Trademark is a private right and is essentially another word for brand name. It can be any name, word, symbol, slogan, or device that serves to both identify and distinguish a business or product from others in the market. In order for any entity to protect its trademark, it must be registered. As per section 3 of the Trademarks Act 2009 (TA 2009), the Department of Patents, Designs and Trademarks (DPDT), established under the Patents and Designs Act 1911, is responsible for registration of trademark.
The application for registration of trademarks can be made by any person claiming to be the proprietor of a trademark already in use or proposed to be used in Bangladesh as provided under section 15 of TA 2009. The application must be made in the prescribed manner and must be made to the Trademark Registry Wing of the DPDT.
An application for registration of trademarks must, as per section 6 of TA 2009, contain at least one of the following particulars: (i) the name of a company, individual, or firm, represented in a special or particular manner; (b) the signature of the applicant for registration or some predecessor in his business; (c) one or more invented words; (d) one or more words having no direct reference to the character or quality of the goods or services, as the case may be, and not being, according to its ordinary signification, a geographical name or a surname or a personal name or any common abbreviation thereof or the name of a sect, case, or tribe in Bangladesh; (e) any other distinctive mark. Trademarks are registered in respect of certain class of goods or services and in this regard Bangladesh follows the international classification of goods and services under the Nice Agreement.
While making an application for registration of trademarks, it is important to take into account the prohibitions provided in TA 2009. One such prohibition is that no logo or trademark can be registered which is confusingly similar, identical with or deceptively similar to a trademark which is already registered in the name of a different proprietor unless otherwise deemed proper by the Registrar or unless the proprietor of the earlier trademark consents to the registration. In addition, no trademark shall be registered which is scandalous or obscene, religiously susceptible, etc.
Although TA 2009 allows refusal of trademark registration for being identical or deceptively similar, the statute does not offer a very clear picture on the matter. However, this gap has been filled by the Supreme Court of Bangladesh. In the reported case of Bangladesh Chemical Industries Corporation and another M/S Sattar Match Works, the Appellate Division of the Supreme Court of Bangladesh has laid down the principle as to refusal of registering similar trademark in the following manner: "About the propriety of such registration in favour of two proprietors, the Registrar has to satisfy himself and he may put such conditions and limitations as he may think fit to impose. Evidently, the Registrar in permitting the two proprietors in registering identical trademarks has to provide for some ways and devices in the exercise of his expertise and discretion as would protect the interest of the competing proprietors and, what is more important, the interest of the public in general to save them from possible deception and confusion."
The High Court Division of the Supreme Court of Bangladesh in the reported case of Anil Kumar Ghosh vs. Shamir Kumar Ghosh provided further guidance stating, inter alia, that "while considering the trade mark applications all the surrounding circumstances must be taken into consideration so that each of the trademarks used in a normal way may not create confusion in the minds of the people". The Hon'ble Court further stated on the ground for refusal that "it is sufficient to show that two marks are so alike that they are likely to deceive and cause confusion".
It appears from the above two judgments that the principal consideration is the interest of the public. Thus, identical or deceptively similar trademarks may only be registered provided there is no risk for the general public to be misled or confused.
The registration of the trademark will take place upon compliance of statutory conditions when the application for trademark has been accepted and was not opposed within the given time-frame. After registration, the Registrar shall issue to the applicant a certificate in the prescribed form of the registration thereof, impressed with the seal of the Trademarks Registry.
Registration of trademark shall be valid for a period of 7 (seven) years. Thereafter, the registration has to be renewed. The subsequent renewal applications must be made after expiry of 10(ten) years from the date of expiration of the previous registration.
Use of the trademark by anyone, other than the registered proprietor and/or user, will amount to infringement under section 26 of TA 2009. Furthermore, the use of marks identical or similar to the registered trademark in relation to goods or services identical with or similar to those for which the trademark is registered could also amount to infringement. The relief available for infringement includes an injunction and at the option of the plaintiff, either damages or an account of profits, together with or without any order for the delivery-up of the infringing labels and marks for destruction or erasure. Additionally, it is an offence to make use of false trademarks or false trade description or to falsely apply trademarks. Such offences are punishable with imprisonment or with fine. In fact, the sale of goods to which a false trademark or trade description is applied may result in imprisonment and/or fine.
TA 2009 also provides protection for unregistered trademarks. Unregistered trademarks or service marks having reputation or well known to the people through the use can get protection in case of passing off under section 24(2) of TA 2009. Passing off is a concept of common law which prevents one person from misrepresenting his goods or services as that of another. The use of another provider's recognisable trademark, either by the production of an identical copy, or a closely comparable mark, can create such false impressions.
The above analysis indicates that the TA 2009 provides a fine guide for registration of trademark and has provisions in place which are capable of providing good protection to registered marks and well-known marks, irrespective of whether they are registered or not. A full reading of the legislation indicates that the Act has been drafted in a manner to facilitate smooth development of brands in the country by according protection to them. The current regulatory regime serves well to facilitate the growth of brands in Bangladesh. With the increasing urge amongst the startups in Bangladesh to preserve their brand names, it is important for them to have their trademarks registered if they are to secure maximum legal protection.
Anam Hossain, Barrister-at-law is Partner, Stellar Chambers
anam@stellarchambers.com
Mohammad Taqi Yasir, Barrister-at-law is Associate, Stellar Chambers