BANGLADESH Trends and Developments Contributed by: Syed Emran Hossain, H&H Company
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 appli - cants obtained registration with descriptive and/ or common dictionary words. The Trade Mark Authority now accepts the legal submissions 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 language 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 prop - erty including, inter alia, trade marks and trade names in Bangladesh. For such protection, the Paris Convention for the Protection of Industrial Property was signed between the 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 Trade Marks 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 word is inseparable from another prin - ciple called the “doctrine of trans-border reputa - tion”. As per recent judgments of the apex courts of the sub-continent, including Bangladesh, the traditional concept mandating presence prod - uct/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 com - modities 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 judg - ment, the High Court Division granted protection to a trade mark based on international registra - tions, advertisements and international use. Keeping in mind the spirit of the legislature, judicial decisions and WIPO, the Ministry of Industry has published a booklet/guide book in which it was stated that “well known marks are entitled to much protection, even if they are not registered”. The booklet also mentions that, in 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 mark is receiving much attention and proprietors of such well-known marks are getting better protection. Beside the issue of use of deceptive trade marks, the Trade Mark Authority and courts have also started recognising the concept of use of deceptive trade dress. The courts now consider that ingredients of trade dress, get up, colour combination, lay out of the container or packing acquire significance and relevance for determining the offence of passing off. If simi - larities of trade dress are substantial from the look of two goods, it comes within the mischief of passing off. Recently, the High Court Divi - sion granted an injunction restraining the use of the deceptive colour combination and bottle shape, despite the trade marks being quite dif - ferent from each other. The courts recognise that the test is whether there is likelihood of confu - sion or deceptiveness in the minds of unwary customers, irrespective of dissimilarities in the trade name.
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