Intellectual property law concerns legal rights associated with creative works or commercial reputation and goodwill. The concept of intellectual property is very wide and it includes literary and artistic works, films, computer programmes, inventions, designs and marks used by traders for their goods or services. The law deters others from copying or taking unfair advantage of the work or reputation of another and provides remedies should this happen.
A trade mark is a visual symbol in the form of a word, a device, or a label applied to articles of commerce with a view to indicating the origin of goods, as distinguished from similar other goods manufactured or dealt with by other persons. By virtue of this, the person who sells his goods or services under a particular mark acquires a sort of limited exclusive right to the use of the mark in relation to those goods or services.
Trademark requires statutory protection to ensure its exclusive rights to the proprietors. It is also necessary for smooth industrial and economic development of a country.
In Bangladesh, the Trademark Act 2009 provides protection to the trademark proprietors.
The Trademark Rules 1963 is also operative here but it is a very poor statutory support in case of ensuring trademark protection in compliance with international treaty. Therefore, the present laws fail to fulfill the demands of the present digital-based society.
In order to get trademark registration, a mark must be inherently distinctive or distinctive through use. An arbitrary mark (apple for computer), a fanciful mark (KODAK) or a suggestive mark (FRIDGEDAIRE as applied to refrigerators) etc. are treated as distinctive marks. Actually, any sign capable of distinguishing the goods or services of one undertaking from those of other undertakings (thus including service marks) shall be eligible for getting registered as a trademark (TRIPS Agreement, Art. 15.1).
In Bangladesh, the basic requirements of a trademark to be registered are maintained with the compliance of international treaties like the Paris Convention or the TRIPS Agreement. Besides, the following marks or part of marks shall not be registered as a trademark:
i) If it comprises or consists of any scandalous or obscene matter;
ii) If the use is contrary to any law for the time-being;
iii) If the use is likely to deceive or cause confusion; or
iv) If it contains any matter likely to hurt the religious sentiments of any classes of citizens of Bangladesh; and
v) If it is identical with, or is an imitation of, or it contains a flag or other emblem, a name or abbreviation or initials of the name of, or official sign adopted by any state or international organisation created by an international convention, charter or other instruments (the 2009 Act, section 8).
No trademark 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 trade description which is well-known in Bangladesh (for example TATA mark well-known in Bangladesh) for identical or similar goods or services of another enterprise (the Act, 2009, Section 10(4)).
Infringement is an unauthorised use of a registered trademark. Without the consent or authorisation of the owner, any one using the registered mark commits infringement. Further use of a mark similar to the registered one does also constitute infringement of the registered mark. 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, use without permission. 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 causes confusion on the part of the public,
2. Where the registered trademark is used in the course of trade in goods or services which are not similar, but has a reputation in Bangladesh and the use of the mark by the person without due permission, takes unfair advantage of or is detrimental to the distinctive character or repute of the registered trade mark,
3. Where a person who, not being duly authorised 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, and
4. Where a person not being a registered proprietor or permitted user uses a well-known registered trademark for identical or similar goods or services for which the mark has been registered.
The Trademarks Act states that infringement suits must be instituted before the appropriate District Court having jurisdiction. In the case of infringement suits, the trademark must be registered in Bangladesh as per Section 24(1) of the Act. The Act also provides for actions for unregistered trademarks. The period of limitation for filing a suit for infringement of a trade mark is three years from the date of infringement. The relief which a court may grant in any suit for infringement and passing off is:
(i) An injunction restraining further use of the infringing mark, and
(ii) Damages or an account of profits, and
(iii) An order for delivery of infringing labels and marks for destruction or erasure.
Although civil remedies are available for both registered and unregistered trademarks, it can be extremely difficult to prove misuse and obtain relief for unregistered trademarks. However, the following are criminal offences punishable under the Act, 2009:
1. Applying a false trademark so as to mislead consumers about the origin of the goods;
2. Counterfeiting a trademark without assent of the proprietor of the trademark;
3. Making or possessing any instrument for the purposing of counterfeiting a trademark;
4. Applying any false trade description to goods or services;
5. Applying false indication of country to goods or services as regards the place of production or manufacture of them; and
6. Selling, or exposing or possessing for sale or any purpose of trade or manufacture any goods bearing a false trade mark or description.
The punishment for above-mentioned offences is imprisonment for up to two years but not less than six months or a fine up to Taka 2,00,000 but not less than Tk 50,000, 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 3,00,000 but not less than Tk 1,00,000, or both. The courts also have the power to set the prison term and the amount of any fine.
All the above mentioned offences shall be triable by the Metropolitan Magistrate or Magistrate of the first class.
Bangladesh has faced lack of political stability since its birth. As a result, desirable industrial development did not occur here. For a smooth industrial development, political stability is a must and needs a better trademark protection. In order to strengthen the trade mark protection in Bangladesh, the government has to take several steps which can make the Trademark Registry Office efficient and implement the present trademark laws more effectively. These are as follows:
(a) There must be a trade mark registry office in each divisional city to scrutinise the trademark related matters very swiftly and to assist industrial development smoothly. Presently, in our country there are only two trademark registry offices--head office in Dhaka and branch office in Chittagong. As a result, citizens of other cities have to face problems.
(b) Online trademark application system should be introduced,
(c) The Trademark Office should be equipped with sufficient number of registrars and examiners so that manufacturers of goods and service- providers can get their trademarks registered within the shortest possible time,
(d) Carrying out regular training for officials at the trade mark registry office with a view to maintaining the provisions of international agreements (Paris Convention and TRIPS Agreement) as regards trade mark protection,
(e) Trade Mark Protection Court should be primarily introduced in the divisional cities in order to dispose of suits quickly,
(f) Trademark rules should also be amended periodically to reflect the changes that have taken place since enactment of the Trademark Act and Trademark Rules.
(g) Law should be enacted to safeguard trademarks because lack of protection, especially for IT-related works, has created opportunity for unscrupulous businesses that are making fortune out of the other people's efforts and investment and hampering competition and development of the sector.
Trademark is one kind of intellectual property; it is a private right. Trademark protection is needed for smooth industrial development in a country. In Bangladesh, under the Trademarks Act, 2009, the provisions have been introduced for better protection to registered and well-known marks. The law contains adequate standard provisions to deal with matters such as trademark protection of registered or unregistered marks, their infringement and falsification, proper remedies in compliance with TRIPS Agreement. Due to administrative inefficiency, lack of awareness of the people and very old rules (Trademark Rules, 1963), it is tough to implement the present law (Trademarks Act, 2009) and to ensure exclusive protection to the trade mark proprietors. By removing the present problems, better trademark protection can be ensured thus drawing the attention of entrepreneurs both at home and abroad.
The writer is Senior Lecturer and ex-Coordinator, the Department of Law, World University of Bangladesh.
 lawmnahyder@yahoo.com