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Rights and protection
Is ownership of a trademark in your jurisdiction determined on a first-to-file or first-to-use basis?
The ownership of a trademark is usually determined on first-to-use basis, subject to adducing evidence of prior use of the mark in Bangladesh.
What legal protections are available to unregistered trademarks?
The rights in an unregistered trademark can be enforced through the common law remedy of passing off.
How are rights in unregistered marks established?
The rights in an unregistered mark are established through the use of the mark in commerce. This can be demonstrated by providing evidence of the existence of goodwill of the mark among the public and trade and the damage suffered to it due to misrepresentation by the infringing party.
Are any special rights and protections afforded to owners of well-known and famous marks?
In addition to injunctions, damages and accounts of profits, together with the delivery or destruction of infringing materials, Section 42 of the Trademarks Act permits defensive filing for a well-known mark even in respect of goods or services which are not covered or propose to be covered by the mark.
To what extent are foreign trademark registrations recognised in your jurisdiction?
In accordance with international obligations under the Paris Convention for the Protection of Industrial Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights, foreign trademark registrations are recognised in Bangladesh to establish well-known marks.
What legal rights and protections are accorded to registered trademarks?
In accordance with Section 25 of the Trademarks Act, only the registered owner of a trademark can use the same and, in case of infringement of the registered mark, the owner reserves the right to initiate an infringement suit against the infringer before the court and obtain relief as enumerated in Section 97 of the act. Relief in this regard may include injunctions, damages or accounts of profits, together with delivery of the infringing material for destruction or erasure.
Who may register trademarks?
Any person or body corporate claiming to be the proprietor of a trademark may apply to the Department of Patent, Designs and Trademarks for registration of the mark.
What marks are registrable (including any non-traditional marks)?
As per Section 2(23) of the Trademarks Act, trademarks may comprise the following:
- figurative elements; and
- a combination of any of the above.
Can a mark acquire distinctiveness through use?
Yes, a mark can acquire distinctiveness through use.
On what grounds will a mark be refused registration (ie, absolute and relative grounds)?
Trademarks may be refused on absolute or relative grounds, as enumerated under Sections 8, 9 and 10 of the Trademarks Act.
Absolute grounds for refusal Absolute grounds for refusal under Sections 8 and 9 of the act include the following:
- The mark comprises or consists of any scandalous or obscene matter.
- Use of the mark would be contrary to law.
- Use of the mark would likely deceive or cause confusion.
- The mark contains matter likely to hurt the religious susceptibilities of any class of Bangladeshi citizens.
- The mark is identical to, an imitation of or contains as an element an armorial bearing, flag or other emblem; a name, abbreviation or initials; or an official sign or hallmark adopted by any state or international organisation created by an international convention, charter or other instruments, unless authorised by the competent authority of that state or organisation.
- The mark would otherwise be denied protection in court.
- The trademark application is made in bad faith.
- The trademark is for a name which is commonly used and accepted as single chemical element or single chemical compound, and the applicant intends to use the same in respect of a chemical substance or preparation.
Relative grounds for refusal The relative grounds for refusal under Section 10 of the act include the following:
- The mark resembles a well-known trademark belonging to someone else.
- The mark is incapable of distinguishing the goods or services of one enterprise from those of another enterprise.
- The mark resembles a third-party mark or a mark in prior use that may or may not be used in connection with identical or similar goods.
Are collective and certification marks registrable? If so, under what conditions?
Collective marks are registerable by virtue of Section 122 of the act; certification marks are registerable by virtue of Section 58 of the act.
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