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What is Trademark Infringement?

According to the Trademark Act, 2009 Infringement is unauthorized use of a registered trademark. The Act gives the registered proprietor exclusive right to the use of a trademark in respect of the goods that the Trademark is registered.

Without the consent or authorization of the registered proprietor if anyone uses the registered mark commits infringement. Further use of a similar mark to the registered mark does also constitute an infringement of the registered mark.

What Legal Rights and Protections Are Accorded to Registered Trademarks?

In accordance with Section 25 of the Trademarks Act, only the registered owner of a trademark can use the same and, in case of infringement of the registered mark, the owner reserves the right to initiate an infringement suit against the infringer before the court and obtain relief as enumerated in Section 97 of the act. Relief in this regard may include injunctions, damages or accounts of profits, together with delivery of the infringing material for destruction or erasure.

What Actions Can Be Taken Against Trademark Infringement in Bangladesh?

The following remedies are available for trademark infringement.

CIVIL REMEDIES

an injunction restraining further use of the infringing mark; damages or an account of profits; and an order for delivery up of infringing labels and marks for destruction or erasure. According to Section 96, the district courts are empowered to hear trademark disputes.

CRIMINAL REMEDIES

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.

Besides, the 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.

The author concludes that though protection of unregistered trademarks is available under the Trademarks Act, 2009, it is better to nonetheless register well-known trademarks to avoid possible disputes.

Customs Enforcement

In Bangladesh, all trading activities are regulated by the Ministry of Commerce under the Imports and Exports (Control) Act 1950. Upon receiving a complaint from a rights holder, the relevant customs authority may take steps against any person or entity that imports goods in violation of Sections 15 and 16 of the Customs Act. Section 15 of the Customs Act prohibits the import of goods, whether, by air, land or sea, that fall within the following categories: goods marketed under a counterfeit trademark or false trade description; goods made or produced outside Bangladesh and intended for sale under a copyrighted design under the Patents and Designs Act in respect of the class to which the goods belong or any fraudulent or obvious imitation of such design without a license or the rights holder’s written consent; and goods made or produced outside Bangladesh and marketed under any name or trademark being or purporting to be the name or trademark of any manufacturer, dealer or trader in Bangladesh.

As per Section 17 of the Customs Act:

“if any goods bearing registered trademarks are imported into or attempted to be exported out of Bangladesh in violation of the provision of Section 15 or of a notification under Section 16, such goods shall, without prejudice to any other penalty to which the offender may be liable under this act or any other law, be liable to be detained and confiscated and shall be disposed of in such a manner as may be prescribed.”

A rights holder may also approach the High Court Division to obtain an order directing Customs to detain or seize the counterfeit goods.

Administrative Remedies

Notice of opposition can be filed against trademark applications published in the Trademarks Journal in Bangladesh. Proceedings can be initiated for rectification/cancellation of registered trademarks before the Registrar of Trademarks.

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