BANGLADESH Law and Practice Contributed by: A B M Shamsud Doulah, Rajin Ahmed and A B M Sohailud Doulah, Doulah & Doulah
8.2 Effect of Registration Advantages of registering trade marks include pre - sumption of validity and exclusive right to use for registered goods/services. Further, after five years, certain defences become unavailable for the infring - er. The advantage of registering copyrights is that it serves as evidence of copyright ownership, simpli - fying legal proceedings. In both cases, it becomes easier to initiate legal action and obtain evidence, and there is potential for higher damages awards. Overall, registration offers litigation benefits, but unregistered rights can still be protected under com - mon law principles. 8.3 Costs of Litigating Infringement Actions The costs of litigating trade mark or copyright infringe - ment actions in Bangladesh vary widely depending on factors such as court fees, lawyer fees, expert witness fees, survey costs and investigation expenses. These costs can be influenced by the complexity of the case, duration of proceedings, settlement versus trial, law - yers’ experience and court location. It is challenging to predict exact costs due to these variables. 9. Defences and Exceptions to Infringement 9.1 Defences to Trade Mark Infringement Statutory Defences Those found in the Trademarks Act, 2009 include: • priority of use – prior use of a similar or identical mark for the same or similar goods/services bars infringement; • non-use – if a registered trade mark is not used within five years of registration, it can be expunged or subject to cancellation, potentially defending against infringement claims based on that mark; • abandonment – abandonment of a trade mark through non-use can also negate infringement claims based on that mark; and • fair use – limited use of a trade mark for nomina - tive purposes, comparative advertising, criticism or teaching can be considered fair use and permitted.
Common Law Defences These include:
• bad faith – registration or use of a trade mark in bad faith to deceive or exploit the reputation of another mark can negate infringement claims; • parody/satire – use of a trade mark for humorous or critical purposes in a non-misleading manner may be considered parody or satire and is protect - ed under freedom-of-expression principles; • functionality – if a trade mark solely represents a functional feature of a product, it may not be pro - tectable, and hence infringement claims based on it may not hold; • own-name defence – use of one’s own name in good faith, not intended to mislead or capitalise on another’s trade mark, can be a valid defence; • limitation periods – infringement claims may be time-barred if not filed within a specific period; • forfeiture – if the trade mark owner engages in con - duct that undermines the mark’s distinctiveness or public trust, infringement claims may be weakened or forfeited; and • laches, estoppel, acquiescence – these defences involve the trade mark owner’s conduct, such as unreasonable delay in enforcing rights or knowl - edge of infringement without objection, potentially weakening or barring their infringement claims. 9.2 Defences to Copyright Infringement (Fair Use/Fair Dealing) Fair Dealing Bangladesh recognises fair dealing under the Copy - right Act, 2023, allowing limited use of copyrighted works for purposes such as criticism, research, news reporting, education or incidental inclusion in another work. Factors considered include the nature and pur - pose of the work, the portion used, its effect on the market value, and the character of the use. Satire/Parody While not explicitly stated, satire and parody are accepted expressions falling under fair dealing when they humorously critique or transform original works without commercial exploitation.
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