Trade Marks

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

Copyright

In Bangladesh, the Copyright Act, 2023 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

While primarily following a statutory approach, Bangladesh 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;
• the Berne Convention for the Protection of Literary and Artistic Works, which ensures the international protection of literary and artistic works;
• the WIPO Copyright Treaty, which commits to adequate protection for authors’ rights in the digital environment;
• the WIPO Performances and Phonograms Treaty, which addresses rights in the digital era; and
• the 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 law, 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 Agreements

The following international agreements apply in Bangladesh:

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

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. Works eligible for safeguarding include (non-exhaustively):

• 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 the purview of copyright, 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 – while 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 (AI) 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. As per statute, the author 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 such as AI or animals. The legal acknowledgment of non-human authors remains a complex and evolving area.

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, under the Copyright Act, 2023, copyright owners 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.

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; and
• registered copyright may be prioritised in disputes.

The BCO maintains the copyright register. The register may not be publicly available online; access may involve contacting the BCO. Local and foreign applicant individuals and legal entities – including authors and creators – can register.

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.

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 BCO in person or through authorised agents.

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

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.

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

The consequences for providing incorrect information include rejection or denial. The BCO 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.

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. The following 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 the ® symbol – registered trade mark owners in Bangladesh can use the ® symbol with their mark to indicate formal registration.

Different standards for registration include the following.

• 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 its office. There are 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.

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 expiry of the current registration term. There is typically a grace period (six months) for renewal after the expiry 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.

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 has 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 Marks 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.

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

A party is permitted to file an opposition to a trade mark application after the application has been published in the official Trade Marks Journal. As per the Trademarks Act, 2009, the opposition period is 60 days from the date of publication. During this period, any person who believes that the registration of the trade mark would adversely affect their rights may file an opposition with the Registrar of Trade Marks.

The law does not allow any extension of time beyond the 60-day opposition period. If an opposition is not filed within this timeframe, the application proceeds towards registration. Additionally, there is no statutory provision for a formal “cooling-off” period in Bangladesh. However, the parties may negotiate and attempt to resolve disputes amicably outside the formal opposition process.

• Trade mark revocation/cancellation: under the Trademarks Act, 2009, a trade mark may be subject to cancellation on various grounds, including non-use for five consecutive years from the date of registration. A party may file a revocation or cancellation petition before the Registrar or the High Court Division of the Supreme Court of Bangladesh.
• Copyright revocation/cancellation: the Copyright Act, 2000 does not have a specific revocation mechanism for registered copyrights. However, copyright protection is subject to validity periods (typically 60 years after the death of the author for literary, dramatic, musical and artistic works) and can be challenged on grounds such as fraud or misrepresentation during registration.

Under the Trademarks Act 2009, some grounds for cancellation are time-sensitive:

• a mark may be challenged on absolute grounds (eg, lack of distinctiveness, misleading nature) within five years of registration;
• a mark can be revoked if it has not been used for five consecutive years following registration; and
• fraudulent or bad faith registration can be challenged at any time.

For copyrights, there is no strict time limit for cancellation, but challenges based on fraudulent registration should be made as soon as possible to prevent prolonged enforcement of an invalid copyright.

Under the Trademarks Act, 2009 of Bangladesh, an opposition to a trade mark application may be filed on the following grounds:

• likelihood of confusion – if the mark applied for is identical or similar to an earlier registered trade mark or pending application, and it covers similar goods or services, opposition may be filed to prevent confusion among consumers;
• similarity to well-known marks – although Bangladesh does not have explicit dilution provisions in its Trademarks Act, 2009, opposition can be filed if a mark is similar to a well-known mark and its use may mislead consumers;
• descriptiveness or lack of distinctiveness – if the trade mark is descriptive of the goods or services or lacks distinctiveness, an opposition may be raised under Sections 8 and 9 of the Act;
• deceptiveness – a trade mark that is deceptive or likely to mislead the public concerning the nature, quality or origin of goods or services may be opposed;
• prohibited or offensive matter – if the trade mark contains elements that are offensive, scandalous or against public morality or policy, it may be challenged; and
• earlier rights – an opposition may be filed if the opponent holds prior rights to the mark, including unregistered rights based on reputation and prior use.

Opposition must be filed within two months from the date of publication of the application in the Trade Marks Journal as per the Trade Marks Rules, 2015.

Trade Mark Revocation/Cancellation

A registered trade mark in Bangladesh may be cancelled or revoked under the Trademarks Act, 2009 for the following reasons:

• non-use – if the registered trade mark has not been used in Bangladesh for a continuous period of five years after registration, it may be cancelled for non-use;
• deception or misrepresentation – if a mark was registered based on false representation or fraud, it may be revoked;
• becoming generic – if the mark has become a common term in trade for the goods or services it was registered for, cancellation may be sought; and
• conflict with earlier rights – if it is proven that the mark conflicts with an earlier registered or well-known mark, revocation may be pursued.

The application for cancellation or revocation can be filed with the Registrar of Trade Marks or before the High Court Division of the Supreme Court of Bangladesh.

Copyright Revocation/Cancellation

Copyright in Bangladesh is governed by the Copyright Act, 2000. While copyright is generally not subject to cancellation like trade marks, it can be challenged or invalidated in cases such as:

• fraud or misrepresentation – if the copyright registration was obtained fraudulently or through misrepresentation;
• lack of originality – if it is found that the work lacks originality and does not meet the copyrightability criteria; and
• public domain – if the work is determined to have already been in the public domain before registration.

Copyright disputes are generally handled by the Copyright Office or in civil courts.

Expungement or Re-Examination Procedure

Under the Trademarks Act, 2009, an expungement (removal of a trade mark from the register) can be initiated through:

• rectification proceedings – a party may apply for rectification of the trade mark register if the mark was registered in error or has been wrongly retained in the register;
• cancellation for non-use – if the mark has not been used for five consecutive years, any interested party can apply for its removal; and
• judicial review – the High Court Division has the authority to review and direct the removal of trade marks that do not comply with the Act.

For copyright, there is no formal “re-examination” process after registration, but disputes over ownership or originality can be addressed in court.

Opposition to Trade Mark Registration

Any person may file an opposition to a trade mark application in Bangladesh. The opponent does not necessarily need to be a registered trade mark owner, but they must have a valid interest in the matter, such as prior use of a similar mark, a reputation in the mark, or potential harm from the registration of the opposed mark.

Holding a registered trade mark is not a requirement. An opponent can rely on prior use, reputation or earlier rights in an unregistered mark to oppose a trade mark application. However, having a prior registered trade mark strengthens the case.

While it is not mandatory to have an attorney, it is highly recommended to engage a trade mark attorney or an intellectual property agent to ensure compliance with procedural requirements and strengthen the opposition case.

Revocation/Cancellation of a Trade Mark

The following parties can initiate a cancellation action:

• the owner of an earlier registered trade mark or copyright;
• any third party with a legitimate legal or commercial interest;
• the Registrar of Trade Marks (in cases of non-use or procedural irregularities); and
• admissibility/standing requirements.

A cancellation applicant must demonstrate a legal or commercial interest in the matter. This can be satisfied by:

• proof of prior use of a similar or identical mark;
• ownership of an earlier registered trade mark; and
• evidence of harm due to the existence of the registered mark (eg, market confusion, unfair competition).

Grounds for Revocation/Cancellation

These grounds are as follows:

• non-use – if the registered trade mark has not been used for five consecutive years from the date of registration, a third party may file for cancellation;
• lack of distinctiveness – if the mark is generic or descriptive and does not serve as a trade mark;
• bad faith registration – if the mark was registered fraudulently or with deceptive intent; and
• conflict with prior rights – if it infringes upon earlier trade mark rights, copyright or well-known marks.

Opposition Procedure in Bangladesh

The opposition process in Bangladesh follows a structured procedure under the Trademarks Act, 2009 and the Trade Marks Rules, 2015. The key steps include the following.

• Filing of notice of opposition (TM-5): any person may oppose a trade mark application within 120 days from the date of publication in the Trade Marks Journal by filing a Notice of Opposition (TM-5) with the Trade Marks Registry. The opposition must specify the grounds, such as similarity to an existing mark, lack of distinctiveness, or bad faith registration.
• Response by the applicant (TM-6): the applicant has two months from the date of receipt of the opposition notice to file a counterstatement (TM-6), addressing the claims made by the opposing party. Failure to file a response results in automatic abandonment of the application.
• Evidence submission: both parties have an opportunity to present evidence in support of their claims. The opponent submits evidence first, followed by the applicant, and the opponent then has the option to file further rebuttal evidence.
• Hearing: if the opposition is not resolved through documentary evidence alone, the matter proceeds to a hearing before the Registrar of Trade Marks. At this stage, both parties present oral arguments and may be questioned by the Registrar.
• Decision and appeals: the Registrar will issue a written decision, either upholding the opposition (refusing the trade mark registration) or dismissing the opposition (allowing the registration to proceed). If either party is dissatisfied, they may file an appeal before the High Court Division of the Supreme Court of Bangladesh.
• Regarding discovery, Bangladesh does not have a formal discovery process similar to common law jurisdictions. However, parties may submit documentary evidence of use, reputation, distinctiveness and prior rights to strengthen their case.

Revocation/Cancellation Actions in Bangladesh

In Bangladesh, revocation or cancellation of a registered trade mark can be initiated before both:

• the Trade Marks Registry (Registrar of Trade Marks); and
• the civil courts (district court or High Court Division).

The Registrar of Trade Marks has jurisdiction to remove a registered trade mark on certain grounds, such as non-use for five consecutive years or registration obtained by fraud. However, more complex disputes – especially those involving ownership disputes, passing off, or infringement claims – are generally handled by the civil courts.

Similarly, copyright-related cancellation actions are typically handled by the BCO or through civil litigation in the courts, particularly in cases of copyright infringement or disputes over authorship.

Partial Revocation/Cancellation

Partial revocation or cancellation of a trade mark is possible in Bangladesh. This can occur in the following circumstances:

• non-use of a trade mark for specific goods/services – if a trade mark owner has not used the mark for certain categories of goods or services for five consecutive years, the mark can be partially revoked for those specific goods or services while remaining valid for the others;
• descriptive or misleading elements – if a portion of a trade mark is found to be descriptive, deceptive or non-distinctive, that specific element may be removed while allowing the remaining parts of the mark to continue; and
• consent or agreement – in some cases, a partial revocation may be agreed upon between parties as part of a settlement or coexistence arrangement.

In Bangladesh, legal remedies against a decision of the Department of Patents, Designs and Trade Marks (DPDT) regarding a trade mark application or registration are governed by the Trademarks Act, 2009 and the relevant procedural laws. The available remedies and appeal process are outlined below.

Legal Remedies Against a Decision of the Trade Marks Office

If a party is aggrieved by a decision of the Registrar of Trade Marks, they have the right to challenge the decision through an appeal process.

Appeal to the High Court Division

As per Section 123 of the Trademarks Act, 2009, any person aggrieved by a decision or order of the Registrar may appeal to the High Court Division of the Supreme Court of Bangladesh.

Judicial Review

If a party believes that the decision of the Registrar or the High Court Division is contrary to law or involves an abuse of power, they may seek judicial review under Article 102 of the Constitution of Bangladesh.

Appeals against decisions of the Registrar of Trade Marks are filed directly with the High Court Division of the Supreme Court of Bangladesh. There is no separate trade mark appeal court/board in Bangladesh.

If the High Court Division’s decision is unfavourable, a further appeal may be made to the Appellate Division of the Supreme Court.

In general, only final decisions of the Registrar of Trade Marks are appealable.

However, in cases where the decision of the Registrar substantially affects the rights of a party (eg, refusal of registration or rectification orders), an appeal can be made without waiting for further administrative procedures.

Likely Timescales for Appeals

The timeline for an appeal varies depending on the complexity of the case and the court’s docket. The approximate timescales are as follows:

• filing of appeal – within three months from the date of the Registrar’s decision (as per Section 123 of the Trademarks Act, 2009);
• High Court Division decision – typically takes six months to two years, depending on the workload of the court; and
• further appeal to the Appellate Division – if necessary, an appeal to the Appellate Division of the Supreme Court may take another one to three years.

Amendment is possible in revocation/cancellation proceedings in Bangladesh, subject to the provisions of the Trademarks Act, 2009 and the Patents and Designs Act, 1911, as applicable. The amendment may be allowed under the following circumstances.

Amendment in Revocation Proceedings (Patents and Designs)

Under the Patents and Design Acts, 1911, revocation proceedings can be initiated on various grounds, including lack of novelty, obviousness, or failure to comply with statutory requirements. During such proceedings:

• the applicant may seek amendment of pleadings to clarify claims, correct errors, or strengthen the grounds for revocation; and
• the respondent (patent owner) may apply to amend patent claims to overcome objections raised in the revocation proceedings.

The amendment is subject to the approval of the DPDT, and must not introduce new matter that substantially alters the original claims.

Amendment in Cancellation Proceedings (Trade Marks)

Under the Trademarks Act, 2009, cancellation proceedings may be initiated based on non-use, fraud or lack of distinctiveness. During such proceedings:

• the petitioner (challenger) may seek amendments to correct procedural defects or to refine the grounds for cancellation; and
• the trade mark owner (respondent) may apply to amend the registration details to limit the specification of goods/services or clarify descriptive elements to address objections.

Any amendment must comply with Section 57 of the Trademarks Act, 2009, ensuring that it does not substantially alter the original nature of the case.

Courts’ and the DPDT’s Discretion

The Registrar of Trade Marks and the courts have the discretion to allow amendments, provided they do not:

• change the nature of the dispute;
• introduce an entirely new ground not previously mentioned; or
• prejudice the rights of either party.

Amendment applications should be filed at an early stage, and permission is granted on a case-by-case basis.

In Bangladesh, actions involving revocation/cancellation and infringement are generally heard separately, as they serve different legal purposes and follow distinct procedures under the Trademarks Act, 2009 and the Patents and Designs Act, 1911.

Revocation/Cancellation Versus Infringement – Separate Proceedings

Revocation/cancellation

A revocation or cancellation action is initiated to remove a registered trade mark or patent from the register due to invalidity, non-use or other legal grounds.

This is typically filed before the DPDT or, in some cases, before the High Court Division of the Supreme Court of Bangladesh.

Infringement

An infringement action is filed when an unauthorised party uses a registered trade mark, patent or design without permission, leading to a lawsuit for damages, injunctions or other reliefs.

These cases are heard by civil courts (district courts) or, in serious cases, may also involve criminal prosecution.

Differences in Timing of Decisions

Infringement cases

These are civil or criminal matters and are usually heard on a priority basis when urgent relief (eg, injunctions) is sought.

The timeline depends on the complexity of the case, the evidence presented and court backlog.

Interim relief, such as a temporary injunction, may be granted early, though final decisions take longer.

Revocation/cancellation cases

These cases often take longer, as they involve administrative or judicial review.

If filed before the Registrar of Trade Marks, the process includes hearings, evidence submission and arguments.

If the matter escalates to the High Court, it may take a significant amount of time before a final judgment is rendered.

Interplay Between the Two

If a defendant in an infringement case argues that the plaintiff’s trade mark or patent is invalid, they may file a revocation/cancellation action.

In some cases, the infringement suit may be stayed (put on hold) pending the outcome of the revocation/cancellation case.

However, courts can still grant interim relief (such as injunctions) in infringement cases while a cancellation action is pending.

Revocation/cancellation and infringement cases are generally not heard together in Bangladesh. Infringement cases may be resolved faster if immediate relief is needed, while revocation cases take longer due to procedural complexities. However, a revocation action can impact an infringement case if the trade mark or patent in question is ultimately invalidated.

In Bangladesh, both trade marks and copyrights can be revoked or cancelled if they were filed fraudulently.

Trade Marks

Under the Trademarks Act, 2009, any aggrieved person may apply for the cancellation or rectification of a fraudulently registered trade mark.

The application for cancellation can be filed with the Trade Marks Registry (DPDT) or the High Court Division of the Supreme Court of Bangladesh under Section 51 of the Act.

The Registrar may also cancel the registration suo motu if it finds sufficient evidence of fraud.

If an opposition or cancellation proceeding is initiated due to fraudulent filing, the registration process is generally put on hold until the matter is resolved. If the trade mark has already been registered, it remains valid until a final decision is made by the DPDT or the court.

If an applicant is found to have filed a fraudulent trade mark application, the registration may be cancelled under Section 51 of the Trademarks Act, 2009. The applicant may face civil and criminal liability for fraudulent misrepresentation. If the fraud caused damage to another party, they may sue for damages and injunctions.

Copyrights

Under the Copyright Act, 2000, if a copyright is obtained fraudulently, any interested party can challenge its validity.

The BCO can review such claims, and legal action can be taken in the High Court for cancellation.

Copyright is automatically granted upon creation, and registration is not mandatory. However, if fraud is alleged in a copyright registration, the BCO or the court may suspend its effect until the dispute is resolved.

If fraud is proven, the copyright registration may be declared invalid. If the fraud involved false claims of ownership, the guilty party may face legal penalties, including fines and imprisonment under the Copyright Act, 2000.

Assignment of Trade Marks and Copyrights in Bangladesh

Procedures, requirements and restrictions for assigning a trade mark or copyright

Trade marks

Under the Trademarks Act, 2009, a trade mark can be assigned with or without the goodwill of the business.

The assignment must be in writing and signed by the assignor and assignee.

If the trade mark is registered, the assignment must be recorded with the DPDT to be legally effective against third parties.

Approval from the DPDT is required if the assignment might cause confusion or if there are restrictions based on public interest.

Consideration (payment or value) is generally required, though is not explicitly mandated by law.

Copyright

Under the Copyright Act, 2000, an assignment of copyright must be in writing and signed by the copyright owner.

The agreement must specify the rights being transferred, the duration, and the territorial scope of the assignment.

The assignment must be for a specific purpose and time period unless stated otherwise.

No approval from the BCO is required, but registration of copyright can help establish ownership and avoid disputes.

Partial assignment of trade marks and copyrights

Trade marks

Partial assignments are permitted under the Trade Marks Act, 2009.

A trade mark owner can assign rights for specific goods or services (division by class) or for a specific geographical area.

Copyright

Copyright can be assigned partially under the Copyright Act, 2000.

The copyright owner may transfer some of the rights (eg, only reproduction rights or distribution rights) while retaining others.

Transmissibility of copyright or trade mark rights upon death

Trade marks

Trade mark rights are transmissible upon death under inheritance laws.

The legal heirs or successors must apply to the DPDT to record the change in ownership.

Copyright

Copyright is inheritable under the Copyright Act, 2000.

Copyright lasts for 60 years after the author’s death, and the legal heirs or successors acquire ownership unless assigned otherwise in a will.

Licensing of Trade Marks and Copyright in Bangladesh

Trade mark licensing

Under the Trademarks Act, 2009, a trade mark owner can grant a licence to another party to use the mark.

• the licence agreement must be in writing;
• the licensee must be recorded with the DPDT to have legal effect against third parties;
• the trade mark must be registered before it can be licensed;
• the licensing agreement should clearly define the scope, territory, duration and terms of use; and
• the licensor retains ownership of the trade mark, and quality control provisions should be included in the agreement to prevent dilution of the mark.

Copyright licensing

Under the Copyright Act, 2000, a copyright owner can license their rights to another party.

Copyright licensing must be in writing and signed by the copyright owner.

Unlike trade marks, registration is not mandatory for copyright to be protected or licensed. However, having the copyright registered with the BCO provides stronger legal standing.

No prior approval from the BCO is required to execute a licence agreement.

Types of Licences and Additional Rights

The following types of licences can be granted for both trade marks and copyrights.

• Exclusive licence – the licensee has the sole right to use the trade mark or copyright, and even the owner cannot use it.
• Non-exclusive licence – the licensee has the right to use the trade mark or copyright, but the owner can grant licences to others as well.
• Sole license – only the licensee and the owner can use the trade mark or copyright (no third parties).
• Perpetual licences – trade mark licences cannot be perpetual as they must comply with renewal and validity periods of the trade mark registration. Copyright licences can be perpetual if explicitly stated in the agreement.
• Archival rights – a copyright licence may include archival rights, allowing the licensee to store, preserve or use the copyrighted material for future reference. Trade mark licences generally do not include archival rights, as they deal with active use in trade.

Licensing of Applications

Trademark applications

In Bangladesh, a pending trade mark application cannot be licensed. Licensing is only possible after the trade mark is registered.

Copyright applications

Since copyright protection exists automatically upon creation, a copyright application can be licensed even before formal registration.

Trade mark and copyright licensing in Bangladesh require written agreements, with trade marks requiring prior registration before licensing. Different types of licences are allowed, and copyright licences can be perpetual. Trade mark applications cannot be licensed, but copyright applications can be. Proper documentation and registration with relevant authorities help ensure enforceability and legal protection.

In Bangladesh, the registration and recordal requirements for the assignment or licensing of trade marks and copyrights differ.

Trade Marks

Under the Trademarks Act, 2009, an assignment or licence of a registered trade mark must be recorded with DPDT to be legally effective against third parties.

• Assignment: the assignee must apply for registration of the assignment in the prescribed manner with supporting documents, such as the assignment deed. If the assignment is not recorded, it may not be enforceable against third parties, and a subsequent bona fide assignee who records their assignment first may have a stronger legal claim.
• Licence (Registered User Agreement): a trade mark licence is referred to as a Registered User Agreement under Bangladeshi law. The licensee’s rights must be registered with the DPDT; otherwise, the licensee may not be able to enforce their rights effectively.

Risks of non-registration

• legal validity – if an assignment or licence is not recorded, it may not be recognised in legal disputes;
• third-party claims – a later assignee or licensee who registers their rights first may obtain superior legal status over the prior but unrecorded assignee/licensee; and
• enforcement issues – unregistered licensees may struggle to take action against infringement.

Copyright

Under the Copyright Act, 2000, assignment or licensing of copyright does not require mandatory registration to be valid. However, voluntary recordal with the BCO can serve as strong evidence in the case of disputes.

Risks of non-registration

• proving ownership – without registration, the assignee or licensee may face difficulties in proving ownership or rights in legal disputes; and
• potential conflicts – a subsequent assignee/licensee who records their agreement first may gain an advantage in claims.

For trade marks, registration of assignments and licences is highly recommended to ensure enforceability and protection against third-party claims. For copyrights, while not mandatory, registration provides additional legal security.

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

Copyright

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 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.

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 intellectual property right owner must have suffered harm due to the infringement; for example, a lost sale or damage to 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.

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 intellectual property matters such as trade marks and copyrights.

In Bangladesh, the effect of Trade Marks 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 that the infringer has the burden of proving 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 previously);
• 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.

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.

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 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 when 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.

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.

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 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 with 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.

Key emerging intellectual property 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 yet been any specific laws or landmark decisions regarding AI in intellectual property. 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. Some notice-and-takedown procedures are followed by ISPs for removing infringing content.