What is Trademark
A trademark is a visual symbol in the form of a word, a device or a label applied to articles of commerce with a view to indicate to the purchasing public that they are the goods manufactured or otherwise dealt in by a particular person as distinguished from similar goods manufactured or dealt in by other persons.
The Trademark Act, 2009 regulates trademarks in Bangladesh. As per section 2(23) of the Act, “mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, or numeral or any combination thereof. Section 2(8) of the Act defined trademark as-
(a) any registered trademark or any mark which is used in relation to any goods for the purpose of indicating rights of the user/proprietor of the mark on that goods in the course of trade.
(b) any mark which is used in relation to any service for the purpose of indicating rights of the user/proprietor of the mark on that service in the course of trade.
Functions of a trademark
Under modern business conditions a trademark performs four functions-
(a) it identifies the product and its origin; that is, it represents the manufacturing company. For example, Radhuni of Square.
(b) it guarantees its unchanged quality.
(c) it advertises the product.
(d) it creates an image for the product.
Which marks are registrable
1. It must be distinctive. (Section # 6)
Distinctiveness is one of the prime criteria for the registration of a trademark. How distinctiveness can be determined:
(a) common sense.
(b) discretionary reaction.
Section 6 of the Act imposes some preconditions for registration. Section 6 mentions a trademark shall not be registered unless it contains or consists of at least one of the following particulars, namely-
(a) the name of a company, individual or firm represented in 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 goods and not being according to its ordinary signification, a geographical name or surname or the name of the sect, caste or tribe in Bangladesh.
(e) any other distinctive mark.
2. Deceptive similarities are not acceptable. (section # 10)
As per section 2(20) of the Act, “deceptively similar mark” means any mark which is likely to deceive or cause confusion and which is similar to any mark, registered under the Act.
Section 10 of the Trademark Act, 2009 imposes prohibitions on registering trademarks with similarity or deceptive similarity, which are as follows:
Section 10(1): a trademark shall not be registered if it is identical with or deceptively similar to an earlier trademark and goods and services covered by the trademark, registered in the name of another owner.
Section 10(2): joint/concurrent uses of a trademark can be approved by the Registrar under suitable terms and conditions for any honest purposes or reasonable causes.
Section 10(4): trademark of any goods or service shall not be registered if it is formed by translation of any identical mark or trade description of other business firm which is well-known in the country.
Section 10 (5): in case of similarity to any well-known trademark, trademark of that goods or service shall not be registered, if –
(a) it may create wrong conception that said goods or service has relation with the registered owner.
(b) said uses may cause violation of rights or ruin interest of the registered owner.
Section 10 (7): prohibitions under the provisions of deceptive similarity shall not make any obstacle to register a trademark if there is consent of the owner of the earlier registered trademark.
Deceptive similarity includes not only confusion but also deception. Factors to be taken into consideration in determining deceptive similarities:
(a) the nature of the marks;
(b) the degree of resemblance;
(c) the nature of the goods or services;
(d) the class of the consumers (their level of education and intelligence);
(e) any other surrounding circumstances.
3. Characteristics of good trademarks:
(a) it must be easy to pronounce and remember, if the mark is a word;
(b) it must be easy to spell correctly and write legibly;
(c) it should not be descriptive but may be suggestive of the quality of the goods;
(d) it should be short;
(e) it should appeal to the eye as well as to the ear;
(f) it should satisfy the requirements of registration;
(g) it should not belong to the class of marks prohibited for registration.
Which marks are not registrable
Section. 8 : Some restrictions on registration:
As per section 8 of the Trademarks Act, 2009, no trademark nor part of a trademark shall be registered if –
(a) it comprises or contains scandalous obscene matter;
(b) be contrary to any existing law;
(c) it is of such nature as to deceive the public or to cause confusion;
(d) be likely to hurt the religious susceptibilities of any class of the citizens of Bangladesh;
(e) it uses name, first letter of a name, hallmark, monogram, map, flag, symbol, sign, of a country or international organization or any organization formed through international treaty or convention without approval of the competent authority or person; or it contains identical, partially identical or part of it.
(f) is not fit for obtaining the protection of Court for any other reasons;
(g) any application is made for ill-motives or by adopting unfair means.
Registration Procedure
Who can apply and how
Section 15(1): if the proprietor of a trademark used or proposed to be used desires to register it shall apply in the prescribed manner to the Registrar. As per section 15(2) separate applications must be made for each class of goods or services.
Where to apply
Section 15(3): in case of single applicant, application shall be filed in the office of the Trademarks Registry within whose territorial limits the head office of business of the applicant is situated. In case of joint applicants, application shall be filed in the office of Trademark registry under whose territorial limits the head office of business of the applicant whose name is first mentioned in the application is situated. As per section 15(4) of the Act, if the applicant does not carry on business in Bangladesh, application is to be submitted in the office of the Trademarks Registry where the correspondence office of the applicant is situated.
What to be done by the Registrar upon receiving an application
Section 15(5): upon receiving an application, the Registrar may –
(a) accept the application absolutely;
(b) refuse the application by writing reasonable causes;
(c) accept subject to such amendments, modifications, conditions or limitations as he thinks fit.
Section 16 provides further that after acceptance of an application, if the Registrar is satisfied that the application has been accepted in error, or it should not be registered, or should be registered upon imposing additional conditions or limitations, the Registrar may reject the application after giving the applicant opportunity of being heard.
Advertisement of acceptance
Section 17(1): after accepting an application for registration, whether absolutely or conditionally, the Registrar shall circulate advertisement in the prescribed manner by mentioning of its’ conditions or limitations.
Opposition to registration
Notice of opposition: as per section 18(1), notice of opposition to a registration by any person may be submitted to the registrar in the prescribed manner and by paying prescribed fee within two months from the date of advertisement of an application for registration.
Serving copy to the applicant: as per section 18(2) the Registrar shall serve a copy of the notice on the applicant within one month from the receipt of the notice.
Counter-statement by the applicant: as per section 18(2), the applicant shall send a counter-statement to the Registrar within two months of receiving such notice mentioning basis of his application; otherwise his application shall be considered abandoned.
Serving copy of counter-statement to the opponent: as per section 18(3), if the applicant sends counter-statement, the Registrar shall serve a copy thereof on the opponent within one month of receiving such statement.
Settlement of opposition: as per section 18(4), the applicant and the opponent shall submit their evidence to the Registrar, and both of them will be given the opportunity of being heard by the Registrar. As per section 18(5), after hearing the parties and considering the evidence, the Registrar shall decide whether and subject to what conditions the registration is to be permitted. All proceedings regarding opposition of registration must be completed within 120 days of serving notice by the opponent as section 18(8).
Registration:
As per section 20 of the Act, the Registrar shall register an applied trademark giving effectiveness from the date of application on the following situations:
(a) an application for registration of a trademark has been accepted;
(b) the application has not been opposed and the time for notice of opposition has expired;
(c) the application has been opposed, and the related decisions has been taken in favour of the applicant.
As per section 20(2), on registration of a trademark, the Registrar shall issue to the applicant a certificate in the prescribed form, sealed with the seal of the Trademarks Registry.
Duration, renewal and restoration of registration:
As per section 22(1), duration/tenure of the registration of a trademark shall be for a period of seven years, but may be renewed. As per section 22(2), upon application made by the proprietor in the prescribed manner and subject to payment of prescribed fee, the Registrar shall renew the registration of a trademark for a period of ten years from the date of expiration of the original or renewed registration.
Unless renewed, the trademark will be public property.
Infringement of Trademark
Infringement of trademark means using a registered trademark without the consent of its registered proprietor. Section 26(1) of the Act, defines infringement as “ if a person, not being registered proprietor or user, uses any distinctive or deceptively similar trademark in relation to goods or service in his own trade, it will be considered that he has infringed a registered trademark.
Which categories of trademark will be treated as infringement:
As per section 26(2), using such trademarks that falls under the following categories will be treated as infringement:
(a) marks identical and goods or service similar;
(b) marks similar and goods or service identical;
(c) marks identical and goods or service identical;
Using following marks will also be considered as infringement as per section 26(3):
(a) marks identical or similar and goods or service not similar. For example, an application to register “Gluvita” as a trademark for biscuit was refused, because similar trademark “Glucovita” is being used for glucose powder by another registered use.
(b) using a mark without due causes takes unfair advantage of or is detrimental to the distinctive character or repute of a well-reputed registered trademark in Bangladesh.
Meaning of using a registered trademark by infringement:
As per section 26(4), for the purpose of section 26, “uses of registered trademark” means-
(a) affixes it to goods or to the packaging thereof;
(b) exposes any goods, supplies goods to the market for sale using the mark, supplies service or offers to supply service under the mark or stocks them;
(c) imports or exports goods with the mark;
(d) uses any mark on business papers or in advertising.
Infringement of trademark by advertising:
Infringement of a trademark by advertisement will mean such advertisement, which –
(a) takes unfair advantage and is contrary to honest practices in industrial or commercial matters, or
(b) is detrimental to its’ distinctive character, or
(c) is against the reputation of the trademark.
Defenses of the defendant
In a case of infringement of a trademark, the defendant may plead one or more of the following defenses as may be applicable to his case:
(a) the plaintiff has no title to the suit;
(b) registration of the mark is not valid and is liable to be expunged;
(c) the use of the mark complained of is not an infringement of the registered trademark;
(d) the defendant’s use is prior to the registration and use of the plaintiff.
(e) the defendant has a right to use by virtue of honest concurrent use;
(f) the plaintiff’s trade is fraudulent, or his trademark is deceptive.
As per section 26(8), if the defendant in a case of infringement of a trademark can satisfy the Court of the followings:
(a) the use complained is not likely to deceive or cause confusion to the people;
(b) it does not indicate a business relationship between the proprietor/user of a registered trademark and any goods or service under such mark complained of;
In such case, the Court will not impose any sanction or grant any other relief in favour of the plaintiff.
A trademark is a visual symbol in the form of a word, a device or a label applied to articles of commerce with a view to indicate to the purchasing public that they are the goods manufactured or otherwise dealt in by a particular person as distinguished from similar goods manufactured or dealt in by other persons.
The Trademark Act, 2009 regulates trademarks in Bangladesh. As per section 2(23) of the Act, “mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, or numeral or any combination thereof. Section 2(8) of the Act defined trademark as-
(a) any registered trademark or any mark which is used in relation to any goods for the purpose of indicating rights of the user/proprietor of the mark on that goods in the course of trade.
(b) any mark which is used in relation to any service for the purpose of indicating rights of the user/proprietor of the mark on that service in the course of trade.
Functions of a trademark
Under modern business conditions a trademark performs four functions-
(a) it identifies the product and its origin; that is, it represents the manufacturing company. For example, Radhuni of Square.
(b) it guarantees its unchanged quality.
(c) it advertises the product.
(d) it creates an image for the product.
Which marks are registrable
1. It must be distinctive. (Section # 6)
Distinctiveness is one of the prime criteria for the registration of a trademark. How distinctiveness can be determined:
(a) common sense.
(b) discretionary reaction.
Section 6 of the Act imposes some preconditions for registration. Section 6 mentions a trademark shall not be registered unless it contains or consists of at least one of the following particulars, namely-
(a) the name of a company, individual or firm represented in 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 goods and not being according to its ordinary signification, a geographical name or surname or the name of the sect, caste or tribe in Bangladesh.
(e) any other distinctive mark.
2. Deceptive similarities are not acceptable. (section # 10)
As per section 2(20) of the Act, “deceptively similar mark” means any mark which is likely to deceive or cause confusion and which is similar to any mark, registered under the Act.
Section 10 of the Trademark Act, 2009 imposes prohibitions on registering trademarks with similarity or deceptive similarity, which are as follows:
Section 10(1): a trademark shall not be registered if it is identical with or deceptively similar to an earlier trademark and goods and services covered by the trademark, registered in the name of another owner.
Section 10(2): joint/concurrent uses of a trademark can be approved by the Registrar under suitable terms and conditions for any honest purposes or reasonable causes.
Section 10(4): trademark of any goods or service shall not be registered if it is formed by translation of any identical mark or trade description of other business firm which is well-known in the country.
Section 10 (5): in case of similarity to any well-known trademark, trademark of that goods or service shall not be registered, if –
(a) it may create wrong conception that said goods or service has relation with the registered owner.
(b) said uses may cause violation of rights or ruin interest of the registered owner.
Section 10 (7): prohibitions under the provisions of deceptive similarity shall not make any obstacle to register a trademark if there is consent of the owner of the earlier registered trademark.
Deceptive similarity includes not only confusion but also deception. Factors to be taken into consideration in determining deceptive similarities:
(a) the nature of the marks;
(b) the degree of resemblance;
(c) the nature of the goods or services;
(d) the class of the consumers (their level of education and intelligence);
(e) any other surrounding circumstances.
3. Characteristics of good trademarks:
(a) it must be easy to pronounce and remember, if the mark is a word;
(b) it must be easy to spell correctly and write legibly;
(c) it should not be descriptive but may be suggestive of the quality of the goods;
(d) it should be short;
(e) it should appeal to the eye as well as to the ear;
(f) it should satisfy the requirements of registration;
(g) it should not belong to the class of marks prohibited for registration.
Which marks are not registrable
Section. 8 : Some restrictions on registration:
As per section 8 of the Trademarks Act, 2009, no trademark nor part of a trademark shall be registered if –
(a) it comprises or contains scandalous obscene matter;
(b) be contrary to any existing law;
(c) it is of such nature as to deceive the public or to cause confusion;
(d) be likely to hurt the religious susceptibilities of any class of the citizens of Bangladesh;
(e) it uses name, first letter of a name, hallmark, monogram, map, flag, symbol, sign, of a country or international organization or any organization formed through international treaty or convention without approval of the competent authority or person; or it contains identical, partially identical or part of it.
(f) is not fit for obtaining the protection of Court for any other reasons;
(g) any application is made for ill-motives or by adopting unfair means.
Registration Procedure
Who can apply and how
Section 15(1): if the proprietor of a trademark used or proposed to be used desires to register it shall apply in the prescribed manner to the Registrar. As per section 15(2) separate applications must be made for each class of goods or services.
Where to apply
Section 15(3): in case of single applicant, application shall be filed in the office of the Trademarks Registry within whose territorial limits the head office of business of the applicant is situated. In case of joint applicants, application shall be filed in the office of Trademark registry under whose territorial limits the head office of business of the applicant whose name is first mentioned in the application is situated. As per section 15(4) of the Act, if the applicant does not carry on business in Bangladesh, application is to be submitted in the office of the Trademarks Registry where the correspondence office of the applicant is situated.
What to be done by the Registrar upon receiving an application
Section 15(5): upon receiving an application, the Registrar may –
(a) accept the application absolutely;
(b) refuse the application by writing reasonable causes;
(c) accept subject to such amendments, modifications, conditions or limitations as he thinks fit.
Section 16 provides further that after acceptance of an application, if the Registrar is satisfied that the application has been accepted in error, or it should not be registered, or should be registered upon imposing additional conditions or limitations, the Registrar may reject the application after giving the applicant opportunity of being heard.
Advertisement of acceptance
Section 17(1): after accepting an application for registration, whether absolutely or conditionally, the Registrar shall circulate advertisement in the prescribed manner by mentioning of its’ conditions or limitations.
Opposition to registration
Notice of opposition: as per section 18(1), notice of opposition to a registration by any person may be submitted to the registrar in the prescribed manner and by paying prescribed fee within two months from the date of advertisement of an application for registration.
Serving copy to the applicant: as per section 18(2) the Registrar shall serve a copy of the notice on the applicant within one month from the receipt of the notice.
Counter-statement by the applicant: as per section 18(2), the applicant shall send a counter-statement to the Registrar within two months of receiving such notice mentioning basis of his application; otherwise his application shall be considered abandoned.
Serving copy of counter-statement to the opponent: as per section 18(3), if the applicant sends counter-statement, the Registrar shall serve a copy thereof on the opponent within one month of receiving such statement.
Settlement of opposition: as per section 18(4), the applicant and the opponent shall submit their evidence to the Registrar, and both of them will be given the opportunity of being heard by the Registrar. As per section 18(5), after hearing the parties and considering the evidence, the Registrar shall decide whether and subject to what conditions the registration is to be permitted. All proceedings regarding opposition of registration must be completed within 120 days of serving notice by the opponent as section 18(8).
Registration:
As per section 20 of the Act, the Registrar shall register an applied trademark giving effectiveness from the date of application on the following situations:
(a) an application for registration of a trademark has been accepted;
(b) the application has not been opposed and the time for notice of opposition has expired;
(c) the application has been opposed, and the related decisions has been taken in favour of the applicant.
As per section 20(2), on registration of a trademark, the Registrar shall issue to the applicant a certificate in the prescribed form, sealed with the seal of the Trademarks Registry.
Duration, renewal and restoration of registration:
As per section 22(1), duration/tenure of the registration of a trademark shall be for a period of seven years, but may be renewed. As per section 22(2), upon application made by the proprietor in the prescribed manner and subject to payment of prescribed fee, the Registrar shall renew the registration of a trademark for a period of ten years from the date of expiration of the original or renewed registration.
Unless renewed, the trademark will be public property.
Infringement of Trademark
Infringement of trademark means using a registered trademark without the consent of its registered proprietor. Section 26(1) of the Act, defines infringement as “ if a person, not being registered proprietor or user, uses any distinctive or deceptively similar trademark in relation to goods or service in his own trade, it will be considered that he has infringed a registered trademark.
Which categories of trademark will be treated as infringement:
As per section 26(2), using such trademarks that falls under the following categories will be treated as infringement:
(a) marks identical and goods or service similar;
(b) marks similar and goods or service identical;
(c) marks identical and goods or service identical;
Using following marks will also be considered as infringement as per section 26(3):
(a) marks identical or similar and goods or service not similar. For example, an application to register “Gluvita” as a trademark for biscuit was refused, because similar trademark “Glucovita” is being used for glucose powder by another registered use.
(b) using a mark without due causes takes unfair advantage of or is detrimental to the distinctive character or repute of a well-reputed registered trademark in Bangladesh.
Meaning of using a registered trademark by infringement:
As per section 26(4), for the purpose of section 26, “uses of registered trademark” means-
(a) affixes it to goods or to the packaging thereof;
(b) exposes any goods, supplies goods to the market for sale using the mark, supplies service or offers to supply service under the mark or stocks them;
(c) imports or exports goods with the mark;
(d) uses any mark on business papers or in advertising.
Infringement of trademark by advertising:
Infringement of a trademark by advertisement will mean such advertisement, which –
(a) takes unfair advantage and is contrary to honest practices in industrial or commercial matters, or
(b) is detrimental to its’ distinctive character, or
(c) is against the reputation of the trademark.
Defenses of the defendant
In a case of infringement of a trademark, the defendant may plead one or more of the following defenses as may be applicable to his case:
(a) the plaintiff has no title to the suit;
(b) registration of the mark is not valid and is liable to be expunged;
(c) the use of the mark complained of is not an infringement of the registered trademark;
(d) the defendant’s use is prior to the registration and use of the plaintiff.
(e) the defendant has a right to use by virtue of honest concurrent use;
(f) the plaintiff’s trade is fraudulent, or his trademark is deceptive.
As per section 26(8), if the defendant in a case of infringement of a trademark can satisfy the Court of the followings:
(a) the use complained is not likely to deceive or cause confusion to the people;
(b) it does not indicate a business relationship between the proprietor/user of a registered trademark and any goods or service under such mark complained of;
In such case, the Court will not impose any sanction or grant any other relief in favour of the plaintiff.
Thanks a lot.
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