The confusion about class in trademark law

Apart from enactment of the Trademark Act, 2009 (TTA, 2009), Bangladesh is also one of the signatories to the Paris Convention for Protection of Industrial Property (since March 1991) and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) (since January 1995).
The class factor in the process of trademark registration baffles most of our manufacturers and industrialists. There are different classes of goods and services that require trademark registration. For the purposes of this classification of goods and services Bangladesh follows the Nice Classification (hereinafter referred to as NCL) established under the Nice Agreement, 1957. It is an international classification of goods and services requiring registration of trademarks.
The trademark registration process in Bangladesh is maintained in compliance with international treaties. Section 8 of the TTA, 2009 stipulates a few restrictions on trademark registration. Section 10 (4) of the TTA, 2009 clearly states: ''...trademark of any goods or service shall not be registered, if it is formed by translation of any identical mark or trade description of other business firm which is well-known in the country.''
It has been enunciated in Section 15 (2) of the TTA, 2009 that the trademark registration must be done separately for each class of goods and services. There are certain drawbacks of this section, though it has been enacted following international treaties. A manufacturer, who has been probably manufacturing products of a particular class for years under a registered trademark, might want to expand his business in future producing similar but not identical kinds of products (which is of the same kind in nature) that belongs to another class. The problem arises when any other manufacturer manufactures the same products of the latter class under the same registered trademark. Here the latter manufacturer may easily grab the reputation of the previous manufacturer as the products and business are similar in nature and are produced for the same class of consumers.
Some scenarios have been stipulated in Section 26 (2) of the TTA, 2009 as to when a trademark will be treated as infringement. The scenarios are: when marks are identical, the goods or services are similar, when marks are similar, goods or services are identical, and when marks are identical, goods or services are identical. But it does not mention anything about 'class' in this section. Therefore, it still remains vague as to whether a registered trademark of a company or product under a related class can be sanctioned for another similar company or product of a different class where the owners are not same or there is no permission or assignment from the former owner.
Regarding it this scribe talked to many local electrical product manufacturers. As learnt from them, a manufacturer of electrical products may start his business by producing switches, sockets, regulators, etc. that are under class 9. But if he wants to manufacture fans, he will have to go for a separate trademark registration as fans are in class 11 according to the NCL. Although switches, sockets, regulators and fans are the same kind of electrical products and consumers of those products are same, nevertheless the trademark registration has to be done separately because the fans belong to a different class.
Although there is a system of multi-class trademark application, it is hardly cost-effective as the payment has to be made for different classes accordingly. On the other hand, it looks unnecessary for a manufacturer to apply for another class trademark registration when he is not producing products under that class but might want to produce it in future.
Our manufacturers have been facing such problems for long. All states that have ratified or acceded to the Stockholm or Geneva Act of the Nice Agreement are members of the Nice Union Assembly. The Assembly meets in a general session once in every two years. The Assembly deals with all matters concerning maintenance and development of the Union and implementation of the Nice Agreement.
The authorities concerned need to take steps to address this problem. If it is not taken into account, then our manufacturers and industrialists may land in trouble in future. And it will be worse for them, once they start exporting their products.
There are two possible ways to remove such confusions over trademark class. One is incorporation of the term CLASS in section 26 (2) of the TTA, 2009. That is the area of the lawmakers. The other way is: each state that is a party to the Nice Agreement is represented in the Committee of Experts set up under the Agreement. Since 2012 the Committee has been holding its sessions once a year. The Committee decides on any changes to the Nice Classification. Our country representatives should raise this issue in such a session explicating the real problems faced by our manufacturers.
The writer did his Master of Laws (LL.M Commercial Law) from the University of Huddersfield in the UK. [email protected]