Trademark means a mark used or proposed to be used in relation to goods for the purpose of indicating in the course of trade between the goods and some persons having the right, either as proprietor or as a registered user.
When a trademark is used in service providing institution, it is called a service mark. To protect the rights of trademarks Bangladesh has a Law which called the Trademarks Act, 2009.
Section 2(8) of the Act define trademark as a mark used in relation to goods for the purpose of indicating a connection in the course of trade between the goods and the person having the right as proprietor to use the mark, or a mark used in relation to a service so that it may be indicated that the person has the right as proprietor to use the mark in the course of trade.
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Requirements to be a trademark
All marks are not register-able. A trademark must be distinctive and not identical to the mark of another in order to be registered.
It must distinguish the goods of the applicant from the goods of others. Generally, in order to be registered, a trademark must fulfill the following two requirements under section 10 –
- It distinguishes the products or services of one enterprise from the products or services of other enterprises (distinctiveness), and
- It is not misleading or contrary to the public order or such a nature as to deceive the public ( deceptive similarity)
Requirements for the registration have been described in detail by the present act. It may be registered only in respect of particular goods or classes of goods or services.
In case of any dispute regarding the classes of goods or services of the goods that arise during the registration; the registrar will decide the matter and his decision will be final.
According to section 2(3) “International classification” means the classification adopted by the World Intellectual property organization or international classification according to a NICE agreement concerning the international classification of goods and services for the purposes of the registration of Marks.
License and registered uses
The trademark act, 2009 does not prohibit the licensing of registered or unregistered trademarks. A registered can be used by a person other than the owner as a registered user.
It can be licensed to the other person, which does not actually constitute a transfer, but these provisions allow a person other than the owner to use it.
A registered user has the right to use it under the terms and conditions as entered in the registered.
A registered user entertains the right to sue for infringement in certain circumstances under section 46 of the act. But the act does not permit such user to assign or transmit to another, but a registered user may for the purpose of business use it with a firm.
Infringement of Trademark
Infringement is the violation of exclusive rights conferred on the proprietor. Section 26 specifies the events that result in the infringement.
A registered trademark is infringed if a mark is used which is identical with, or deceptively similar in relation to goods or services in respect of which is registered.
A registered trademark will be deemed to be infringed by a person (not being registered proprietor or a person using by way of permitted use) where he uses the same mark or similar mark, and such use is likely to cause confusion on the part of the public, or which is likely to have an association with the registered mark.
To constitute an infringement, it is not enough to show a mere possibility of deception, there must be a reasonable possibility of purchasers being deceived.
The use of the mark is so similar as to lead or be likely to lead the purchasers to buy the goods marked therewith under the impression that they are the goods marked therewith under the impression that they are the goods of the original manufacturer whose mark they bear, is an infringement of that mark.
Civil remedy of Infringement
Section 96 states that no suit for the infringement of a trademark or any right relating to a registered trademark or an action for passing off in a trademark shall be instituted in any court inferior to a District Court having jurisdiction to try the suit.
Such a suit must be filed within whose territorial jurisdiction the infringement takes place.
Such a suit will be preceded in accordance with the code of civil procedure, 1908. The proprietor or his legal heir or assignee or registered user (if the proprietor refuses to file the suit) may initiate a proceeding for infringement by filing a plaint to the court of District judge.
Section 97 of the act states that remedy in a suit for infringement may be availed in the form of injunction, damages, an account of profit, destruction or erasure of falsifying trademark, deliver up the goods marked with the false trademark.
Criminal Proceeding of Infringement
Where the trademark of a person is infringed the proprietor may file a complaint petition to the court of metropolitan magistrate or any other first-class magistrate.
A complaint must be deposited with a court within whose territorial jurisdiction the offense occurred. The procedure of any case under this act shall be made in accordance with the code of criminal procedure, 1898 per as it is applicable.
The trademark law categorized the following offenses-
- Applying “false trademark” or “false trade description” [ applying for false trademark and false description has been defined in section 71 of this act] shall be punishable with imprisonment for a term which shall not be less than six months but which may extend to two years and with fine which shall not be less than fifty thousand takas but which may extend to two lakh taka or both and if the offense is committed the second time or in any subsequent time by the same person, he shall be punishable with imprisonment for a term which shall not be less than one year but which may extend to three years and with fine which shall not be less than one lack taka but which may extend to three lakh taka both under section 73.
- Removing piece goods, cotton yarn, and threads from the factory before stamping thereon certain particulars like length, weight, counts, etc. Goods shall be forfeited and the accused shall be punished with a fine which shall not exceed five thousand takas under section 75.
- Section 76 clearly states that Falsely representing a trademark as registered shall be punishable with imprisonment for a term which shall not be less than six months but which may extend to one year and with a fine which shall not be less than fifty thousand takas but which may extend to one lakh taka.
Without above the section more section of this act briefly states that about the offense and punishment. Section 72, 74, 77, 78 also said that about trademark-related many offenses and punishment.
Trademark is an important asset of a business. Before the year 2009, Bangladesh hasn’t any act about the trademark. Though after feeling the importance of the Trademark the government take the necessary steps and enact this law namely, The Trademark Act, 2009, and it was also amended in 2015. Now to protect the Trademark of a company this act takes an important role.