Intellectual Property Rights:

We must know how Trade Marks Registration is given and how is the Right Protected?

-by Khondoker Md. Nazmul Huda Shamim1

Recently, in November and December, 2010, I have noticed some advertisements published in some
well circulated news papers in Bangladesh on some beverage items and on some spicy items in class
29 and in class 32 of International Classification of Goods (NICE Classification, administered by the
World Intellectual Property Organisation, WIPO). These advertisements were totally misleading and
consumers may be cheated as a result of such advertisements. There are also scopes for passing off and
unethical business gains in this process.

What were the contents of those advertisements? In those advertisements one of the groups of
companies has given legal warning to the people as well as to the so called dishonest business
community at large in respect of certain goods under class 30 and 32 of International Classification of
Goods claiming that they are the sole and legal owner of some goods mentioned in that advertisement
and no body should use the similar name and design for such products and they also should not
marketing these products. The said group of companies claimed that they have got the Trade Marks No
in favour of those respective goods. They have given that advertisement in such a tricky way that the
people at large may be confused seeing such sort of advertisements. People may think that this
company is the valid owner of this brand of goods and other business groups or industries are illegally
using their Marks or Brand Names dishonestly. Interestingly the same group of companies had given
another advertisement in some well circulated news papers in respect of a worldwide well-known
beverage item claiming their own. What they did? They just added a word “new” immediately before
the world wide renowned beverage item. In that advertisement they claimed that they have already got
Trade Mark registration and their product is coming within very short time in the market.

What is the actual situation laying here in respect of these advertisements? The actual picture is that the
publisher of those advertisements has only submitted several applications in the reception section of
the Department of patents, Designs and Trademarks (DPDT) in respect of certain goods in class 30 and
32 of the NICE Classification for Trade Marks. As they have submitted their applications they have
merely given an application number against each application. In course of further communication with
the applicants these application numbers and class numbers will be used. In the said advertisements,
mentioned in the first paragraph, the applicant has merely submitted his applications for registration.
Those applications are not even published in the Journal. So, the question of getting registration or
getting trademark does not arise.

What is Trade Mark?

In the Trademarks module of the World Intellectual Property Organisation (Module 4), trade Mark is
identified as “A trademark is a sign that individualizes the goods or services of a given enterprise and
distinguishes them from its competitors.” In the modern concept a word, a logo, a number, a letter, a
slogan, a sound, a color, or sometimes even a smell which identifies the source of goods and/or
services with which the trademark is used can be best example of Trade Mark. According to section 2
(8) of the Trade Marks Act, 2009, “trademark” means-(a) in relation to Chapter X of this Act, other
than section 77-(i) a registered trademark or 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; (ii) 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; (b) in relation to the other
provisions of this Act, a mark used or proposed to be used in relation to any service or goods indicating
a connection in the course of trade between the goods and the person having the right, either as
proprietor or as registered user, to use the mark. According to section 2 (23) of the Trade Marks Act,
“mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, symbol, numeral,
figurative elements, combination of colours or any combination thereof. The Trade Marks Act, 2009
also given a definition about deceptively similar mark. According to section 2 (20) of the Act,
“deceptively similar mark” means a mark which is likely to deceive or cause confusion and nearly
resembles another mark registered under this Act”.

How Trade Marks Registration is given?

Registration process for a Trade Mark is a little bit long process. Some legal formalities have to fulfill
for registration of a Trade Mark. First of all the applicant shall have to file an application to the
registration of a Trade Mark. He has to submit prescribed fees along with the application. He must also
submit his mark in the specified place of his application. When the application is received the
application and documents submitted with that application is sent to the Trade Marks Examiners.

The examiners are technical person and they thoroughly examine the applications. During examination
the examiners have to follow the Trade Marks Act and Rules as well as the International Classification
of Goods (NICE Classification). An application will not be processed for publication in the
Government Gazette, Trade Marks Journal, unless it fulfills the legal requirements for registration.
Trade Marks should be distinctive and should neither be generic nor merely descriptive of the goods or
services they represent.

According to section 6 (1) of the Trade Mark Act, “a trademarks shall not be registered in the Register
unless it contains or consists of at least one of the following essential particulars,-(a) 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, caste or tribe in
Bangladesh; (e) any other distinctive mark.”

According to section 8 of the Trade Marks Act, 2009, there are some prohibitions in giving registration
of a Trade Mark. Section 8 of the Act is as follows: “No mark or part of a mark shall be registered as a
trademark- (a) which comprises or consists of any scandalous or obscene matter; or (b) the use of
which would be contrary to any law for the time being in force; or (c) the use of which would be likely
to deceive or cause confusion; or (d) which comprises or contains any matter likely to hurt the
religious susceptibilities of any class of the citizens of Bangladesh; (e) which would otherwise be
disentitled to protection in a court; (f) which is identical with, or is an imitation of, or contains as a
element, an armorial bearing, flag or other emblem, a name or abbreviation or initials of the name of,
or official sign or hallmark adopted by, any state, intergovernmental organization or organization
created by an international convention, charter or other instruments, unless authorized by the
competent authority of that state or organization; or (g) the application is made in bad intention and
faith.”

The Trade Marks Act, 2009 has set some criteria for prohibition of registration of identical or
deceptively similar trademarks. Section 10 of this Act states: “(1) Save as provided in sub-section (2),
no trademark shall be registered in respect of any goods or description of goods or in respect of any
services or description of services which is identical with or deceptively similar to a trademark which
is already registered in the name of a different proprietor in respect of the same goods or description of
goods or in respect of the same services or description of services, as the case may be. (2) In case of
honest concurrent use or of other special circumstances which, in the opinion of the Registrar, make it
proper so to do, he may permit the registration by more than one proprietor of trademarks which are
identical or nearly resemble each other in respect of the same goods, or services or same description of
goods or services subject to such limitations and conditions, if any, as the Registrar may think fit to
impose. (3) Where separate applications are made by different persons to be registered as proprietors
respectively of trademarks which are identical or nearly resemble each other in respect of the same
goods or description of goods or in respect of same services or description of services, the Registrar
may pending the applications bearing a later date until, the determination of the proceedings in respect
of the earlier application, and dispose of the earlier applications in the light of the evidence tendered in
relation to the application and the oppositions thereto. (4) No trademark shall be registered in respect
of any goods or services if it is identical with, or confusingly similar to, or constitutes a translation of a
mark or trade description which is well-known in Bangladesh for identical or similar goods or services
of another enterprise. (5) No trademark shall be registered in respect of goods or services if it is well-
known and registered in Bangladesh for goods or services which are not identical or similar to those in
respect of which registration is applied for, if – (a) the trademark is used in such a way that may create
a false conception that there is a connection between those goods or services and the owner of the
registered trademark; and (b) the interests of the registered trademark are likely to be damaged by such
use. (6) In determining whether a mark stating in sub-sections (4) and (5) is well known the knowledge
of the mark in the relevant sector of the public, including knowledge which has been obtained in
Bangladesh as a result of the promotions of the mark, shall be taken into account. (7) Nothing in this
section shall prevent the registration of a trademark where the proprietor of the earlier trademark or
other earlier right consents to the registration.”

What the Examiners do?

The examiners have to consider all the legal provisions while they examine an application. At the same
time they have to consider whether the application is filled in the assigned class with proper fees and
required documents. In case of any fault or lapse, the applicant is given a show cause notice. If the
examiners do not find any problem with the particular application he gives his proposal for publication
in the Government Gazette, i.e.; Trade Marks Journal Published by the Bangladesh Government Press.
The application is then sent to the Assistant Registrar for approval and then to the Deputy Registrar.
The Assistant registrar or the Deputy Registrar may disagree with the proposal of the Examiners. If
they agree with the examiner’s proposal, the application is sent to the journal section for journal
publication. At this stage the applicant has to submit prescribed journal fees. On the other hand, where
the applicant is given a show cause notice, he has to submit his reply within 3 months as per rule 24 (2)
of the Trade Marks Rules, 1963. If the applicant fails to reply within specified period, the application
shall be deemed to have been abandoned. If the applicant submits his reply or wants a hearing then his
reply is considered or a hearing is allowed. After considering his reply or submission in the hearing his
application may be accepted for journal publication or the application may be refused for registration.

If the application is accepted for journal publication, the applicant has to submit journal fee. According
to section 17 (1) of the Trade Marks Act, 2009 – “when an application for registration of a trademark
has been accepted, whether absolutely or subject to conditions or limitations, the Registrar shall, as
soon as may be after acceptance, cause the application as accepted together with the conditions or
limitations, if any, subject to which it has been accepted, to be advertised in the prescribed
manner................................”. So, for registration of a Trade Mark, it must be published in the journal.
It gives the interested parties to protect their Intellectual Property Rights.

When a Trade Mark is published in the Trade Marks Journal, there is wide scope of opposition in the
Trade Marks Act. Any Interested Party can raise opposition as per law. Section 18 of the Trade Marks
Act, 2009 says: “(1) Any person may, within 2(two) months from the date of the advertisement of an
application for registration, and on payment of the prescribed fee, give notice in writing in the
prescribed manner to the Registrar, of opposition to registration. (2) The Registrar shall, within 1(one )
month from the receipt of the notice of opposition by him, serve a copy of the notice on the applicant
for registration in the prescribed manner and within 2(two ) months from the receipt by the applicant of
such copy of the notice of opposition, the applicant shall send to the Registrar in the prescribed
manner, a counter-statement of the grounds on which he relies for his application, and, if he does not
do so, he shall be deemed to have abandoned his application. (3) If the applicant sends such counter-
statement, the Registrar shall, within 1(one) month from the receipt of such counter-statement, serve a
copy thereof in the prescribed manner on the person giving notice of opposition. (4) Any evidence
upon which the opponent and the applicant may rely shall be submitted in the prescribed manner and
within the prescribed time to the Registrar, and the Registrar shall give an opportunity to them to be
heard, if they so desire. (5) The Registrar shall, after hearing the parties, and considering the evidence,
decide whether registration is to be permitted and whether such permission shall be or not subject to
conditions or limitations. (6) When the Registrar deems it necessary to permit registration subject to
conditions or limitations under sub-section (5), he shall record his decision on such conditions or
limitations. (7) If a person giving notice of opposition or an applicant sending a counter-statement after
receipt of a copy of such notice neither resides nor carries on business in Bangladesh, the Registrar
may require him to give security for costs of the proceedings before it, and in default of such security
being duly given, may treat the opposition or application, as the case may be, as
abandoned..................”. As per decision of the opposition case by the opposition tribunal the
application may proceed for registration or it may be refused for registration. The law permits 120
working days for disposal of an opposition case. If an application is considered fit for registration in
the tribunal or if there is no opposition case filed within the prescribed period, the application is given
Registration on submission of prescribed government registration fees. The applicant is given a
Registration Certificate bearing a Trade Mark registration number for his Trade Mark.

Section 100 of the Trade Marks Act, 2009 gives opportunity to go to the Honourable High Court if any
party in the opposition case is aggrieved by the decision of the Opposition Tribunal. If the honourable
High Court gives any direction or judgment in favour of the aggrieved party, the Department of
Patents, Designs and trademarks will act accordingly.
What is the remedy?
Now question may arise what will be the remedy for such kind of advertisements? The answer is that
the aggrieved party by such advertisement can go to the court for legal action. He can go for filing suit
for infringement or he can seek for injunction or for compensation for infringement or passing off.

According to section 96 of the Trade Marks Act- “no suit- (a) for the infringement of a registered
trademark; (b) relating to any right in a registered trademark; (c) relating to any corrected right in
registered trademark; and (d) for passing off arising out of the use by the defendant of any trademark
which is identical with, or, deceptively similar to, the plaintiff’s trademark, whether registered or
unregistered; shall be instituted in any court inferior to a District Court having jurisdiction to try the
suit.

Section 97 of the same Act states that- “(1) The relief which a Court may grant in a suit for
infringement or passing off referred to in section 96 of this Act 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. (2) Notwithstanding anything
contained in sub-section (1) of this section, the Court shall not grant relief by way of damage or an
account of profits in any case- (a) where in a suit for infringement of a trademark, the infringement
complained of is in relation to a certification trademark; or (b) where in a suit for infringement the
defendant satisfies the court- (i) that at the time he commenced to use the trademark complained of in
the suit he was unaware and had no reasonable ground for believing that the trademark of the plaintiff
was on the Register or that the plaintiff was a registered user using by way of permitted use; and (ii)
that when he became aware of the existence and nature of the plaintiff’s right in the trademark, he
forthwith ceased to use the trademark in relation to goods or services in respect of which it was
registered; or (c) where in a suit for passing off the defendant satisfies the Court- (i) that at the time he
commenced to use the trademark complained of in the suit he was unaware and had no reasonable
ground for believing that the trademark of the plaintiff was in use; and (ii) that when he became aware
of the existence and nature of the plaintiff’s trademark, he forthwith ceased to use the trademark
complained of.”

Concluding Remark:
Trade Marks are one kind of intellectual property and their purpose is to protect the brand name or the
trade name of the product and it also protects the consumers from being deceived. It can be owned by
individuals or companies. Trade Marks should be registered first for their better protection. Business
community, industrialists and individuals should be cautious about trade marks registration and should
be respectful to Intellectual Property Rights.

1
Khondoker Md. Nazmul Huda Shamim, Senior Assistant Seceretary, Government of the
Peoples’ Republic of Bangladesh. He is now working on deputation as Assistant Registrar in the
Department of Patents, Designs and Trade Marks under the Ministry of Industries.
Email: nazmul_batch20@yahoo.com