By Miss Mardiah Chowdhury
According to section 2(8) of The Trademarks Act 2009, a trademark can be any symbol, word, number, phrase, design, or any combination thereof which is used to identify the source of goods or services. It must not be any scandalous design or matter, the use of which would not by any reason look decisive or lead confusion as to hurt any religious susceptibilities, as this was held in the case Anil Kumar Ghosh Vs. Shamir Kumar Ghosh, 2001, 30 CLC (HCD). There are several kinds of trademarks like a registered trademark, mark, and certification trademark.
Firstly, the registered trademark or mark is when a person has right to use that mark in the trade transaction or in the course of business by the proprietor.
Secondly, a certification trademark is a future mark that will be used in connection to the goods and the person will have the rights to use or any person who has given the right to use.
Bangladesh has an existing Act which deals with trade mark issues, thus if anyone wants to get their own trademark, they have to register for that. Under section 15 of the Trademarks Act 2009, the application needs to be submitted. The applicant has to submit two separate applications, one if for goods and another for services. The application has to be submitted in the head office or any branch of trademark registry in the applicant’s jurisdiction. For the registration the requirements are as follows-
- Name of the Applicant(s).
- Address and Nationality.
- Specification of goods.
- A form namely “TM-1”.
After filling an application, the register may accept it and further process or reject it for making some amendments. Given if the application is accepted, the register may advertise the application under section 17 of the following Act. The advertisement will be made subject to the submission of fees as per Form TM-9. It is vital to mention that if any correction is required as under section 19 of the following Act, an advertisement will be made after the correction.
After the advertisement made under section 18 of the Trademarks Act 2009, if any person opposes the trademark within two months by providing notice with prescribed fees. Within one month from the date of receipt of the notice, a copy shall be served to the applicant. The applicant must within two months from the date of receipt of such notice reply on and if he fails to do so the application shall be deemed abandoned. Then the Registrar shall serve a copy of such counter to the opponent. The Registrar after getting all evidence shall grant an opportunity to both the parties to be heard. After the completion of the due process, it shall be decided whether to accept or conditionally accept or reject the application.
Under section 20 of the following Act, the registration will be completed if not opposed or the decision goes in favor of the applicant. The applicant then shall get a certificate of registration with the seal of the trademark registry. It is a presumption that the applicant for registration is a proprietor and registration is the prima facie presumption of its originality and thus he will be entitled to get the protection of his trademark, as held under National Fans Ltd. Vs. Md. Firoz and another, 1995, 24 CLC (HCD).
It is to mention that such certificate shall be issued within 150 working days from the date of filing of the application. The duration of the trademark shall be of 7 years and can be renewed by paying the prescribed fees from time to time. Usually in Bangladesh it takes around 24-36 months to get a trademark registered.
Under section 25 of the following Act after the registration, the proprietor gains the rights against the infringement of his mark. The Act also provides the definition of infringement as under Section 26 any trademark used by a person other than a registered proprietor of the identical or similar trademarks, the Trade Mark shall deem to be infringed. On the other hand, Section 27 of the following Act, deals with the acts that do not amount to infringement as by lawful user, permitted use, and others.
If anyone breaches such a condition or uses the trademark without permission then he will be held liable. Any liability as such under Section 73 of the following Act, is Penalty for falsifying or falsely applying trademark is an imprisonment that may extend to two years, but not less than six months, and/or fine which may extend to taka two lac, but not less than taka fifty thousand. For the second or subsequent conviction, the imprisonment would range from a minimum of one year to three years, and/or fine extendable up to taka three lac, but not less than taka one lac. An example can be taken for such as under Liberty Food Company Limited Vs. Bombay Sweets and Company Limited, 2008, 37 CLC (AD) it was held that the petitioner adopted the trademark by malafide intention, thus he will be liable for that.
According to section 35, an unregistered trademark shall not be assignable or transmissible except along with the goodwill of the business. There are some penalties who falsely represent themselves as registered trademark owner or sale that by representing thus or falsely enter his name in the register or others. They will be liable as-
- Under section 74 of the following Act, the penalty for selling goods to which a false trademark or trade description is applied the imprisonment will be up to two years and/or fine. For a second or subsequent conviction, imprisonment for a term up to three years, and/or fine.
- Under section 76, the penalty for falsely representing a trademark as registered is imprisonment for a term up to one year, but not less than six months, and/or fine up to Taka One lac but not less than Taka fifty thousand.
- Under section 77, the penalty of improperly describing a place of business as connected with the trademark’s office the imprisonment for a term which may extend to one year but not less than six months and/or with fine which may extend to Taka one lac but not less than Taka fifty thousand.
- Under section 78, the penalty for falsification of entries in the Register is imprisonment for a term which may extend to one year but not less than six months and/or fine, which may extend to taka one lac but not less than fifty thousand takas. Thus, in the case of Samah Razor Blades Industries Ltd. Vs. Supermax International Pvt. Ltd and another, 1998, 27 CLC (HCD) it was held that the appellant may be removed from the register for their non-user and mala fide attitude.
Lastly, it is not always that the proprietor will only be protected if he is an aggrieved person. Thus, it was held in the case of Bonlac Foods Ltd. Vs. Unilac Sanowara (BD) Ltd. & another, 2005, 34 CLC (HCD) where the petitioner never used the trademark ‘Diploma’ in Bangladesh nor ever marketed any goods in Bangladesh under the trademark ‘Diploma’, hence the proprietor is not entitled to any protection under the Trade Marks Act since he is not a person aggrieved.