BANGLADESH Law and Practice Contributed by: A B M Shamsud Doulah, Rajin Ahmed and A B M Sohailud Doulah, Doulah & Doulah
• Potential conflicts – a subsequent assignee/licen - see who records their agreement first may gain an advantage in claims. For trade marks, registration of assignments and licences is highly recommended to ensure enforce - ability and protection against third-party claims. For copyrights, while not mandatory, registration provides additional legal security. 7. Initiating Trade Mark and Copyright Lawsuits 7.1 Timeframes for Filing Infringement Lawsuits Bangladesh has specific provisions addressing the timeframes for filing infringement lawsuits in its intel - lectual property laws, depending on different circum - stances; these lawsuits must be filed within three years of the cause of action arising. The limitation period for filing an infringement lawsuit is typically measured from the time the cause of action accrues, which is often when the infringement is dis - covered or should have been discovered with rea - sonable diligence. Courts may consider whether the plaintiff exercised reasonable diligence in discovering the infringement. Delay in bringing a lawsuit without a justifiable reason may affect the plaintiff’s ability to recover certain remedies. 7.2 Legal Claims for Infringement Lawsuits and Their Standards Trade Marks Legal claims for trade mark infringement may include: • direct infringement – unauthorised use of a reg - istered or unregistered trade mark that is likely to cause confusion; • vicarious infringement – holding someone respon - sible for the infringing actions of another party; and • contributory infringement – aiding, abetting or materially contributing to another’s trade mark infringement. While registered trade marks typically benefit from statutory protection, unregistered trade marks may
still have common law protection, and claims can be pursued based on common law rights. The key elements of infringement are ownership of a valid trade mark and the likelihood of confusion among consumers due to the alleged infringing use. Copyright Legal claims for copyright infringement may include: • unauthorised copying, distribution or display of a copyrighted work; • aiding, facilitating or encouraging copyright infringement by another party; and • holding someone vicariously liable for the copyright infringement of another. The key elements of infringement are ownership of a valid copyright and unauthorised use of the copy - righted work by the alleged infringer Legal Remedies Trade mark and copyright infringement may include injunctive relief, damages and, in some cases, the destruction of infringing goods. 7.3 Factors in Determining Infringement The key factors in determining trade mark infringe - ment are: • likelihood of confusion; • similarity of marks; • strength of the mark; • type of goods or services; • actual confusion; and • statutory factors. The key factors in determining copyright infringement are: • substantial similarity; • originality; • access and copying; • transformative use; and • statutory factors.
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