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Assignment
On
Trademark Protection: Bangladesh Approach

Course Title: Intellectual Property Law of Bangladesh

Course Code: 3202

Submitted to
Ms. Roksana Akter
Assistant Professor, Department of Law
Dhaka International University.

Prepared by
S. M. JOHIR UDDIN
Batch: 30th, Roll: 26
Program: LL.M (2 years)
Department of Law, DIU

Date of submission: 26 / 11 / 2020

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Contents:

No Subject Page

01 Introduction 3
02 Definition of trademark 3
03 Historical Background of Trademark 4
04 Trademark Registration Procedure 4
05 Characteristics of a good Trademark 6
06 Trademark Protection 7
Facilities of trademark
1. Exclusive Rights 7
2. Builds trust and Goodwill 7
3. Differentiates Product 8
4. Recognition to product’s Quality 8
07 5. Creation of Asset 8
6. Use of symbol 8
7. Protection against infringement 8
8. Protection for 10 Years at low cost 8
9. Global Trademark Registration 9
10. Attract Human Resources 9
08 Trademark Infringement 9
09 Remedies both Civil and Criminal 10
10 Recommendations 11
11 Conclusion: 12
12 References 13
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Trademark Protection: Bangladesh Approach

Introduction:
A trademark is a legal protected name, sign or symbol which is an integral
part in case of industry; it distinguishes the goods of one enterprise from
another. Trademark requires statutory protection to ensure exclusive right
to the proprietors. It is also necessary for smooth industrial and economical
development of a country. In Bangladesh, the Trademark Act 2009
provides protection to the trademark proprietors. The Trademark Rules
1963 is also operative here which has very poor statutory support in case
of ensuring trademark protection with compliance with international treaty.
Therefore, the present laws fail to fulfill the demands of present digital
based society. In a country, trademark protection rights can be
established through registration or use or both. In Bangladesh, trademark
registration is not compulsory but in practice, no trademark is generally
entitled to get protection from the law of court without registration; a
certificate of a registered trademark from a proper government authority is
deemed as a prima facie evidence. This Assignment show that definition of
trademark, historical background, characteristics of trademark, facilities of
trademark, Trademark infringement protection remedies and some
recommendations.

Definition of trademark:
A trademark is a symbol, which is generally used to identify a particular
product, which indicates its source. A trademark can be a combination of
words, phrases, symbols, logos, designs, images or devices, used by an
individual, legal entity or business organization to distinguish their products
from that of others. Under the Trademark Act, 2009, “Trademark” means a
registered trademark or a mark used in relation to goods or service or a
mark used or proposed to be used in relation to any service or goods
indicating a connection in the course of trade between the goods and the
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person having the right, either as proprietor or as registered user, to use

the mark. In Bangladesh, the term ‘trademark’ includes service marks too.

Historical Background of Trademark:

Bangladesh gained its independence in 1971 through a liberation war with
West Pakistan. Prior to 1947, it was part of the Indian subcontinent under
the British Regime and British Rules were applicable in most cases or they
passed new enactments for the subcontinent. There were no specific
enactments in British India before 1889. At that time, trademark protection
was ensured under the different enactments like the Penal Code 1860, the
Specific Relief Act, 1877. In 1889, the then British rulers first enacted the
Merchandise Marks Act, 1889 and the Trademarks Act, 1940 for protecting
the trademarks. The Act of 1940 was enacted in British-India by following
the Trademark Act,1938 of England. Bangladesh inherited the
Merchandise Marks Act, 1889 and the Trademarks Act, 1940 from
Pakistan by the independence of 1971. These two laws had ensured
trademarks protection in Bangladesh for a long time. In 2008, both, the
Merchandise Marks Act, 1889 and the Trademarks Act, 1940 were
repealed by the Trademark Ordinance, 2008 but this law was also
repealed by the Trademarks Act, 2009. The present legal basis of
trademark protection in Bangladesh is the Trademark Act of 2009 (herein
referred to as the 2009 Act) and Trademark Rules 1963. Bangladesh is
also a signatory to the following international agreements. The World
Intellectual Property Organization, since May 1985 (herein referred to as
WIPO). The Paris Convention for the Protection of Industrial Property,
since March 1991(herein referred to as Paris Convention). The Agreement
on Trade-Related Aspects of Intellectual Property Rights, since January
1995(herein referred to as TRIPS Agreement)

Trademark Registration Procedure:

In Bangladesh in order to get registration one has to show that the mark
has distinctiveness; it is not contrary to the law or public policy; it is not
imitation of another registered or well-known mark or a mark which has a
cross-border reputation (like TATA). Any person claiming to be the
proprietor of a Trademark or Service Mark used or proposed to be used
by him or them, who desire to register, he shall apply in writing to the
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Registrar of the Department of Patents, Designs & Trademarks (DPDT,

91, Motijheel C/A(5th Floor), Dhaka-1000) for the registration of his
trademark or service mark. Separate application is required for every class
of goods or services. Every application made under sub-section (1) of
section 15 of the Act may be submitted to the Head Office of the
Department or any branch of the Trademarks Registry having
jurisdiction over the principal place of business in Bangladesh of the
applicant or, in case of the joint applicants, the principal place of business
in Bangladesh, whose name is first mentioned in the application, as having
a place of business in Bangladesh is situated. It is important to note that in
case of filing of Trademark application in Bangladesh the following
documents or information will be required:-
1. Description of the Trademark or service mark and if it is a logo or
device mark then 15 (fifteen) copies label or logo for each of the
application.
2. Full Name, Street Address and Nationality of the applicant(s): In the
case of a company, the country or state of incorporation and the
address of the principal place of business should be given. In the case
of a partnership firm, full names of all partners and the name of the
partnership is required.
3. Status of the Applicant: Whether the applicant is a ‘manufacturer’ or
‘merchant’ or ‘manufacturer & merchant’ etc should be mentioned.
4. Description of goods or service for which the mark is to be registered.
5. The date of use of the Trademark in Bangladesh (if any), it may be
used or proposed to be used also.
6. Whether the mark is being used in Bangladesh by the proprietors, or
proposed to be used in Bangladesh by the proprietors, or proposed to
be used by a body corporate to be constituted, or proposed to be used
in Bangladesh by a registered user (in which case an application for
registration of registered user must be filed simultaneously).
7. A duly executed Power of Attorney or authorization (Form TM-
48): It should be signed by applicant (if individual) or by an officer
of the applicant company, whose position in the company should be
stated including the corporate seal. It is not necessary to notarize or
legalize the authorization.
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8. Prescribed application fee. It is pertinent to mention that International

priority is available in Bangladesh under the Paris Convention. It is
possible to claim partial priority within Bangladesh. The Priority must
be claimed at the time of filing the application for registration and the
following must be provided.
1. Name of the country from which the priority arises 2. Priority
application number and date 3. A certified copy of the Convention
Application from which the priority is claimed must be filed within a
period of six (6) months of the filing date of the application in
Bangladesh. Trademark protection is not limited in time. In
Bangladesh, the duration of the registration of a trademark or service
mark is 7 (seven) years and it can be renewed for a further period of
every 10 (ten) years.

Characteristics of a good Trademark:

1. A trademark should be distinctive. Distinctiveness may be inherent or
acquired. An invented word may be inherently distinctive as a
trademark e.g. RIN. Other trademarks may have acquired
distinctiveness through usage e.g. TATA, Reliance, Revlon. Most
brands acquire distinctiveness through use. A brand may depend on
the class of goods e.g. Hawkins and Prestige are two distinctive
brands in pressure cookers.
2. A trademark shall not be descriptive in nature. In other words, it should
not describe the goods or services that are proposed to be used or
used in connection with the mark.
3. The mark should be short, easy to pronounce and remember.
4. The trademark should be distinctive and unique.
5. A trademark perspective, this characteristic makes surnames and
personal names neither distinctive nor capable of distinguishing the
goods of one person from that of another bearing the same surname or
personal name.
6. A trademark can be any sign capable of distinguishing goods or
services.
7. The best trademarks are invented words or coined words or unique
geometrical designs.
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8. A good trademark should not be barred under the Trademarks Act

under the Prohibited classes of trademarks.

Trademark Protection:
Trademark Protection by Registration Trademark protection right is an
indispensable right to trademark proprietors. It must be ensured for a smooth
industrial development and to earn profit by using it. It claims exclusive rights.
According to Article 16.1 of the TRIPS Agreement, the owner of a registered
trademark must be granted an exclusive right to prevent all third parties not
having the owner’s consent from using in the course of trade identical or similar
signs for goods or services which are identical or similar to those in respect of
which the trademark is registered if such use would result in a likelihood of
confusion. In the case of use of identical signs for identical goods or services, a
likelihood of confusion must be presumed. In Bangladesh trademark protection
is ensured to the trademark proprietor by registration. Any other person than a
registered proprietor, can get trade protection as registered users, or by grant of
license, or by means of assignment or transmission. Here the provisions of
infringement and falsification of trademarks also play an important role in
providing trademark protection to the trademark owners. The law relating to
trademarks is against trafficking in trademarks. Certain marks and brands qualify
(by virtue of their extensive use and popularity) to be known as well-known
marks. Articles 16.2 and 16.3 of the TRIPS Agreement require protection to the
well-known marks. Under the 2009 Act, a well known mark (even unregistered)
also gets protection.

Facilities of trademark:
1. Exclusive Rights:
The owner of Registered Trademark enjoys exclusive right over the
trademark. The owner can use the same for all the products falling under
the class applied. Further, the owner can enjoy the sole ownership of the
Trademark and can stop other from the unauthorized use of the Trademark
under the same class where it is registered. It gives the right to sue the
unauthorized user of the Trademark Registered.
2. Builds trust and Goodwill:
The established quality of your product and services are known by
everyone through the trademark and which establishes trust and goodwill
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among the customers in market. It helps in creating permanent customers

who are loyal and always opt for the same brand.
3. Differentiates Product:
It makes easy for customers to find your products. It makes your product
and identity of products different from that of the existing and foreseen
competitors and acts as efficient commercial tool. The logo can
communicate your vision, quality or unique characteristic of your company
and any organization.
4. Recognition to product’s Quality:
It gives recognition to the quality of the product. Customers attach the
product’s quality with the brand name and this image is created in the
market about the quality of a particular brand which helps in attracting new
customers as they can differentiate the quality of a product by the
logo/brand name.
5. Creation of Asset:
Registration of Trademark creates an intangible asset i.e. Intellectual
Property for an organization. Registered trademark is a right created which
can be sold, assigned, franchised or commercially contracted. Also, the
Trademark is an intangible asset which gives the advantage to the
organization.
6. Use of symbol:
Once the trademark is registered you can use the ® symbol on your logo
stating that it is a registered trademark and no one can use the same
trademark. It is exclusive of all types of usages as well as rights. If
someone else use the trademark then you can also sue the party if the
trademark is registered.
7. Protection against infringement:
No competitor or other person can use the wordmark or logo registered by
you under trademark. However, if in any case one uses it without the
approval of the owner of trademark or make any deceptive use of same,
the owner can get the legal protection under the Act and stop the person
doing so.
8. Protection for 10 Years at low cost:
Online Trademark registration is done on a very low maintainability cost.
Once you register the trademark you have to just pay the maintenance
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cost and renewal cost which is after 10 years of registering the trademark.
It is cost efficient and helps your company create an unique image.
9. Global Trademark Registration:
If one wants to register the trademark in countries other than India, the
trademark registered in India can be used as basis of registration there.
For any person willing to expand outside India, the trademark registered in
India can provide a good base along with the Established Goodwill in the
Country.
10. Attract Human Resources:
Young minds aspire to join big Brands as it acts as a magnate. It inspires
the positive image of the organization and thus candidates are attracted
towards them easily. This reduces the cost towards hiring and related
activities.

Trademark Infringement:
Infringement is an unauthorized use of a registered trademark. Without the
consent or authorization of the owner if any one uses the registered mark
commits infringement. Further use of a similar mark to the registered mark
does also constitute infringement of the registered mark. The 2009 Act
gives the registered proprietor of a trademark in respect of any goods the
exclusive right to the use of trademark in relation to those goods. That right
is deemed to be infringed by any person who, not being the registered
proprietor of the trademark or a registered user thereof using by way of
permitted use. following are the circumstances under which a person is
deemed to have infringed a registered trademark (the 2009 Act, sec.26): 1.
Where a person uses a trademark which is identical or similar to the
registered trademark used in the course of trade for the similar goods or
services not being a „registered proprietor‟ or „permitted user‟ and cause
confusion on the part of the public. 2. Where the registered trademark is
used in the course of trade for the goods or services which are not similar,
but has reputation in Bangladesh and the use of the mark by the person
without due cause, takes unfair advantage of or is detrimental to the
distinctive character or repute of the registered trademark. 3. Where a
person who is not being duly authorized by the registered proprietor or a
registered user uses the trademark on a material intended to be used, for
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labeling or packaging goods, as business papers or for advertising goods

or services. 4. Where a person not being a 'registered proprietor' or
'permitted user' uses a registered well-known trademark for the identical
or similar goods or services for which the mark has been registered. 5.
Where a person not being a 'registered proprietor' or 'permitted user'
uses a registered well-known trademark for the goods or services not
being identical with or similar to those in respect of which the mark has
been registered, by using of the mark in relation to those goods or
services, would indicate a connection between those goods or services
and the owner of the registered well-known mark and that the interests of
the owner of the registered well-known mark are likely to be damaged by
such use.

Remedies both Civil and Criminal:

The following remedies are available by way of civil action: Temporary
injunction; Permanent injunction and attachment order with a declaration
that the goods are counterfeit; and Claim for damages. It can take up to
three to four years for a case to be finally decided.

Criminal prosecution:
The following are criminal offenses punishable under the Bangladesh
Penal Code 1860 by several sections (e.g. S. 482, 483, 485, 486, 487,
488) provides that such an offender may be punished with imprisonment of
either description (simple or rigorous) for a term which may extend to three
year, or with fine, or with both. In addition, the Penal Code identifies a
number of activities as a criminal offense and sets out various enforcement
measures available to rights holders. Two such offenses and their
punishments are as follows:
Making or possessing any instrument for the purpose of counterfeiting a
trademark – the punishment for this offence is imprisonment for up to three
years or a fine, or both; and Selling, exposing or possessing for sale or any
purpose of trade or manufacture any goods bearing a counterfeit mark –
the punishment for this offense is imprisonment for up to one year or a
fine, or both. In cases of counterfeiting, a rights holder may file a criminal
complaint with the police, which then investigate. If the complaint is
proved, the case then goes to trial before a court. In addition, police
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officials may launch raids against counterfeit and pirated goods and may
take legal action.
All criminal proceedings begin in the magistrate’s court. All criminal cases
relating to false trademarks or counterfeiting are tried by a magistrates
court (first or second class, or a metropolitan magistrate in an urban area).
Any appeal against the magistrate’s order must be made to a district
magistrate or session judge. Remedies available in criminal actions include
the following:
Raids on the premises where the counterfeit goods are stored; Seizure of
the goods; Destruction of the counterfeit goods; and/or the imposition of
penalties on the infringer.
On the other hand,As per Section 73 of the 2009 Act, the punishment for
applying for a false trademark so as to mislead consumers about the origin
of the goods is imprisonment for up to two years but not less than six
months or a fine up to taka two lac but not less than fifty thousand, or both
and for a second or subsequent conviction, imprisonment up to three years
but not less than one year or fine up to take three lac but not less than one
lac, or both. The courts also have the power to set the prison term and the
amount of any fine. Such an offense shall be tried by the Metropolitan
Magistrate or Magistrate of the first class.

Recommendations:
Bangladesh always faces the lack of political stability from her birth. As a
result desirable industrial development does not occur here. For a smooth
industrial development political stability is a must and needs a better
trademark protection. In order to strengthen the trademark protection in
Bangladesh, the Government has to take several steps which can make
the Trademark Registry Office speedier and implement the present
trademark laws more effectively. They are as following-
1. Online trademark application system should be introduced due to
shortage of trademark registry office.
2. Trademark Journal must be published in the trademark registry office
website.
3. There must set up a trademark registry office in each Divisional City to
scrutinize the trademark related matters very swiftly and to assist the
industrial development smoothly. Presently, in our country only two
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trademark registry offices; Head office in Dhaka and branch office in

Chittagong. As a result, the citizens of other cities have to face
problems.
4. Trademark Protection Court should be primarily introduced in the
Divisional Cities in order to quickly dispose of suits for trademark
infringements and passing off.
5. Speedy trial must be needed.
6. Raise huge public awareness.
7. As it is a new concept the government should arrange a public seminar
to be conscious about trademarks.
8. The number of Deputy Registrars, other officers and employees
must be increased; the number of applications for trademark
registration increases every year but due to shortage of staff it takes
around 3-4 years to get trademark registration (where it should take
only 12 months as a result the investors are becoming frustrated).
9. Carrying out regular training for officials at the trademark registry
office with a view maintaining the provisions of international
agreements (Paris Convention and TRIPS Agreement) as regards
trade mark protection.
10. Trademark Rules, 1963 should be replaced with a new one with a view
to reflecting the changes that have taken place since enactment of the
Trademarks Act, 2009.

Conclusion:
A trademark, trademark, or trade-mark is a distinctive sign or indicator
used by an individual, business organization, or other legal entity to help
consumers identify that its products or services with which the trademark
appears originate from a unique source, and to help distinguish its
products or services from those of other entities. Trademark is one kind of
intellectual property; it is a private right. Trademark protection needs for
industrial smooth development in a country. In Bangladesh, under the
Trademarks Act, 2009, the provisions have been introduced for affording
better protection to registered marks and well-known marks, whether
registered or not. The law contains adequate standard provisions to
deal with matters such as trademark protection of registered or
unregistered marks, infringement and falsifications of them, proper
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remedies in compliance with TRIPS Agreement but due to administrative

inefficiency, lack of awareness of the people and very old rules (Trademark
Rules, 1963), it stands tough to implement the present law (Trademarks
Act, 2009) and to ensure exclusive protection to the trade mark
proprietors. By removing the present problems better trademark protection
can be ensured which can draw the attention of entrepreneurs, home and
abroad, and one day, Bangladesh can turn into an industrial developed
country.

References
1. The trademark Act,2009
2. 10.The trademark Rules,1963
3. Mohammad Monirul Azam, Intellectual Property WTO and Bangladesh (1st ed), (pp 170-
175), Dhaka: New Warsi Book Corporation, 2008.
4. W. R. Cornish, Intellectual property: Patents, Copyright, Trademarks and Allied Rights, (3rd
ed),(pp 515-639), Sweet & Maxwell: London, 1996
5. M. Farani Manual of Trademarks, Merchandise Marks & Patents & Designs: Lahore Law Time
Publications, Revised & Enlarged Edition.
6. The Agreement on Trade-Related Aspects of Intellectual Property Rights, 1994.
7. The Paris Convention for the Protection of Industrial Property of 1 883 was revised on 1 979.
8. world intellectual property organisation.
9. www.academia.com
10 the research.net.com