BANGLADESH Trends and Developments Contributed by: Syed Emran Hossain, H & H Company
Industrial Property was signed between the relevant countries on 20 March 1883. Bangladesh joined the World Intellectual Property Organization (WIPO) in 1985 and became a member country of the Paris Con - vention on 3 March 1991. The Act 2009 defines the Paris Convention in Section 2 (19), and Sections 119 and 120 of the Act 2009 provide special provisions relating to Convention countries. The protection of well-known trade marks in the modern world is inseparable from another principle called the “doctrine of trans-border reputation”. As per recent judgments of the apex courts of the sub- continent, including Bangladesh, the traditional con - cept mandating presence product/business in the local market has faded. The High Court Division now holds the view that, in this age and time, the world has become a small one for all practical purposes and one should not strictly adhere to the traditional concept of local/national market. There is free movement of commodities and capitals. The law must be given a new interpretation to suit the needs of the day and the interest of the original owner of the mark must be protected [57 DLR 93]. In a 2024 judgment, the High Court Division granted protection to a trade mark based on international registrations, advertisements and international use. Keeping in mind the spirit of the legislature, judicial decisions and WIPO, the Ministry of Industry has pub - lished a booklet/guide book in which it was stated that “well known marks are entitled to much protec - tion, even if they are not registered”. The booklet also mentions that, in the case of well-known trade marks, the marks are entitled to get protection against the products of different classes. In light of the above it can be said that the concept of well-known marks is receiving much attention and proprietors of such well- known marks are getting better protection. Besides the issue of use of deceptive trade marks, the Trade Mark Authority and courts have also started rec - ognising the concept of use of deceptive trade dress. The courts now consider that ingredients of trade dress, get-up, colour combination, layout of the con - tainer or packing acquire significance and relevance for determining the offence of passing off. If similari - ties of trade dress are substantial from the look of two
goods, it comes within the mischief of passing off. Recently, the High Court Division granted an injunction restraining the use of the deceptive colour combina - tion and bottle shape, despite the trade marks being quite different from each other. The courts recognise that the test is whether there is likelihood of confusion or deceptiveness in the minds of unwary customers, irrespective of dissimilarities in the trade name. In the case of international registrations, the Trade Mark Authority also gives priority to issues such as registration in the country of origin, registration with the EU and international registrations in a neighbour - ing country. Besides registration, the courts also emphasise the right of an earlier user. The High Court Division, in a judgment reported in 4 SCOB [2015] HCD 89, held that “the paramount important question in a trade mark dispute is… who is the earlier user of the trade mark?”. The very recently enacted Copyright Act 2023 (Act No XXXIV of 2023) (the “Act 2023”) came into effect on 18 September 2023, repealing the earlier Copyright Act 2000. The amount of case law is negligible with regard to copyright disputes in comparison with trade mark disputes. The main reasons for non-enforcement of copyrights are many, including: • lack of knowledge on both sides – ie, creators and public; • non-availability of special or exclusive adjudicating forum; and • lack of effective remedies and penalties. Despite the aforesaid realities, the Act 2023 was enacted in order to ensure more balance between the rights of creators and free accessibility of infor - mation. Some of the changes and developments that have been introduced in the 2023 Act in comparison with the former Act of 2000 are mentioned below. The government has not enacted new Rules under the Act 2023, and the Copyright Rules 2006 are still operative. The list of activities treated as “work” has been expanded in the new Act, covering architectural design, performance, database, digital activities based on information technology, folk-cultural expres - sions, etc. In the same way, the definition of “artistic
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