Trademark rights are crucial for businesses to protect their brand identity and ensure that consumers can distinguish their products and services from those of competitors. In Bangladesh, trademark protection is governed by the Trademarks Act, 2009, and administered by the Department of Patents, Designs, and Trademarks (DPDT). This article provides an in-depth look at the framework for trademark rights protection in Bangladesh, including the registration process, enforcement mechanisms, and recent developments.
Legal Framework
The primary legislation governing trademarks in Bangladesh is the Trademarks Act, 2009. This Act replaced the earlier Trade Marks Act of 1940, modernizing the legal framework in line with international standards such as the TRIPS Agreement (Trade-Related Aspects of Intellectual Property Rights). The Trademarks Rules, 2015, provide detailed procedures for the implementation of the Act.
Definition of Trademark
A trademark is a symbol or sign that identifies the source of goods, distinguishing the goods or services of one entrepreneur from those of another. According to the Trade Mark Act, 2009, a “trademark” refers to a registered mark or a mark used in relation to goods or services, indicating a connection in the course of trade between the goods and the person who has the right to use the mark, either as proprietor or as a registered user (Section 2(8)). In Bangladesh, the term “trademark” also encompasses service marks (Section 2(8)(a)(ii)).
Trademark Protection by Registration
Trademark protection is essential for trademark proprietors, ensuring smooth industrial development and profitability through exclusive usage rights. Article 16.1 of the TRIPS Agreement grants trademark owners the exclusive right to prevent third parties, without the owner’s consent, from using identical or similar signs for goods or services that could cause confusion. If identical signs are used for identical goods or services, confusion is presumed.
In Bangladesh, trademark protection is secured through registration. Besides registered proprietors, others can obtain trademark protection as registered users, through licenses, or via assignment or transmission. Provisions against trademark infringement and falsification also play a critical role in safeguarding trademark rights.
The law prohibits trafficking in trademarks. Some marks and brands, due to their extensive use and popularity, are recognized as well-known marks. Articles 16.2 and 16.3 of the TRIPS Agreement mandate protection for these well-known marks. The 2009 Act extends protection to well-known marks, even if they are unregistered.
Conditions of Trademark Registration
To obtain trademark registration, a mark must be either inherently distinctive or have acquired distinctiveness through use. Any sign capable of distinguishing the goods or services of one entity from those of another, including service marks, is eligible for trademark registration (TRIPS Agreement, Article. 15.1). Trademarks can include words, logos, slogans, colors, and even sounds. In Bangladesh, the fundamental requirements for registering a mark are aligned with international treaties such as the Paris Convention and the TRIPS Agreement.
Besides, the following mark or part of mark shall not be registered as a trademark-
i) which comprises or consists of any scandalous or obscene matter;
ii) the use of which would be contrary to any law for the time being enforce;
iii) the use of which would be likely to deceive or cause confusion; or
iv) which contains any matter likely to hurt the religious susceptibilities of any classes of the citizen of Bangladesh;
v) which is identical with, or is an imitation of, or contains as an element, an armorial bearing, flag or other emblem, a name or abbreviation or initials of the name of, or official sign or hallmarked adopted by, any state or international organization created by an international convention, charter or other instruments under section 8 of the Trademark Act, 2009.
Implementing National Treatment, Priority, and Cross-Border Reputation Principles in Bangladesh
National treatment means that, with respect to the protection of industrial property, each country party to the Paris Convention or the TRIPS Agreement must grant the same protection to nationals of other member countries. This obligation is outlined in Articles 2 and 3 of the Paris Convention and Article 3.1 of the TRIPS Agreement, 1994. Accordingly, Bangladesh also extends the same protection to nationals of the member countries of the Paris Convention and the TRIPS Agreement, as stipulated in Section 119 of the 2009 Act. Similarly, the principle of priority is recognized under Section 120 of the 2009 Act. Consequently, anyone who registers a mark in a member country of the Paris Convention or the World Trade Organization can obtain protection in Bangladesh from the same date, provided they apply for registration in Bangladesh within six months of the initial registration in the other member country.
The principle of cross-border reputation supports the protection of well-known trademarks. International agreements, such as the Paris Convention and the TRIPS Agreement, recognize the importance of safeguarding these trademarks. Article 6bis of the Paris Convention requires member countries to refuse or cancel the registration of trademarks that might cause confusion with an already well-known trademark within the same country for identical or similar goods. Additionally, Articles 16.2 and 16.3 of the TRIPS Agreement extend these protections to include service marks and dissimilar goods. Currently, the legal protection of well-known trademarks is firmly established within the jurisdiction of trademark law.
Bangladesh is a signatory to the Paris Convention and the TRIPS Agreement, adhering to the principles of cross-border reputation and national treatment. The rule of cross-border reputation is outlined in Section 31 of the 2009 Act, which guarantees protection for well-known trademarks and foreign trademarks based on their international reputation. This compliance meets the requirements of Article 16 of the TRIPS Agreement, which advocates for enhanced protection and treatment of trademarks. Consequently, a foreign trademark owner with cross-border reputation can initiate a passing off action in Bangladesh if their mark is used without authorization.
However, it is crucial for overseas traders who hold these marks to act proactively in protecting their internationally established goodwill. This can be achieved by registering their trademarks and taking timely and appropriate legal action to enforce them.
Conclusion
Trademark rights protection in Bangladesh has evolved significantly with the introduction of the Trademarks Act, 2009, and subsequent regulatory improvements. While challenges remain, continued efforts to strengthen the legal framework and enforcement mechanisms promise to provide robust protection for trademark owners, thereby fostering a more secure and vibrant business environment in the country.
