Trademark Infringement 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.
Schedule Fee & Cost
What Remedies for Trademark Infringement in Bangladesh?
CIVIL REMEDIES against trademark infringement in Bangladesh
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.
According to Section 96, the district courts are empowered to hear trademark disputes.
CRIMINAL REMEDIES against trademark infringement in Bangladesh
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.
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 holder’s 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.
FAQ
Who can file a trademark infringement action in Bangladesh?
Registered trademark owners may file trademark infringement actions.
What is the usual time frame for 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?
Is it possible to have a descriptive trademark registered in Bangladesh?
What is the statute of limitations for filing infringement actions in Bangladesh?
The Limitation Act 1908 sets out the statute of limitations for filing infringement actions.
What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement in Bangladesh?
The Specific Relief Act 1877 sets out the rules and procedure governing the issuance of injunctions to prevent imminent or further infringement.
What defenses are available to infringers in Bangladesh?
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 defendant’s goods are entirely different from that of the plaintiff;
– the defendant’s customer base is entirely different from that of the plaintiff; and
– the defendant’s goods and services are distinguishable from the plaintiff’s goods and services.
What is the appeal procedure for infringement decisions in Bangladesh?
Anyone aggrieved by the district judge order may appeal to the High Court Division.