BANGLADESH Law and Practice Contributed by: A B M Shamsud Doulah, Rajin Ahmed and A B M Sohailud Doulah, Doulah & Doulah
7.4 Prerequisites and Restrictions to Filing a Lawsuit In Bangladesh, before filing a trade mark or copyright lawsuit, certain prerequisites and restrictions must be considered. Prerequisites include the following. • Owning a valid trade mark or copyright – only the legal owner of the infringed trade mark or copyright may file a lawsuit. Registration is not always neces - sary, but it simplifies establishing ownership and can strengthen the case. • Standing to sue – the intellectual property right owner must have suffered harm due to the infringe - ment; for example, a lost sale or damage to reputa - tion. • Proper jurisdiction – the lawsuit must be filed in the appropriate court with jurisdiction over the defend - ant and the infringement. Restrictions include the following. • Groundless threats provisions – it is illegal to send groundless threats of infringement lawsuits to intimidate competitors; if the threat does not have sufficient legal basis, the accused party can sue for unfair competition. • Misuse/abuse – courts may be reluctant to enforce a trade mark or copyright if the owner has engaged in unfair practices, such as: (a) misrepresenting the strength of a mark or copyright; (b) using the lawsuit to stifle competition instead of protecting its legitimate rights; and (c) failing to act diligently against other infring - ers, creating the appearance of abandoning its rights. • Competition law – antitrust laws may limit the abil - ity to enforce trade marks or copyright in ways that restrict competition; for example, using rights to block others from entering the market or charging unreasonably high licensing fees. 7.5 Lawsuit Procedure Jurisdiction District courts have original jurisdiction over trade mark and copyright infringement matters. Appeals
from district court decisions go to the High Court Divi - sion of the Supreme Court of Bangladesh. Appeals against certain High Court Division judgments can be made to the Appellate Division of the Supreme Court. Initiating Infringement Proceedings A trade mark or copyright owner can initiate infringe - ment proceedings by filing a lawsuit directly with the district court within whose jurisdiction the infringe - ment occurred or where the defendant resides. Foreign Trade Mark or Copyright Owners Foreign trade mark or copyright owners can bring infringement claims in Bangladesh. Registration in Bangladesh is not mandatory for infringement claims, but it can strengthen the owner’s legal standing and simplify the enforcement process. 7.6 Declaratory Judgment Proceedings and Other Protections for Potential Defendants Declaratory Judgment Proceedings An alleged trade mark or copyright infringer can initi - ate declaratory judgment proceedings in Bangladesh under the Code of Civil Procedure, 1908. This allows them to seek a court declaration that their actions do not constitute infringement. The potential defendant must have a legitimate and well-founded fear of being sued for infringement by the trade mark or copyright owner. This is often based on threats or communications from the owner or actu - al initiation of infringement proceedings elsewhere. Potential Defendant’s Protections Filing a protective brief with the Registrar of Trade Marks or the Registrar of Copyrights can document the potential defendant’s good faith use of the mark or work and potentially serve as a deterrent to an infringement lawsuit. In rare cases, courts may require the trade mark or copyright owner to post a bond to cover potential damages if the infringement claim is ultimately found to be invalid. However, this is not customary in Bang - ladesh.
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