BANGLADESH Trends and Developments Contributed by: Syed Emran Hossain, H & H Company
The Trade Marks Act, 2009 (Act No XIX of 2009) (the “Act 2009”) is the governing statute relating to the law of trade marks. The Act has been effective since 1 July 2008, repealing the earlier Trade Marks Act, 1940. Subsequently, in accordance with Section 124 of the Act 2009, the Trade Marks Rules 2015 were imple - mented, repealing the Trade Marks Rules of 1963. The common law jurisdiction relating to this area is quite rich and, particularly in recent years, the courts of Bangladesh have passed multiple judgments set - tling several landmark principles. It is common knowledge that one of the major spirits of the law of trade marks is to protect the interest of the honest earlier user and/or restrict the dishonest adopter. The Act 2009 comprises several sections which facilitate upholding this spirit, some of which are discussed in this article. According to Section 2 (5) (a) of the Act 2009, “false trade description” means to use a trade description which is untrue or misleading in a material respect as regards the goods or services to which it is applied. As per Section 8 (g) of the Act 2009, no mark or part of a mark shall be registered as a trade mark if the application is made in bad intention and faith. The Apex Court also considers the issue of honesty with utmost importance and has rejected trade mark applications filed with dishonest inten - tions. In the judgment reported in 60 DLR (AD) 161, the High Court Division held that that the applicant (former agent) committed fraud upon the registrar by claiming the ownership themselves in order to obtain the registration, and hence the application is liable to be rejected. The issue of likelihood of deception is also another key factor for granting registration. Section 8 (c) of the Act 2009 provides that no mark or part of a mark shall be registered as a trade mark if its use would be likely to deceive or cause confusion. Section 10 (1) of the Act 2001 provides that no trade mark 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 trade mark 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 ser - vices or description of services, as the case may be.
At the time of incorporation, Section 10 (5) the Act 2009 restricted registration of a trade mark which is similar to a well-known and registered trade mark in Bangladesh. In order to ensure protection against use of deceptive marks, in 2015 the legislature brought an amendment in Section 10 (5) and added the terms “confusingly similar” and “trade description” as well. Section 2 (20) of the Act 2009 defines a “deceptively similar mark” as a mark which is likely to deceive or cause confusion and nearly resembles another mark registered under this act. The Apex Court of Bangla - desh has clearly held that, in deciding the question of similarity between the two marks, the test is whether a member of the public is at risk of being confused or deceived. In determining this, actual confusion or deception is not necessary; mere likelihood of confu - sion or deception will be enough [73 DLR (AD) 33]. The High Court Division, while explaining the role of the registrar, held that the Act 2009, read with the Rules 2015, mandate certain definite responsibilities that oblige the registrar to further assist in the overall objective in obviating any possibility of deception aris - ing from and confusion caused by similar and com - peting trade marks used in conjunction with similar of kinds of goods [28 BLD (HCD) 31]. In another reported judgment, the High Court Division held that use of an essential part of the mark is liable to create confusion [6 ALR 300]. Until recently, the Trade Mark Authority has been strict in granting registration of trade marks with common dictionary words or descriptive words. However, in recent times, several applicants obtained registration with descriptive and/or common dictionary words. The Trade Mark Authority now accepts the legal sub - missions that a descriptive trade mark may be entitled to protection if it has assumed secondary meaning which identifies it with a particular product or as being from a particular source, and common words of a lan - guage and/or descriptive words can be trade marked when they have acquired distinctiveness/secondary meaning. Another important aspect of development in the realm of trade mark laws is the protection of internationally well-known industrial property including, inter alia, trade marks and trade names in Bangladesh. For such protection, the Paris Convention for the Protection of
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