The Trade Marks Act, 2009 (Act No XIX of 2009) (“Act 2009”) is the governing statute relating to the law of trade marks. The Act has been effective since 1 July 2008, repealing the earlier Trade Marks Act, 1940. Subsequently, in accordance with Section 124 of the Act 2009, the Trade Marks Rules 2015 were implemented, repealing the Trade Marks Rules of 1963. The common law jurisdiction relating to this area is quite rich and, particularly in recent years, the courts of Bangladesh have passed multiple judgments settling several landmark principles. 

It is common knowledge that one of the major spirits of the law of trade marks is to protect the interest of the honest earlier user and/or restrict the dishonest adopter. The Act 2009 comprises several sections which facilitate upholding this spirit, some of which are discussed in this article. According to Section 2(5)(a) of the Act 2009 “False trade description” means ⎯ to use a trade description which is untrue or misleading in a material respect as regards the goods or services to which it is applied. As per Section 8(g) of the Act 2009, no mark or part of a mark shall be registered as a trade mark if the application is made in bad intention and faith. The Apex Court also considers the issue of honesty with utmost importance and has rejected trade mark applications filed with dishonest intentions. In the judgment reported in 60 DLR (AD) 161, the High Court Division held that that the applicant (former agent) committed fraud upon the registrar by claiming the ownership themselves in order to obtain the registration, and hence the application is liable to be rejected.

The issue of likelihood of deception is also another key factor for granting registration. Section 8(c) of the Act 2009 provides that no mark or part of a mark shall be registered as a trade mark if its use would be likely to deceive or cause confusion. Section 10(1) of the Act 2001 provides that no trade mark shall be registered in respect of any goods or description of goods or in respect of any services or description of services which is identical with or deceptively similar to a trade mark which is already registered in the name of a different proprietor in respect of the same goods or description of goods or in respect of the same services or description of services, as the case may be. At the time of incorporation, Section 10(5) Act 2009 restricted registration of a trade mark which is similar to a well-known and registered trade mark in Bangladesh. In order to ensure protection against use of deceptive marks, the legislature in 2015 brought an amendment in Section 10(5) and added the terms “confusingly similar” and “trade description” as well. Section 2(20) of the Act 2009 defines “deceptively similar mark” as a mark which is likely to deceive or cause confusion and nearly resembles another mark registered under this act. The Apex Court of Bangladesh has clearly held that in deciding the question of similarity between the two marks, the test is whether a member of the public is at risk to be confused or deceived. In determining the same, actual confusion or deception is not necessary; mere likelihood of confusion or deception will be enough [73 DLR (AD) 33]. The High Court Division, while explaining the role of the registrar, held that the Act 2009, read with the Rules 2015, mandate certain definite responsibilities that oblige the registrar to further assist in the overall objective in obviating any possibility of deception arising from and confusion caused by similar and competing trade marks used in conjunction with similar of kinds of goods [28 BLD (HCD) 31]. In another reported judgment, the High Court Division held that, use of an essential part of the mark is liable to create confusion [6 ALR 300].

Until recently, the Trade Mark Authority has been strict in granting registration of trade marks with common dictionary words or descriptive words. However, in recent times, several applicants obtained registration with descriptive and/or common dictionary words. The Trade Mark Authority now accepts the legal submissions that a descriptive trade mark may be entitled to protection if it has assumed secondary meaning which identifies it with a particular product or as being from a particular source, and common words of a language and/or descriptive words can be trade marked, when they have acquired distinctiveness/secondary meaning.

Another important aspect of development in the realm of trade mark laws is the protection of internationally well-known industrial property including, inter alia, trade marks and trade names in Bangladesh. For such protection, the Paris Convention for the Protection of Industrial Property was signed between the countries on 20 March 1883. Bangladesh joined the World Intellectual Property Organization (WIPO) in 1985 and became a member country of the Paris Convention on 3 March 1991. The Trade Marks Act 2009 defines the Paris Convention in Section 2(19) and Sections 119 and 120 of the Act 2009 provide special provisions relating to Convention countries. 

The protection of well-known trade marks in the modern word is inseparable from another principle called the “doctrine of trans-border reputation”. As per recent judgments of the apex courts of the sub-continent, including Bangladesh, the traditional concept mandating presence product/business in the local market has faded. The High Court Division now holds the view that, in this age and time, the world has become a small one for all practical purposes and one should not strictly adhere to the traditional concept of local/national market. There is free movement of commodities and capitals. The law must be given a new interpretation to suit the needs of the day and the interest of the original owner of the mark must be protected [57 DLR 93]. In a 2024 judgment, the High Court Division granted protection to a trade mark based on international registrations, advertisements and international use.

Keeping in mind the spirit of the legislature, judicial decisions and WIPO, the Ministry of Industry has published a booklet/guide book in which it was stated that “well known marks are entitled to much protection, even if they are not registered”. The booklet also mentions that, in case of well-known trade marks, the marks are entitled to get protection against the products of different classes. In light of the above it can be said that the concept of well-known mark is receiving much attention and proprietors of such well-known marks are getting better protection.

Beside the issue of use of deceptive trade marks, the Trade Mark Authority and courts have also started recognising the concept of use of deceptive trade dress. The courts now consider that ingredients of trade dress, get up, colour combination, lay out of the container or packing acquire significance and relevance for determining the offence of passing off. If similarities of trade dress are substantial from the look of two goods, it comes within the mischief of passing off. Recently, the High Court Division granted an injunction restraining the use of the deceptive colour combination and bottle shape, despite the trade marks being quite different from each other. The courts recognise that the test is whether there is likelihood of confusion or deceptiveness in the minds of unwary customers, irrespective of dissimilarities in the trade name.

In case of international registrations, the Trade Mark Authority also gives priority to issues like registration in the country of origin, registration with EU and international registrations in a neighbouring country. Beside registration, the Court also emphasises the right of an earlier user. The High Court Division in a judgment reported in 4 SCOB [2015] HCD 89 held that “the paramount important question in a trademark dispute is that, who is the earlier user of the trademark?”. 

The very recently enacted Copyright Act 2023 (Act No XXXIV of 2023) (“Act 2023”) came into effect on 18 September 2023, repealing the earlier Copyright Act 2000. The amount of case law is negligible with regard to copyright disputes in comparison with trade mark disputes. The main reasons for non-enforcement of copyrights are many, including (i) lack of knowledge on both sides – ie, creators and public, (ii) non-availability of special or exclusive adjudicating forum and (iii) lack of effective remedies and penalties.

Despite the aforesaid realities, the Act 2023 was enacted in order to ensure more balance between the rights of creator and free accessibility of information.  Some of the changes and developments that have been introduced in the 2023 Act in comparison to the former Act of 2000 are mentioned below. The government has not enacted new Rules under the Act 2023 and the Copyright Rules 2006 are still operative.

The list of activities treated as “Work” has been expanded in the new Act, covering architectural design, performance, database, digital activities based on information technology, folk-cultural expressions, etc. In the same way, the definition of “artistic work” and “author” has also been expanded. The new Act ensures protection against copyright violation on different digital platforms. The chapters relating to infringement of copyright, civil remedies and criminal offences under the new Act of 2023 ensure more protection than the prior Act 2000. The number of fines and imprisonment for unauthorised publications has been increased. 

The Act 2023 introduced a much-enhanced mechanism for search and seizure. Section 110 empowers the government to create a task force to ensure protection against infringement of copyright. Section 115 of the Act 2023 ensures applicability of the Mobile Court Act, 2009 for adjudication of the offences committed under this Act. Section 114 of the Copyright Act 2023 provides a detailed outline about the course of action with regard to confiscated items. 

In the light of the above we can certainly say that the laws of trade marks and passing off in Bangladesh are always developing in order to meet the standard of protection of intellectual property rights that is required in modern times. The awareness of consumers, delinquents and true proprietors is also significantly increasing. In comparison to that, the enforcement mechanism and public awareness for copyright matters are low. It is hoped that, as a result of the recent developments in the Act 2023, enforcement mechanisms will become more effective and vibrant.