Introduction

Trademark infringement is a significant concern for businesses and individuals who seek to protect their brand identity. In Bangladesh, trademark laws are designed to protect the rights of trademark owners and to ensure fair competition in the market. This article provides a detailed analysis of trademark infringement in Bangladesh, exploring the legal framework, enforcement mechanisms, common issues, and practical considerations for trademark holders.

Legal Framework

The primary legislation governing trademarks in Bangladesh is the Trademark Act of 2009. This act outlines the procedures for trademark registration, the rights of trademark owners, and the remedies available in case of infringement.

What is Trademark Infringement

According to the Trademark Act, 2009, trademark infringement occurs when a person uses a trademark that is identical or deceptively similar to a registered trademark without the permission of the trademark owner. This includes the unauthorized use of logos, names, symbols, and other identifiers that can cause confusion among consumers.

Criteria for Infringement

For a successful claim of trademark infringement, the following criteria must be established:

• The plaintiff must own a valid registered trademark in Bangladesh.
• The defendant must have used a mark that is identical or similar to the plaintiff’s trademark.
• The unauthorized use must be in connection with goods or services that are identical or similar to those for which the trademark is registered.
• The use must be likely to cause confusion among consumers.

Remedies for Infringement

There are several remedies available for trademark infringement action in Bangladesh. The legal framework provides both civil and criminal remedies to protect trademark owners’ rights, alongside measures involving customs authorities.

Civil Remedies:

1. Injunctions: Trademark owners can seek an injunction to stop the infringer from continuing the unauthorized use of their trademark. This can be either a temporary injunction, in other word ad-interim i, to provide immediate relief, or a permanent injunction, to offer a long-term solution.

2. Damages: The court can award damages to the trademark owner for the losses suffered due to the infringement. This compensation aims to cover the financial impact, including lost profits and harm to the brand’s reputation.

3. Accounts of Profits: Instead of, or in addition to, damages, the court can order the infringer to hand over the profits made from the unauthorized use of the trademark.

4. Delivery Up and Destruction of Infringing Goods: The court may order that all infringing goods, packaging, and related materials be delivered to the trademark owner or destroyed, preventing further misuse.

5. Legal Costs: The court may also order the infringer to pay the legal costs incurred by the trademark owner in pursuing the case.

Criminal Remedis:

1. Fines: The infringer may be subjected to monetary penalties. These fines act as a deterrent to prevent future infringements and are intended to punish the infringing party.

2. Imprisonment: In severe cases, the infringer can face imprisonment. The duration of the sentence varies depending on the nature and extent of the infringement.

3. Seizure of Goods: Authorities can seize counterfeit and infringing goods. This prevents further distribution and sale of these products in the market.

4. Prosecution: Criminal prosecution can be initiated against individuals or entities responsible for trademark infringement, leading to trials and possible convictions.

Additionally, the Penal Code, 1860 of Bangladessh, stipulates that an offender may be punished with either simple or rigorous imprisonment for a term of up to three years, or with a fine, or with both.

Customs Enforcement for Trademark infringement in Bangladesh

The Customs Act, 1969 includes provisions for the prevention of import and export of counterfeit goods.

1. Border Measures: Customs authorities in Bangladesh have the power to inspect goods entering or leaving the country. They can identify and seize counterfeit or infringing goods at the border, preventing them from reaching the market.

2. Recordation with Customs: Trademark owners can register their trademarks with customs authorities. This proactive measure allows customs officials to monitor and intercept infringing goods more effectively.

3. Destruction of Seized Goods: Once infringing goods are seized, customs authorities may order their destruction to ensure they do not re-enter the market.

4. Cooperation with Trademark Owners: Customs authorities often work closely with trademark owners to identify and combat the import and export of counterfeit goods. This collaboration enhances the enforcement of trademark rights at the border.

Common Issues in Trademark Infringement

Counterfeiting

Counterfeiting is a prevalent issue in Bangladesh, where counterfeit goods bearing fake trademarks flood the market. This not only affects the revenues of genuine trademark owners but also poses risks to consumers.

Parallel Imports

Parallel imports, also known as grey market goods, involve the importation of genuine trademarked goods without the authorization of the trademark owner. While not always illegal, this practice can undermine the trademark owner’s control over their brand.

Domain Name Infringement

With the rise of e-commerce, domain name infringement has become a common problem. Cybersquatters register domain names that are identical or similar to well-known trademarks, intending to profit from the trademark owner’s reputation.

Practical Considerations for Trademark Holders

Trademark Registration

To enjoy legal protection, trademark owners must register their trademarks with the DPDT. The registration process involves:

• Filing an application: Submitting the necessary documents and fees.
• Examination: The DPDT examines the application for any conflicts with existing trademarks.
• Publication: If no conflicts are found, the trademark is published in the official gazette.
• Registration: If no opposition is filed within the prescribed period, the trademark is registered.

Monitoring and Enforcement

Trademark owners should actively monitor the market for potential infringements in Bangladesh. This includes:

• Market Surveillance: Regularly checking the market for counterfeit goods.
• Online Monitoring: Keeping an eye on e-commerce platforms and domain name registrations.
• Legal Action: Promptly taking legal action against infringers to prevent damage to the brand.