights effectively and take appropriate action against infringers.

By understanding the various remedies available for trademark infringement in Bangladesh and working with experienced legal professionals, trademark owners can better protect their valuable intellectual property assets and maintain their competitive edge in the market.

This article was written by J.A. Chaudhury Reagan, Advocate, Supreme Court of Bangladesh. All rights reserved.