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Enforcement

Jurisdiction

Which courts are empowered to hear trademark disputes?

According to Section 96, the district courts are empowered to hear trademark disputes.

Actions

What actions can be taken against trademark infringement (eg, civil, criminal, administrative), and what are the key features and requirements of each?

The following remedies are available for trademark infringement.

Civil remedies Civil remedies include:

  • an injunction restraining further use of the infringing mark;
  • damages or an account of profits; and
  • an order for delivery up of infringing labels and marks for destruction or erasure.

Criminal remedies Under the Penal Code, the punishment for infringement is imprisonment for up to two years but no less than six months, a fine of up to Tk200,000 but no less than Tk50,000 or both. For a second or subsequent conviction, the punishment is imprisonment up to three years but no less than one year, a fine of up to Tk300,000 but no less than Tk100,000 or both. The courts also have the power to set the prison term and the amount of any fine.

Who can file a trademark infringement action?

Registered trademark owners may file trademark infringement actions.

What is the statute of limitations for filing infringement actions?

The Limitation Act 1908 sets out the statute of limitations for filing infringement actions.

What is the usual timeframe for infringement actions?

As per Section 86 of the Trademarks Act, the usual timeframe for infringement actions is three years from the date on which the cause of action arose.

Injunctions

What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?

The Specific Relief Act 1877 sets out the rules and procedure governing the issuance of injunctions to prevent imminent or further infringement.

Remedies

What remedies are available to owners of infringed marks? Are punitive damages allowed?

The following remedies are available for trademark infringement.

Civil remedies Civil remedies include:

  • an injunction restraining further use of the infringing mark;
  • damages or an account of profits; and
  • an order for delivery up of infringing labels and marks for destruction or erasure.

Criminal remedies Under the Penal Code, the punishment for infringement is imprisonment for up to two years but no less than six months, a fine of up to Tk200,000 but no less than Tk50,000 or both. For a second or subsequent conviction, the punishment is imprisonment up to three years but no less than one year, a fine of up to Tk300,000 but no less than Tk100,000 or both. The courts also have the power to set the prison term and the amount of any fine.

Customs enforcement

What customs enforcement measures are available to halt the import or export of infringing goods?

In Bangladesh, all trading activities are regulated by the Ministry of Commerce under the Imports and Exports (Control) Act 1950. Upon receiving a complaint from a rights holder, the relevant customs authority may take steps against any person or entity that imports goods in violation of Sections 15 and 16 of the Customs Act. Section 15 of the Customs Act prohibits the import of goods, whether by air, land or sea, that fall within the following categories:

  • goods marketed under a counterfeit trademark or false trade description;
  • goods made or produced outside Bangladesh and intended for sale under a copyrighted design under the Patents and Designs Act in respect of the class to which the goods belong or any fraudulent or obvious imitation of such design without a licence or the rights holder’s written consent; and
  • goods made or produced outside Bangladesh and marketed under any name or trademark being or purporting to be the name or trademark of any manufacturer, dealer or trader in Bangladesh.

As per Section 17 of the Customs Act:

if any goods bearing registered trademarks are imported into or attempted to be exported out of Bangladesh in violation of the provision of Section 15 or of a notification under Section 16, such goods shall, without prejudice to any other penalty to which the offender may be liable under this act or any other law, be liable to be detained and confiscated and shall be disposed of in such a manner as may be prescribed.

A rights holder may also approach the High Court Division to obtain an order directing Customs to detain or seize the counterfeit goods. 

Defence

What defences are available to infringers?

In case of infringement of a trademark, the defendant may use the following defences:

  • doctrine of laches (if applicable);
  • doctrine of estoppel (if applicable);
  • dissimilarity between the marks (in cases where the plaintiff alleges similarity between the marks);
  • the nature of the defendant’s goods are entirely different from that of the plaintiff;
  • the defendant’s customer base is entirely different from that of the plaintiff; and
  • the defendant’s goods and services are distinguishable from the plaintiff’s goods and services.

Appeal

What is the appeal procedure for infringement decisions?

Anyone aggrieved by the district judge order may appeal to the High Court Division.

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