Trade Marks & Copyright 2024 Comparisons

Trade Marks

In Bangladesh, the key legal framework for trade marks is the Trademarks Act, 2009, delineating registration procedures, rights conferred, and infringement mechanisms. The Trade Marks Rules, 2015, complement this by detailing practical aspects of trade mark registration.

Copyright

Governed by the Copyright Act, 2023, Bangladesh safeguards creators’ and owners’ rights for original software, literary, artistic, and musical works. It sets conditions for protection, outlines copyright owners’ rights, and provides remedies for infringement.

Unregistered Rights

Bangladesh, while primarily following a statutory approach, also recognises unregistered trade marks under specific circumstances. The Trademarks Act incorporates “passing off,” protecting unregistered trade marks based on common law principles and international treaties.

Bangladesh is a party to several international treaties and conventions related to intellectual property, including trade marks and copyrights. These include the:

• Paris Convention on Industrial Property, which facilitates the protection of industrial property, including trade marks, across member countries;
• Berne Convention for the Protection of Literary and Artistic Works, which ensures the international protection of literary and artistic works;
• WIPO Copyright Treaty, which commits to adequate protection for authors’ rights in the digital environment;
• WIPO Performances and Phonograms Treaty, which addresses rights in the digital era; and
• Nice Agreement on the International Classification of Goods and Services, which simplifies classification for trade mark registration.

In Bangladesh, the rights of foreign trade mark and copyright holders are governed by both domestic laws and international agreements.

Domestic Law

Under domestic laws, foreign trade mark owners are protected under the Trademarks Act, 2009. This legislation provides a framework for the registration and protection of trade marks, applicable to both domestic and foreign entities. The rights conferred by trade mark registration apply equally to foreign trade mark holders. The newly enacted Copyright Act, 2023, extends protection to foreign copyright holders, outlining conditions for copyright protection without discrimination based on nationality. Foreign authors and creators enjoy the same rights as their Bangladeshi counterparts.

International Agreement

The following international agreements apply in Bangladesh:

• Paris Convention on Industrial Property – as a signatory, Bangladesh provides advantages to foreign trade mark owners, ensuring equal rights.
• Berne Convention for the Protection of Literary and Artistic Works – Bangladesh, a party to the Berne Convention, grants national treatment to foreign copyright holders.
• WIPO Copyright Treaty – Bangladesh’s commitment reinforces foreign copyright holders’ rights, addressing digital challenges.
• WIPO Performances and Phonograms Treaty – similar to the WIPO Copyright Treaty, focusing on performers and producers, providing protection to foreign entities.

In Bangladesh, the legal system acknowledges and safeguards various trade mark and source identifier categories.

Types of trade mark include:

• service marks – the Trademarks Act, covers both goods and services, allowing for the registration and protection of service marks;
• design marks – visual appearance or ornamentation of a product is eligible for trade mark protection, covering product designs and packaging;
• trade dress – the overall visual appearance, including packaging and presentation, is protectable under the Trademarks Act;
• collective marks – indicating the collective origin of goods or services, used by members of an association or group;
• certification marks – used to certify characteristics or origin of goods or services;
• geographic indicators – indicating the origin of goods or services from a specific location;
• product marks (design and packaging) – eligible for trade mark protection;
• surnames as marks – allowed, provided they meet eligibility criteria; and
• industrial designs – the Trademarks Act may provide additional protection in cases where industrial designs overlap.

A wide range of source identifiers can be registered and protected, including words, images, sounds, shapes, and colours.

Bangladesh lacks specific statutory protections beyond the Trademarks Act framework. However, it allows protection for well-known trade marks, preventing their use in unrelated classes. Bangladesh also recognises well-known or famous marks, even if not in use or registered, extending protection under the famous marks doctrine.

Elements necessary to qualify for trade mark protection include:

• use in Commerce – essential for eligibility; the mark must be used in connection with goods or services;
• distinctiveness – the mark must be distinctive for consumer differentiation; and
• registration – while not mandatory, registration offers legal benefits and presumption of validity.

Marks lacking inherent distinctiveness may acquire it through extensive use. To prove acquired distinctiveness or secondary meaning, there must be:

• evidence of substantial and continuous use in commerce;
• consumer surveys demonstrating association with a specific source;
• length and exclusivity of use;
• advertising and promotional activities;
• market recognition; and
• competitor use and attempts to copy the mark.

In Bangladesh, trade mark owners enjoy specific rights as stipulated by statute, primarily governed by the Trademarks Act, 2009. The key rights encompass:

• exclusive use – trade mark owners exclusively use their registered mark for the associated goods or services;
• preventing unauthorised use – owners prevent third parties from using identical or confusingly similar marks, safeguarding the mark’s distinctiveness;
• enforcement and legal remedies – owners can enforce rights through legal proceedings, seeking remedies such as injunctive relief, damages, and costs;
• assignment and licensing – owners can assign or license their marks, enabling specified use by other entities;
• renewal and continued protection – rights persist throughout the mark’s term, subject to renewal under the Trademarks Act provisions; and
• duration of trade mark rights – initially granted for seven years, trade mark rights can be indefinitely renewed in successive ten-year periods.

Bangladesh lacks a specific anti-circumvention right akin to Article 11 of the WIPO Copyright Treaty.

In Bangladesh, establishing a trade mark’s use requires meeting specific requirements, demonstrating its use in connection with goods or services. To prove use, one must show actual commercial use in Bangladesh, specifically tied to the registered or sought-for goods or services. Meeting the trade mark use requirements in Bangladesh necessitates demonstrating distinct and ongoing commercial use, indicating the mark’s origin in commercial transactions. Continuous and bona fide use underscores the mark’s ongoing significance.

There are no specific legal requirements for using symbols such as ® or the trade mark symbol to denote trade mark ownership. However, their usage is common and holds practical value. Practical purposes served by these symbols include providing notice of registration status or asserting trade mark rights.

The consequences of not providing notice are limited in Bangladesh but the use of symbols can be beneficial in legal proceedings, aiding in establishing notice. Unlike in some jurisdictions, there is no legal presumption of notice due to the ® symbol in Bangladesh, subject to judicial interpretation.

In Bangladesh, trade marks and copyright represent distinct intellectual property rights. The following highlights key considerations regarding the nexus between trade marks, copyright, and related rights in Bangladesh:

Protection of Trade Marks and Copyright

Trade marks, governed by the Trademarks Act, 2009, may extend protection to logos and artistic elements through copyright laws. Original logos meeting copyright criteria can enjoy dual protection.

Interaction With Moral Rights Laws

For trade marks featuring surnames, the connection with moral rights laws in Bangladesh is indirect. Concerns primarily revolve around distinctiveness, consumer confusion, and registration challenges.

Limitations on Trade Mark Laws Based on Copyright or Related Rights

Though overlap occurs, trade mark and copyright protection operate under distinct frameworks. Trade mark laws focus on distinctiveness, while copyright safeguards original works, including artistic ones. Protection criteria differ, with trade marks emphasising distinctiveness and commercial use, while copyright requires originality and tangible fixation. Logos and trade mark elements often coexist, enabling comprehensive brand identity protection.

Practical Considerations

Owners should consider both trade mark and copyright registration for comprehensive protection. Legal actions may involve both trade mark and copyright laws for infringements.

In summary, while Bangladesh recognises trade marks and copyrights as distinct, overlapping protection exists for logos and artistic elements. Surnames in trade marks are primarily addressed under trade mark laws, with limited moral rights interaction. The coexistence of trade mark and copyright protection offers a holistic approach to safeguarding intellectual property rights.

Copyright protection encompasses a diverse array of works spanning various categories. Eligible for safeguarding, yet not exhaustively, are:

• literary works;
• musical works;
• dramatic works;
• artistic works;
• architectural works;
• choreographic works;
• audiovisual works;
• sound recordings;
• broadcasts;
• software; and
• databases.

Underpinning these rights is the Copyright Act, 2023. Industrial designs, not typically within copyright’s purview, fall under the Designs Act, 2023. These designs, governed by design law, protect visually appealing non-utilitarian objects. Copyright protection automatically arises upon work creation, though registration, though not obligatory, offers enforcement advantages.

In Bangladesh, copyright protection hinges on specific prerequisites. The critical components for securing copyright include the following.

• Originality –Originality is a foundational criterion, necessitating that the work results from the author’s independent, creative effort. It should not be a mere copy or imitation.
• Authorship – The work must be attributed to a human author or creator, as copyright typically applies to individuals generating original content. Works by artificial intelligence or non-human entities may not enjoy the same copyright protection.
• Fixation in a tangible medium – The work must be fixed in a tangible medium, making it perceptible, reproducible, or communicable over time. Tangible mediums encompass paper, canvas, digital storage, and other formats allowing recording or storage.
• Expression of ideas – Copyright safeguards the expression of ideas rather than the ideas themselves. Protection extends to the specific form, arrangement, or presentation of the ideas, not the underlying concepts or facts.
• Minimum creativity – While the creativity threshold for copyright protection is relatively modest, some originality or creative input by the author is required. Works lacking even minimal creativity may fall short of eligibility.
• Independence from other works – The work must be independent, not a direct copy of another. While drawing inspiration from existing works is permitted, the new work should exhibit sufficient originality to differentiate it from its sources.
• Not falling into excluded categories – Certain categories may be excluded from copyright protection, such as ideas, facts, methods, systems, and utilitarian objects. Copyright shields expression, not ideas or the functional aspects of objects.
• Duration – Copyright protection is finite, typically spanning the life of the author plus 60 years or a specified period for anonymous or corporate works.

Authorship

Authorship finds its definition within the Copyright Act, 2023. The author, as per statute, is the originator of the work. Authorship, for copyright considerations, demands original and creative contributions from an individual. Intellectual effort must be evident in the creation of the work.

Work created by an employee during employment or designated as such by agreement falls under “work made for hire.” In these instances, the employer or the commissioning party assumes authorship.

Bangladesh’s Copyright Act does not explicitly address non-human authors like artificial intelligence or animals. The legal acknowledgment of non-human authors remains a complex and evolving area.

Anonymous or Pseudonymous Authorship

Authors can opt for copyright protection anonymously, a provision allowed by the Copyright Act. Rights, term of protection, and legal considerations generally align for anonymous or pseudonymous works. However, anonymity may impact enforcement and author identification issues.

Joint Authorship

Joint authorship arises when two or more contributors create a single work with interdependent or inseparable contributions. This demands substantial contributions with an intention that each author’s input forms inseparable parts of the whole. Independent or non-interdependent contributions may not qualify.

Each joint author has the right to exploit the entire work, accounting for profits to other joint authors. Unless agreed otherwise, joint authors can independently exploit the work. Determining ownership percentages in joint authorship can be intricate, relying on the nature of the various contributions. In the absence of an agreement, equal ownership may be presumed, but parties can negotiate varied ownership shares.

In Bangladesh, copyright owners, under the Copyright Act, 2023, hold a set of exclusive rights. These rights encompass:

• the exclusive right to reproduce the work in any material form;
• the exclusive right to distribute copies of the work to the public;
• the exclusive right to perform the work in public;
• the exclusive right to display the work in public;
• the exclusive right to communicate the work to the public by broadcasting;
• the exclusive right to create derivative works or adaptations based on the original work; and
• moral rights, such as the right of attribution and the right of integrity.

In Bangladesh, copyright protection is generally based on the author’s life plus a specified number of years. The Copyright Act, 2023, specifies the following durations:

• the standard term is life plus 60 years;
• for anonymous or pseudonymous works, it is 60 years from publication;
• posthumous works are protected for 60 years from publication; and
• corporate or government works (ie, works by public entities) are safeguarded for 60 years from publication.

It is crucial to understand that copyright protection is finite, and works enter the public domain after the specified term.

In Bangladesh, specific legal requirements for a copyright notice are absent, and the use of copyright symbols is not obligatory for protection validity. Nonetheless, employing such symbols or notices can enhance clarity over rights ownership. Key points on notices and symbols include that Bangladesh does not mandate special copyright notices on works and that, though not legally required, a notice can inform the public about copyright existence and the owner’s identity.

While globally recognised, © is not required for validity in Bangladesh. The term “Copyright” or its abbreviation is also not mandatory but supports in notice.

Bangladesh has implemented collective rights management systems, mainly for music and performing rights. These systems oversee the collective administration of copyright owner rights. The primary organisation overseeing music rights is the “Bangladesh Copyright Office (BCO).” It is crucial to acknowledge potential alternative mechanisms for other creative sectors, as the legal landscape may change, introducing new organisations or systems.

Copyright registration in Bangladesh is not mandatory for copyright protection qualification. Protection is automatically granted upon creating a qualifying work; registration is not a prerequisite for basic copyright rights. Despite this, registration offers benefits:

• it creates a public record, serving as prima facie evidence of copyright validity;
• it is a prerequisite for legal action in civil court for copyright infringement;
• registered copyright may be prioritised in disputes.

The Bangladesh Copyright Office (BCO) maintains the copyright register. The register may not be publicly available online; access may involve contacting the Copyright Office. Local and foreign applicants individuals and legal entities, including authors and creators, can register.

The Copyright Act, 2023, regulates copyright registration in Bangladesh, overseen by the BCO. Key guidelines for copyright registration are outlined below.

The copyright registration application requirements and procedures are as follows:

• application form – complete the prescribed application form with details about the work and author;
• title and description of the work – provide a title and brief description of the registered work;
• authorship information – include author details such as names and addresses;
• nature of the work – specify whether the work is literary, artistic, musical, etc;
• copies of the work – submit required copies of the work (the quantity varies with the nature of the work);
• power of attorney (if applicable) – provide a power of attorney if the application is through an agent or attorney;
• declaration of originality – include a declaration affirming the originality of the work;
• filing fee – pay the prescribed filing fee, which varies based on work type and applicant category; and
• submission – submit the application and necessary documents with the filing fee to the Bangladesh Copyright Office in person or through authorised agents.

The processing time varies, and the BCO may take some time to review and process the application.

Providing incorrect information in connection with a copyright application can lead to various consequences, typically involving the copyright office or relevant authorities.

The consequences for providing incorrect information include rejection or denial. The copyright office may refuse registration if the provided information is inaccurate. Providing false information could also have legal consequences, violating legal obligations. Inaccurate information may impact the validity of registration, affecting enforceability of rights.

The BCO reviews applications and may seek clarification or take action. Applicants may appeal or correct inaccuracies, including through amendments or corrections promptly communicated to the BCO. Applicants may also appeal rejections, varying by jurisdiction.

Absolute grounds for refusal of registration include:

• lack of originality – protection is granted only to original works;
• ineligibility of subject matter – certain works, such as facts and ideas, may be ineligible for copyright protection;
• non-compliance with formalities – failure to meet formal requirements, such as submitting incomplete information, may result in refusal;
• public domain issues – works in the public domain or without copyright protection may be refused; and
• not meeting statutory criteria.

Applicants can appeal a copyright registration refusal through an administrative appeal, which is an initial appeal to the administrative body and involves addressing concerns or providing additional information. Subsequently, if the administrative appeal fails, further judicial appeal may be an option.

Copyright, trade marks, and related rights represent different facets of intellectual property safeguarding, each with distinct functions. Copyright shields original authorship works, trade marks defend unique signs in commerce, and related rights encompass neighbouring rights such as those of performers and musicians.

Overlap and Interaction

Copyright and trade marks can coexist and occasionally overlap. For instance, a logo or graphic design may qualify for both copyright and trade mark protection. Copyright guards expression of ideas in original works, while trade marks protect identifiers (names, logos, slogans) distinguishing goods or services. Copyright and trade mark laws typically operate independently. However, legal considerations arise when both protections relate to a specific subject.

Specific Considerations

Trade dress, involving a product’s visual appearance or packaging, may encompass elements protectable by both copyright and trade mark. Logos, artistic works, and commerce’s creative elements can receive copyright protection and function as trade marks identifying the source. Owners may strategically co-ordinate copyright and trade mark rights for comprehensive protection, such as trade mark registration for a brand name alongside copyright protection for artistic elements.

Differences Between Trade Marks and Copyrights

Copyright and trade mark laws operate within distinct legal frameworks, focusing on expression protection and preventing marketplace confusion, respectively. It should also be noted that copyright protection arises automatically, while trade mark protection necessitates registration and commercial use. The enforcement mechanisms for copyright and trade mark infringement differ, prompting separate legal actions for each type of infringement.

In Bangladesh, the acquisition of trade mark rights is tied to the formal registration process. It is necessary to file a trade mark application for registration to use the mark in public and obtain legal protection. Below are the key points for trade mark registration.

• Formal requirement for use – to establish and enforce trade mark rights, filing a trade mark application with the relevant authorities is a crucial step.
• Public notice through registration – trade mark registration serves as public notice of the owner’s exclusive rights to the mark and signals to the public and potential competitors that the mark is claimed and protected.
• Nationwide protection – the formal registration of a trade mark in Bangladesh provides the owner with nationwide protection, allowing them to enforce their rights across the entire country, even in areas where the mark has not been used.
• Use of ® Symbol – registered trade mark owners in Bangladesh can use the ® symbol with their mark to indicate formal registration.

Different standards for registration.

• Trade mark registration typically requires the mark to be distinctive, capable of distinguishing the goods or services of the owner.
• Marks that lack inherent distinctiveness may need to demonstrate acquired distinctiveness or secondary meaning. This may be required for registration, especially for descriptive terms that have gained recognition through use.
• The registration of trade dress, including product configurations, may be necessary for certain types of trade dress, particularly if they are not inherently distinctive.

Bangladesh has a Trade Marks Registry, and it maintains a register of trade marks. This registry is responsible for receiving and processing trade mark applications, examining their registrability, and maintaining records of registered trade marks. Access to specific information about registered trade marks may require direct communication with the Bangladesh Trade Marks Registry or a visit to their office. There is no specific distinctions between principal and supplemental registers.

It is common and advisable to conduct a thorough search for prior trade marks before applying for registration. Direct inquiries with the Bangladesh Trade Marks Registry can provide information on registered trade marks in the country.

Bangladesh’s Trademarks Act, 2009 doesn’t explicitly allow for series mark registration. The registration system focuses on individual trade marks within separate applications. Each application typically corresponds to a single mark, requiring distinct representations. Variations in non-distinctive elements may necessitate separate applications.

The initial term of trade mark registration in Bangladesh is seven years from the date of filing and ten years thereafter. Trade mark owners have the option to renew their registrations to maintain protection beyond the initial ten-year period.

The renewal application should be filed with the Bangladesh Trade Marks Registry before the expiration of the current registration term. There is typically a grace period (six months) for renewal after the expiration date, but it may be subject to additional fees. After the grace period, it may be possible to file for renewal with additional fees, but this is subject to specific conditions.

Trade mark owners are required to submit a prescribed renewal application along with the prescribed renewal fees.

Trade mark registrations can be updated or refreshed through amendments. Amendments may include changes to the representation of the mark or identification of goods or services. Material alterations from the original mark or the identified goods or services may be subject to certain limitations, and legal advice may be needed to navigate such changes.

The following provides a general overview of the requirements and procedures for applying for the registration of a trade mark in Bangladesh.

Materials

The materials required for an application are:

• a representation of the mark (drawing or specimen);
• details of the applicant, including name and address;
• a list of goods or services for which registration is sought; and
• a letter of authorisation from the applicant.

Application Process Overview

Bangladesh does not currently allow for multi-class trade mark applications.

Trade marks can be registered by individuals, legal entities (such as companies), and trade bodies in Bangladesh.

It is recommended to engage a local attorney or agent familiar with the registration process and requirements.

The application process involves the following steps:

• pre-filing search – conducting a thorough search to identify any existing trade marks that may conflict with the proposed mark;
• preparation of application – gathering the necessary information and materials for the application, including a clear representation of the mark, details of the applicant, and a list of goods or services;
• application submission – submitting the trade mark application to the Bangladesh Trade Marks Registry, including the required forms, fees, and supporting documents;
• examination and publication – the Trade Marks Registry examines the application for compliance with formalities and registrability criteria and, if accepted, the application is published in the official gazette;
• opposition period – there is a specified period during which third parties may file oppositions to the registration; and
• registration – if there are no oppositions or if any oppositions are resolved in favour of the applicant, a trade mark registration certificate is issued after submitting the registration fees.

Bangladesh does not strictly require trade mark use in commerce before registration. Application filing is possible without prior use.

Evidence of actual use in commerce may be needed. Proof includes documents demonstrating use and evidence of commercial activity.

Bangladesh does not have a specific grace period requirement. Actual use is still crucial for building and maintaining strong trade mark rights.

The Trade Marks Registry considers existing rights during application examination. This includes registered trade marks and other prior rights affecting registrability.

Consent agreements and letters of consent are valuable for demonstrating mutual agreement and absence of confusion. Letters of consent should outline reasons for no likelihood of confusion.

Assignment/assignment-back procedure allows transfer of trade mark rights between parties. This is useful for resolving conflicts and facilitating registration.

Third parties do have the right to participate during the trade mark registration procedure in Bangladesh, and can do so by filing opposition proceedings. During the publication of a trade mark application in the official gazette, there is a specific period (usually two months) in which third parties can file oppositions to the registration of the mark.

The procedure for opposition is as follows.

• Filing an opposition – third parties wishing to oppose a trade mark application must file a formal opposition with the Bangladesh Trade Marks Registry within the specified period after the publication of the application.
• Grounds for opposition – the opposition may be based on various grounds, including:
1. likelihood of confusion with existing trade marks;
2. similarity to well-known marks;
3. lack of distinctiveness;
4. descriptiveness; and
5. violation of prior rights.
• Notice to the applicant – the Trade Marks Registry notifies the applicant about the opposition, and the applicant has an opportunity to respond to the opposition.
• Hearing (if required) – if necessary, a hearing may be scheduled to allow both parties to present their arguments.
• Decision – after considering the opposition and any responses from the applicant, the Trade Marks Registry makes a decision. If the opposition is successful, the registration may be refused or granted subject to amendments.

It is generally possible to make certain amendments or corrections to a trade mark application during the registration process in Bangladesh. The ability to make changes may vary based on the nature of the amendment and the stage of the application process.

For revocation, change, amendment, or correction:

• during the examination stage, the trade mark applicant may be allowed to make amendments to correct formalities, clarify descriptions, or address issues raised by the Trade Marks Registry;
• after the publication of the application in the official gazette, amendments may still be possible in response to oppositions or concerns raised by third parties; and
• while certain amendments may be permitted, material alterations that substantially change the nature or character of the mark may face scrutiny.

With regard to obtaining authority for amendments:

• the applicant or their authorised representative typically have the authority to request amendments by formal written submissions to the application; and
• in cases where amendments involve changes that may affect the rights of prior owners or where consent is necessary, the applicant may need to obtain the consent of the relevant parties.

The concept of dividing a trade mark application is not explicitly provided for in the laws and regulations of Bangladesh.

The consequences for providing incorrect information in an application include:

• refusal or invalidation – the Trade Mark Registry may refuse the application or invalidate the registration if it is discovered that incorrect or false information was knowingly provided;
• legal consequences – providing false information may have legal consequences, including potential penalties or fines; and
• loss of rights – incorrect information can lead to the loss of rights associated with the trade mark application or registration.

The Trade Marks Registry is typically responsible for examining applications and may initiate actions or raise objections if incorrect information is identified.

In certain situations, the applicant or registrant may be allowed to correct innocent mistakes or inadvertent errors by submitting amendments to the Trade Marks Registry.

Common circumstances under which the registration of a trade mark can be refused on absolute grounds include:

• the trade mark lacking distinctiveness and being incapable of distinguishing the goods or services of one undertaking from those of others;
• the trade mark consisting exclusively of signs or indications that may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or the rendering of the service;
• the mark consisting exclusively of signs or indications that have become customary in the current language or in the bona fide and established practices of the trade;
• the mark being likely to deceive the public or cause confusion concerning the nature, quality, or geographical origin of the goods or services; and
• the mark containing prohibited or offensive matter, or if its use is contrary to law or morality.

Process for Overcoming Objections

If the Trade Marks Registry raises objections based on absolute grounds, the applicant generally has the opportunity to respond and overcome these objections. The process may involve submitting written arguments, evidence, or amendments to address the concerns raised by the Trade Marks Registry. If the Trade Marks Registry is satisfied with the response and considers that the objections have been adequately addressed, the application may proceed to registration.

The remedies against the Trade Marks Registry’s decision include the following.

• Appeal to the Registrar – if an applicant’s trade mark registration is refused by the Trade Marks Registry, the appeal must be made within 15 days of the issuing of the order. The Registrar of Trade Marks will then review the case and make a decision on whether to uphold or overturn the original decision.
• Appeal to the High Court – if an applicant’s trade mark registration is refused by the Trade Marks Registry and the time limit for review application has expired or the review application is rejected, the appeal must be filing an appeal at the High Court within 30 days of the issuing order.

The Trade Marks Registry does not allow to extension of the deadline for review the order.

Bangladesh is not a member of the Madrid Agreement Concerning the International Registration of Marks.

The timeframe for filing an opposition to a trade mark application starts after the publication of the trade mark application in the official gazette. The opposition period is 60 days. During this period, interested parties, such as existing trade mark owners or those who believe they may be adversely affected by the registration, can file an opposition.

No extension of time is allowed for filing an opposition case and there is no fixed voluntary “cooling off” period.

The legal grounds for filing an opposition to a trade mark application are the following:

• likelihood of confusion – a common ground for opposition is the likelihood of confusion with an existing registered trade mark or an earlier-filed application (this includes situations where the new mark is similar to an existing one and covers similar goods or services);
• similarity to well-known marks – some jurisdictions allow opposition based on the similarity of the mark to well-known marks, even if there is no direct conflict in the goods or services;
• descriptiveness or lack of distinctiveness – opposition can be based on the argument that the applied-for mark is descriptive or lacks distinctiveness for the goods or services;
• deceptiveness – if the mark is likely to deceive the public or cause confusion;
• prohibited or offensive matter – opposition may be based on the inclusion of prohibited or offensive matter in the mark; and
• earlier rights – opposition can be filed if the opposing party holds earlier rights, such as prior use or reputation in an unregistered mark.

There are no specific provisions for dilution in the Trademark Act, 2009.

Parties with a legitimate interest, such as existing trade mark owners or those who believe they may be affected by the registration, may file an opposition. In Bangladesh, prior trade mark registration is not always necessary; common law or unregistered rights suffice as per international conventions.

While parties can file on their own, it is advisable to engage an attorney to navigate the legal complexities.

The typical stages in opposition proceedings based on Bangladesh laws and regulations include the following.

• Filing of notice of opposition – the opposing party initiates the opposition procedure by filing a formal document known as a “Notice of Opposition(TM-5)” with the Trade Marks Registry; this document sets out the grounds for opposition and the legal basis for challenging the registration.
• Response by applicant – the applicant for the trade mark registration has an opportunity to respond (TM-6) to the Notice of Opposition.
• Evidence submission – all trade mark certificates, including local and foreign ones, must be include in the evidence stage; common types of evidence may include proof of use of the marks, evidence of distinctiveness or reputation, and arguments related to the legal grounds for opposition.
• Hearing or decision by Registrar – the opposition may proceed to a hearing before the Registrar of Trade Marks; at the hearing, both parties may present their case, and the Registrar may ask questions or seek clarification.
• Decision and appeals – the Registrar will issue a decision, either upholding the opposition and refusing the trade mark application or dismissing the opposition and allowing the registration to proceed.

After receiving an unfavourable decision from the Trade Marks Registry, a party may have the right to appeal the decision. The appeal process allows the party to seek a review of the decision by a higher authority. A further appeal may be made to the High Court of Bangladesh. In general, parties seeking to appeal a decision must do so within 60 days of the judgment.

For both trade marks and copyrights, revocation or cancellation proceedings on general grounds can be initiated by the applicant at any time. Some specific grounds may, however, be time-limited. For trade marks, non-use arguments may be time-sensitive. In copyrights, challenges related to originality or authorship should be raised within a specific timeframe.

The legal grounds for revocation/cancellation of trade marks are:

• non-use – if a trade mark is not used for a specified period;
• genericity – when a trade mark becomes a common name for a product or service;
• deceptive marks – marks registered deceptively or causing confusion; and
• invalid registration – defects in registration process or conflicting rights.

The legal grounds for revocation/cancellation of copyrights are:

• invalidity – lack of originality or improper authorship;
• expiration – copyright term expiration; and
• improper registration – procedural defects in registration process.

Both trade marks and copyrights may undergo expungement or re-examination procedures to challenge their validity.

Third parties, if they can demonstrate a legitimate or commercial interest in the outcome, or the Trade Mark Registry may initiate revocation/cancellation proceedings.

Revocation proceedings for trade marks /copyright are often initiated before the Trade Mark Registry, the copyright office or a tribunal. The process typically involves filing a formal application or petition with the relevant authority.

These bodies may conduct hearings, examine evidence, and render a decision on the revocation.

Civil Courts

In Bangladesh, especially if the revocation is based on broader legal principles or if there are legal challenges beyond the scope of administrative proceedings, parties may choose to initiate actions in civil courts. Civil courts can provide a forum for more extensive legal arguments, appeals, and remedies.

In Bangladesh, it is possible to seek partial revocation or cancellation of a trade mark registration/copyright registration depending on the ground of usage or claims proven to cancel. The High Court has the authority to revocation or cancellation partly.

It is possible for parties involved in revocation or cancellation proceedings to amend their pleadings or submissions during the course of the proceedings.

Amendments may be allowed to clarify or modify the grounds for revocation, introduce additional evidence, or address procedural issues. The permissibility of amendments and the specific circumstances under which they are allowed can depend on the rules and practices of the relevant intellectual property office or tribunal.

Actions involving revocation/cancellation and infringement may be heard together, especially if the issues are closely related or arise from the same set of facts. Combining actions can promote efficiency and avoid inconsistent decisions on the same or related issues.

In other cases, parties may choose to initiate separate proceedings for revocation/cancellation and infringement.

The timing of decisions in combined actions or separate proceedings can vary. While they may be heard together, the decisions might be rendered independently based on the specific facts and legal arguments presented.

Bangladesh has special procedures to address trade marks that were filed fraudulently or through deceptive means. Fraudulent filings can be grounds for revocation, and the affected party may initiate proceedings to seek the cancellation of the mark.

If an application becomes subject to an investigation due to suspected fraud, the intellectual property office or tribunal may have the authority to suspend the application pending the results of the investigation.

If it is found that an applicant fraudulently filed an application, consequences can include the revocation or cancellation of the trade mark. Additional penalties or sanctions may also be imposed such as two years’ imprisonment or fines depending on the jurisdiction’s laws and regulations.

Assigning a trade mark typically involves a written agreement between the assignor (current owner) and the assignee (new owner). The assignment may need to be recorded with the Trade Mark Registry to be effective, although failure to record does not necessarily invalidate the assignment.

Bangladesh has restrictions on the assignment of trade marks and copyright, especially if that assignment leads to confusion or deception.

Partial assignments of trade mark and copyright rights are generally permitted, allowing for the transfer of rights for specific goods or services.

Trade mark and copyright rights are often transmissible upon the death of the owner, and the rights may pass to heirs or other designated successors.

Licensing a trade mark or copyright often involves a written agreement between the licensor (trade mark owner) and the licensee, although registration of the licence may not be mandatory.

All types of licences can be granted and licences can be perpetual, meaning they have no set expiration date, or they can be for a specific term.

Assignment

It may be possible to assign a trade mark application and copyright during the application process. The assignee would step into the shoes of the assignor as the applicant. Assignments of applications may be subject to certain legal requirements and procedures.

Licensing

Licensing a trade mark and copyright application during the application process is generally permitted. The licensee may acquire certain rights to use the mark if and when the application proceeds to registration. Restrictions or specific requirements for licensing applications may vary by jurisdiction.

Restrictions During Pending Applications

While the application is pending, certain restrictions may apply to assignments or licences. For example, the assignability or licensability of an intent-to-use application may differ from that of an application based on use.

The registration or recording of a trade mark and copyright assignment or licence is not mandatory for the validity of the agreement. However, if an assignment or licence is not registered or recorded, there may be risks during the gap between the agreement taking place and its registration.

The ability of authors or their heirs to recapture transferred rights for copyrighted works is governed by the concept of copyright termination rights, particularly in jurisdictions that have implemented provisions allowing for such termination.

In Bangladesh, authors (or their heirs) may have the right to terminate certain grants or transfers of copyright after a specific period. The termination right is generally subject to specific conditions and timing requirements.

Trade marks and copyright can be used as security for a financial transaction. This is typically done through a legal arrangement known as a security agreement. The owner grants a security interest in the trade mark to a lender or creditor, providing the trade mark and copyright as collateral for a loan or other financial obligation.

The security interest in a trade mark and copyright is a proprietary right, creating a kind of “right in rem” that can be enforceable against third parties.

It is common for security agreements to involve an assignment by way of security, where the owner retains ownership but grants a security interest to the secured party. In the event of default or non-payment, the secured party may have the right to enforce the security interest, which may include seizing or selling the trade mark and copyright.

Both trade mark and copyright security interests are typically documented through legal agreements, specifying the terms and conditions of the security arrangement. The use of trade marks and copyrights as security must comply with applicable intellectual property laws.

Bangladesh has specific provisions addressing the timeframes for filing infringement lawsuits in its intellectual property laws depending on different circumstances; these lawsuits must be filed within three years of the cause of action arising. The limitation period for filing an infringement lawsuit is typically measured from the time the cause of action accrues, which is often when the infringement is discovered or should have been discovered with reasonable diligence. Courts may consider whether the plaintiff exercised reasonable diligence in discovering the infringement. Delay in bringing a lawsuit without a justifiable reason may affect the plaintiff’s ability to recover certain remedies.

Trade Marks

Legal claims for trade mark infringement may include:

• direct infringement – unauthorised use of a registered or unregistered trade mark that is likely to cause confusion;
• vicarious infringement – holding someone responsible for the infringing actions of another party; and
• contributory infringement – aiding, abetting, or materially contributing to another’s trade mark infringement.

While registered trade marks typically benefit from statutory protection, unregistered trade marks may still have common law protection, and claims can be pursued based on common law rights.

The key elements of an infringement are ownership of a valid trade mark and the likelihood of confusion among consumers due to the alleged infringing use.

Copyrights

Legal claims for copyright infringement may include:

• unauthorised copying, distribution, or display of a copyrighted work;
• aiding, facilitating, or encouraging copyright infringement by another party; and
• holding someone vicariously liable for the copyright infringement of another.

The key elements of an infringement are ownership of a valid copyright and unauthorised use of the copyrighted work by the alleged infringer

Legal Remedies

Trade mark and copyright infringement may include injunctive relief, damages, and in some cases, the destruction of infringing goods.

The key factors in determining trade mark infringement are:

• likelihood of confusion;
• similarity of marks;
• strength of the mark;
• type of goods or services;
• actual confusion; and
• statutory factors.

The key factors in determining copyright infringement are:

• substantial similarity;
• originality;
• access and copying;
• transformative use; and
• statutory factors.

Trade Marks

The necessary parties to a trade mark infringement action typically include the trade mark owner. In addition, in some jurisdictions, an exclusive licensee may have standing to bring an infringement action. Non-exclusive licensees may need to join the action with the trade mark owner.

Bangladesh allow trade mark owners to take action to stop infringement even before the mark is registered, based on common law rights.

Third parties, such as licensees or other interested parties, may join a trade mark infringement action if allowed by the jurisdiction’s laws.

Copyrights

The necessary party in a copyright infringement action is typically the copyright owner. Both exclusive and non-exclusive licensees may have standing to bring a copyright infringement action, depending on the terms of the licence agreement.

In Bangladesh, the legal system does not typically permit representative or collective actions, such as class actions, for trade mark or copyright proceedings.

In Bangladesh, before filing a trade mark or copyright lawsuit, certain prerequisites and restrictions must be considered:

Prerequisites include the following.

• Owning a valid trade mark or copyright – only the legal owner of the infringed trade mark or copyright may file a lawsuit; registration is not always necessary, but it simplifies establishing ownership and can strengthen the case.
• Standing to sue – the IP right owner must have suffered harm due to the infringement; for example, a lost sale or damage to your reputation.
• Proper jurisdiction – the lawsuit must be filed in the appropriate court with jurisdiction over the defendant and the infringement.

Restrictions include the following.

• Groundless threats provisions – it is illegal to send groundless threats of infringement lawsuits to intimidate competitors; if the threat does not have sufficient legal basis, the accused party can sue for unfair competition.
• Misuse/abuse – courts may be reluctant to enforce a trade mark or copyright if the owner has engaged in unfair practices such as:

1. misrepresenting the strength of a mark or copyright;
2. using the lawsuit to stifle competition instead of protecting its legitimate rights; and
3. failing to act diligently against other infringers, creating the appearance of abandoning its rights.
• Competition law – antitrust laws may limit the ability to enforce trade marks or copyright in ways that restrict competition; for example, using rights to block others from entering the market or charging unreasonably high licensing fees.

Jurisdiction

District courts have original jurisdiction over trade mark and copyright infringement matters. Appeals from district court decisions go to the High Court Division of the Supreme Court of Bangladesh. Appeals against certain High Court Division judgments can be made to the Appellate Division of the Supreme Court.

Initiating Infringement Proceedings

A trade mark or copyright owner can initiate infringement proceedings by filing a lawsuit directly with the district court within whose jurisdiction the infringement occurred or where the defendant resides.

Foreign Trade Mark or Copyright Owners

Foreign trade mark or copyright owners can bring infringement claims in Bangladesh. Registration in Bangladesh is not mandatory for infringement claims, but it can strengthen the owner’s legal standing and simplify the enforcement process.

Bangladesh follows the Rules of the Supreme Court, 2010 for civil procedures, including those applicable to intellectual property (IP) lawsuits. The initial pleading, typically a plaint or petition, must:

• specify the statutory provisions and legal basis for the claim;
• name the plaintiff (rights holder) and defendant (alleged infringer) with full details;
• provide a concise narrative of the events leading to the infringement, including dates, locations, and specific instances of infringing activity;
• clearly identify the infringed trade marks or copyrighted works, preferably with descriptions, artwork, or registration numbers; and
• clearly state the desired outcome, such as injunctions, damages, or seizure of infringing goods.

Trade Marks v Non-IP Proceedings

While the general standards apply, some specific provisions cater to trade mark proceedings. The plaintiff must demonstrate a substantial likelihood of confusion between the infringing mark and the registered mark in the minds of the relevant consumer group. This requires detailed evidence and analysis of factors such as similarity, market proximity, and consumer perception. In addition, the alleged infringing mark must be used in the course of trade in relation to similar goods or services.

Supplementing Pleadings

With court permission, pleadings can be amended to correct errors, clarify details, or add new arguments based on facts already known at the time of filing the initial pleading.

Defendant’s Response

The defendant can file a counterclaim alleging invalidity or non-infringement of the plaintiff’s trade mark or copyright. This initiates a separate lawsuit within the main proceedings.

Declaratory Judgment Proceedings

An alleged trade mark or copyright infringer can initiate declaratory judgment proceedings in Bangladesh under the Code of Civil Procedure, 1908. This allows them to seek a court declaration that their actions do not constitute infringement.

The potential defendant must have a legitimate and well-founded fear of being sued for infringement by the trade mark or copyright owner. This is often based on threats or communications from the owner or actual initiation of infringement proceedings elsewhere.

Potential Defendant’s Protections

Filing a protective brief with the Registrar of Trade Marks or the Registrar of Copyrights can document the potential defendant’s good faith use of the mark or work and potentially serve as a deterrent to an infringement lawsuit.

In rare cases, courts may require the trade mark or copyright owner to post a bond to cover potential damages if the infringement claim is ultimately found to be invalid. However, this is not customary in Bangladesh.

Unfortunately, Bangladesh currently does not offer a dedicated small claims track for IP matters such as trade marks and copyrights.

In Bangladesh, the effect of Trade Mark and Copyright Registry decisions on infringement actions is more nuanced than a simple “yes” or “no” answer.

Decisions made by the Registrar of Trade Marks and the Registrar of Copyrights (or Tribunal on appeal) are not strictly binding on civil courts in infringement cases. However, they carry significant weight and can be highly persuasive to the court.

A registered trade mark certificate issued by the Registrar of Trade Marks serves as prima facie evidence of the trade mark’s validity and ownership. This means the infringer has the burden to prove its invalidity in court. However, this does not apply to copyrights in Bangladesh.

Both Registry decisions and the underlying evidence on which they were based can be introduced as evidence in an infringement lawsuit. Civil courts will consider this evidence alongside other relevant factors to reach their own decision.

Counterfeiting

Special procedures and remedies addressing counterfeiting include:

• the Penal Code 1860, which makes counterfeiting a criminal offence punishable by up to seven years in prison and a fine;
• the Copyright Act 2023, which provides civil remedies for copyright infringement, including injunctions, damages, and seizure of infringing goods;
• the Trademarks Act 2009, which offers civil remedies for trade mark infringement, including injunctions, damages, account of profits, and cancellation of infringing trade marks; and
• administrative procedures such as raids launched by the Registrar of Trade Marks and the Registrar of Copyrights in which they can confiscate infringing goods based on complaints or through their own initiatives.

Parties can also face criminal prosecution.

Bootlegging

Bootlegging in Bangladesh typically refers to unauthorised reproduction and sale of copyrighted works.

Special procedures and remedies addressing bootlegging include:

• the Copyright Act 2023, which provides civil remedies for copyright infringement as mentioned earlier;
• raids and seizures, similar to counterfeiting; and
• interception of bootlegged goods by customs at border points.

Unauthorised reproduction and sale can lead to criminal charges.

There are special procedural provisions for trade mark and copyright proceedings in Bangladesh.

Pre-filing Requirements

Prior to initiating a trade mark lawsuit, parties are often encouraged to attempt mediation or send a warning letter to the alleged infringer. No pre-filing requirements are mandated for copyright lawsuits, but registrations can strengthen a case.

Specific Law and Courts

Trade marks cases are governed by the Trademarks Act 2009 and copyright cases are governed by the Copyright Act 2023. Cases are heard in district courts, with appeals going to the High Court Division and ultimately the Appellate Division of the Supreme Court. The Tribunal at the High Court handles appeals from decisions made by the Registrar of Trade Marks and the Registrar of Copyrights.

Advantages of registering trade marks include presumption of validity and exclusive right to use for registered goods/services. Further, after five years, certain defences become unavailable for the infringer. The advantage of registering copyrights is that it serves as evidence of copyright ownership, simplifying legal proceedings. In both cases it becomes easier to initiate legal action and obtain evidence and there is potential for higher damages awards.

Overall, registration offers litigation benefits, but unregistered rights can still be protected under common law principles.

In Bangladesh, parties in trade mark or copyright disputes can use discovery mechanisms to obtain relevant information and evidence from each other or third parties. These include written questions (interrogatories), requests for documents, physical inspections, witness depositions, and subpoenas. Discovery can be used before trial to gather evidence and during trial to present evidence. Requests must be reasonable and relevant, and parties must respond truthfully. Certain privileges may limit what information can be discovered.

Expert witnesses and surveys are allowed and can be important in trade mark and copyright infringement cases in Bangladesh. Expert witnesses provide specialised knowledge on technical aspects and can offer opinions on issues such as similarity of marks or fair use. Courts generally welcome expert testimony where  relevant and based on sound methodology. Surveys, which gauge consumer perception and potential damages, are also admissible but subject to scrutiny regarding methodology and relevance to the case. Well-designed surveys and qualified experts can carry weight, but courts ultimately evaluate them alongside other evidence.

The costs of litigating trade mark or copyright infringement actions in Bangladesh vary widely depending on factors such as court fees, lawyer fees, expert witness fees, survey costs, and investigation expenses. These costs can be influenced by the complexity of the case, duration of proceedings, settlement versus trial, lawyers’ experience, and court location. It is challenging to predict exact costs due to these variables.

Trade mark and copyright infringement can constitute criminal offences in Bangladesh, offering multiple avenues for enforcement through distinct channels and procedures.

Administrative Enforcement

Based on complaints or their own initiative, Trade Mark and Copyright Registries investigate suspected infringement, confiscate infringing goods, and initiate legal proceedings. If found guilty, infringers can face fines, confiscation orders, and potentially temporary business closures.

Criminal Enforcement

Section 486 of the Penal Code, 1860 criminalises counterfeiting of trade marks and makes it punishable by up to seven years in prison and a fine.

Certain provisions of the Copyright Act 2023 specify criminal offences related to copyright infringement, including:

• importing or exporting infringing copies for commercial purposes;
• making or possessing devices for copyright infringement; and
• knowingly performing or permitting public performances of infringing works.

Upon receiving complaints or initiating investigations, law enforcement agencies can file criminal charges against suspected infringers. Convictions can lead to imprisonment, fines, and confiscation of infringing goods.

Statutory Defences

Those found in the Trademarks Act, 2009 include:

• priority of use – prior use of a similar or identical mark for the same or similar goods/services bars infringement;
• non-use – if a registered trade mark is not used within five years of registration, it can be expunged or subject to cancellation, potentially defending against infringement claims based on that mark;
• abandonment – abandonment of a trade mark through non-use can also negate infringement claims based on that mark; and
• fair use – limited use of a trade mark for nominative purposes, comparative advertising, criticism, or for teaching can be considered fair use and permitted.

Common Law Defences

These include:

• bad faith – registration or use of a trade mark in bad faith to deceive or exploit the reputation of another mark can negate infringement claims;
• parody/satire – use of a trade mark for humorous or critical purposes in a non-misleading manner may be considered parody or satire and is protected under freedom of expression principles;
• functionality – if a trade mark solely represents a functional feature of a product, it may not be protectable and hence, infringement claims based on it may not hold;
• own-name defence – use of one’s own name in good faith, not intended to mislead or capitalise on another’s trade mark, can be a valid defence;
• limitation periods – infringement claims may be time-barred if not filed within a specific period;
• forfeiture – if the trade mark owner engages in conduct that undermines the mark’s distinctiveness or public trust, infringement claims may be weakened or forfeited; and
• laches, estoppel, acquiescence – these defences involve the trade mark owner’s conduct, such as unreasonable delay in enforcing rights or knowledge of infringement without objection, potentially weakening or barring their infringement claims.

Fair Dealing

Bangladesh recognises fair dealing under the Copyright Act 2023, allowing limited use of copyrighted works for purposes such as criticism, research, news reporting, education, or incidental inclusion in another work. Factors considered include the nature and purpose of the work, the portion used, its effect on the market value, and the character of the use.

Satire/Parody

While not explicitly stated, satire and parody are accepted expressions falling under fair dealing when they humorously critique or transform original works without commercial exploitation.

Free Speech and Information

Bangladesh does not have a specific exception for free speech in copyright law, but uses promoting public interest or facilitating information access may be protected under fair dealing or outside copyright protection, considering their educational value and potential harm to the copyrighted work.

Bangladesh has a limited exception for private copying of copyrighted works. This exception is outlined in the Copyright Act 2023:

• the copying must be for the copier’s own personal and private use, not for commercial purposes or distribution;
• the copying must be done from a lawfully acquired copy of the work;
• the exception does not apply to certain types of works, such as computer programs, sound recordings, and films.

Bangladesh offers limited exceptions for intermediaries such as internet service providers facing trade mark or copyright infringement claims. However, these “safe harbour” provisions have conditions

• Notice and takedown – prompt removal of infringing content upon receiving valid notice from rights holders.
• No knowledge or control – lack of knowledge of the infringement and no control over the content.
• Good faith – acting in good faith throughout the process.

These exceptions do not guarantee immunity, and intermediaries bear the burden of proof. Failure to comply or knowingly ignoring infringement can lead to liabilities.

Bangladesh applies a limited exhaustion principle to trade marks. Only goods physically imported with the owner’s consent can be freely resold within the country. Unauthorised imports, even genuine, infringe rights.

Exhaustion of copyright applies to first authorised sales of physical copies, allowing subsequent resale. The situation with regard to digital content remains unclear, often depending on licence agreements and content type.

In addition, courts may consider the specific circumstances when assessing exhaustion in cases of fire and authorised sales.

Bangladesh grants limited rights to qualified libraries and archives to reproduce and distribute copyrighted works for preservation, research, and study purposes under the Copyright Act 2023. These rights include making single copies for specific reasons such as preservation, with distribution restricted to specific user groups within the institution and commercial exploitation prohibited. Additionally, libraries and archives can use the broader fair dealing exception for purposes like criticism, review, education, and private study.

Available Relief

Bangladeshi courts can grant various injunctive reliefs, including:

• interim or preliminary injunctions to restrain ongoing infringement;
• perpetual injunctions to permanently prevent future infringement;
• orders for surprise inspections and seizure of infringing goods; and
• freezing orders to restrict access to assets related to infringement

Requirements for Injunctive Relief

Preliminary injunctions require proof of:

• likelihood of success – substantial evidence establishing a strong prima facie case of infringement;
• irreparable harm – inability to adequately compensate for damages through monetary awards; and
• balance of convenience – potential harm to the plaintiff outweighs harm to the defendant from the injunction.

Perpetual injunctions have similar requirements to preliminary injunctions, but the likelihood of success standard may be stricter.

Impoundment and Destruction

This is available for trade marks through administrative and criminal channels for counterfeit goods. Destruction orders are also possible for copyright infringement civil cases, but the process can be complex.

Bond Requirement

Courts may require security bonds to protect the defendant from potential loss if the injunction is later found to be wrongly granted. The amount depends on the potential impact on the defendant and the seriousness of the allegation.

Courts can award actual damages, accounting of profits, disgorgement of profits, enhanced damages for wilful infringement, and statutory damages (for registered works).

Actual damages involve financial analysis and expert evidence. Accounting and disgorgement require forensic accounting investigations. Enhanced damages need evidence of deliberate infringement. Statutory damages offer fixed sums for registered works, simplifying calculations but are available only for registered trade marks and copyrights, strengthening claims and potentially increasing damages.

In Bangladesh, the loser in trade mark and copyright cases usually pays both sides’ costs, including court fees and expenses.

Generally, courts require notice to the defendant before granting relief in trade mark or copyright infringement cases to uphold due process. Exceptions exist, such as rare ex parte injunctions in trade mark cases involving counterfeiting and imminent harm, but they require evidence of a high likelihood of success in the main case. Ex parte relief for copyright infringement is highly unlikely.

Bangladesh’s legal system provides for customs seizures of counterfeits and parallel imports under the Customs Act, 1969 and the Copyright Act, 2023.

Process for Customs Seizure

The trade mark or copyright owner files an application with the Directorate of Customs Intelligence and Investigation (DCII) providing:

• evidence of trade mark ownership (registration certificate) or copyright registration;
• details of infringing goods and suspected importers; and
• samples of genuine products for comparison.

The applicant may be required to post a security bond to cover potential costs and damages if the seizure is deemed wrongful.

The DCII investigates the application and verifies the information provided. They may also conduct raids or inspections. If infringement is confirmed, the DCII issues a seizure order authorising customs officials to detain the infringing goods. Detained goods are either released if no infringement is found or confiscated for further legal proceedings.

Infringement claims are adjudicated in court, and confiscated goods may be destroyed or released based on the court’s decision.

Owner Actions

Trade mark owners should register their marks, record them with customs, provide accurate information, and co-operate with investigations.

Copyright owners should register their works, provide evidence of ownership, and co-operate with customs.

Trade mark and copyright defendants can settle cases through negotiated agreements, mediation, or arbitration. Settlement can occur at any stage of litigation, including early on, during discovery, pre-trial, or even after a judgment. Formal mechanisms include mandatory settlement conferences and court-annexed mediation, although they are not mandated in all cases. Factors influencing settlement include the strength of the case, cost considerations, publicity concerns, and the importance of preserving relationships.

Bangladesh allows ADR for trade mark and copyright disputes and ADR is increasingly common due to its speed, cost-effectiveness, confidentiality, and flexibility. Available processes include mediation, arbitration, and negotiation. Formal mechanisms include court-annexed mediation and private ADR providers. Choosing the right process depends on factors such as dispute complexity, relationship preservation, and cost considerations.

Parallel revocation/infringement proceedings in other jurisdictions can influence trade mark and copyright infringement cases in Bangladesh. Courts may stay current proceedings pending outcomes elsewhere, especially if validity challenges are involved.

Decisions from parallel proceedings can have issue estoppel effects, preventing re-litigation of certain issues.

Evidence and findings from parallel proceedings may be used as persuasive evidence in the current case.

Trade mark decisions can be appealed to the High Court Division and then to the Appellate Division of the Supreme Court. Copyright decisions from the Registrar are appealed to the High Court Division, with further appeals to the Appellate Division.

Appeals must be filed within specific timeframes, based on legal errors or procedural irregularities. A formal appeal memorandum is submitted, followed by hearings where both parties can present arguments. The appellate body issues a final decision, potentially modifying or overturning the initial decision.

For trade marks and copyrights, appeals from Registrar decisions must be filed within 60 days of the High Court Division. Appeals from the High Court Division decisions must be filed within 30 days to the Appellate Division of the Supreme Court.

There are no strict timeframes for appellate decisions. Factors influencing duration include case complexity, backlog of cases, court schedules, and evidence presented. Resolution times typically range from several months to several years, possibly exceeding two years in complex cases.

There are limited grounds for appeal from Registrar decisions on trade marks. Appellants are generally limited to the grounds mentioned in the Registrar’s decision or those raised during proceedings before the Registrar.

There are no special provisions for copyright appeals beyond the general appellate procedures outlined in the Code of Civil Procedure, 1908.

In Bangladesh, appeals of trade mark and copyright decisions involve both factual and legal review, but with limitations. Appellate courts generally defer to lower courts’ factual findings unless clearly wrong, but fully review legal principles applied. Specifics may differ for trade marks as opposed to copyright.

Rights of Publicity in Bangladesh: Navigating the Grey Area

While Bangladesh lacks a dedicated “right of publicity” law, celebrities can seek protection through existing frameworks.

• Trade marks – registering name, image, or likeness for specific goods/services to prevent unauthorised commercial use that dilutes your distinctiveness.
• Copyright – if their persona is captured in a creative work (photo, sculpture), copyright protects the work itself, but exploiting the underlying personality requires the author’s permission.
• Right to privacy and reputation – the Constitution and common law offer protection against unauthorised use that causes mental distress, humiliation, or reputational damage.
• Unfair competition – leveraging a persona for commercial gain without consent might be considered unfair competition under specific circumstances.

Even though there is not a specific “right of publicity” law, Bangladesh has other unfair competition laws that can affect trade marks and copyrights. Relevant laws and protections include the following.

• The Competition Act, 2012, which prohibits a range of anti-competitive practices that can indirectly impact trade marks and copyrights, including:
1. deceptive marketing – misleading consumers about products or services, potentially infringing on competitor’s trade marks or copyright-protected elements used in marketing;
2. passing off – presenting goods or services as those of another, potentially infringing on their trade mark or copyright; and
3. abuse of dominant position – if a dominant market position is held, using it to unfairly disadvantage competitors could have implications for their trade mark or copyright protection.
• The Consumer Protection Act, 2009, which offers broader protection against unfair trade practices that harm consumers; this can be relevant if the infringing use of a trade mark or copyright misleads or deceives consumers.
• The common law mandates that principles of passing off and breach of confidence can also be invoked in certain cases involving trade mark or copyright infringement.

Key emerging IP issues in Bangladesh include:

• geographical indications, where increasing recognition and protection is leading to potential disputes over infringement; and
• ongoing discussion around the Copyright Act 2023, focusing on digital age exceptions and balancing rights.

There have not been any specific laws or landmark decisions regarding AI in IP yet. International developments through WIPO may influence future frameworks.

Trade Marks

There are no internet-specific rules regarding trade marks; existing provisions apply. Procedures do, however, exist for resolving domain name disputes and online platforms may have internal policies regarding trade mark compliance.

Copyright

There are limited safe harbour provisions for online service providers under specific conditions. No registration is required for takedowns, but it can strengthen claims. There are notice-and-takedown procedures followed by ISPs for removing infringing content.

In Bangladesh, registering trade marks and copyrights is recommended but not mandatory for companies to manufacture products. However, registration offers advantages such as stronger legal protection, easier enforcement, and public recognition. Businesses often prioritise registration for brand identity, consumer trust, and deterrence. While copyright has no registration requirement, it is common for valuable creative assets to bolster protection and licensing.