TRADEMARK is regarded as the primary method by which the products of one entity are distinguished from those of others. However, in today鈥檚 global trade, a trademark serves four purposes. It provides source identification, ensures product authenticity, advertises the product and shapes consumer perception. Trademark law plays a crucial role in protecting an entity鈥檚 business identity. Generally, a trademark is a distinctive sign or indicator that helps customers identify a product or service from a specific business entity.
As a member state of the World Trade Organisation, Bangladesh is a signatory to several international instruments relating to trademarks and intellectual property rights, including the Paris Convention on Industrial Property, Berne Convention for the Protection of Literary and Artistic Works, WIPO Copyright Treaty, WIPO Performances and Phonograms Treaty and the Nice Agreement on the International Classification of Goods and Services. The legislative approach to confer with the international laws relating to trademarks not only establishes the rights of trademark holders but also broadens the scope for the economy.
The Paris Convention for the Protection of Industrial Property, enacted in 1883, plays a vital role in safeguarding industrial property, covering everything from patents and trademarks to industrial designs and geographical indications. This international agreement was a crucial leap forward, empowering creators to protect their intellectual works across borders.
The Uruguay round of the General Agreement on Tariffs and Trade that led to the Agreement on Trade-Related Aspects of Intellectual Property Rights, enacted in 1995, has brought the biggest reform in the world鈥檚 trading system and is notable for being the first legal framework to encompass all facets of intellectual property through specific provisions. The TRIPS agreement offers significant protection for intellectual property in areas related to trade and is seen as an extensive framework for safeguarding intellectual property standards. TRIPS significantly contributes to motivating invention among Bangladeshis, fostering the advancement and use of innovations while safeguarding the rights and responsibilities of involved parties through effective protection.
The Trademarks Act 2009, along with the Trademark Rules 2015, is the fundamental legal basis for the trademark regime in Bangladesh. The law has brought Bangladesh鈥檚 trademark arrangement into compliance with the standards set by the TRIPS agreement. It encompasses a broad spectrum of intellectual property rights, which include copyrights, trademarks, patents and industrial designs. It also addresses the protection of undisclosed information such as trade secrets and test data, thereby ensuring comprehensive coverage of various forms of intellectual property. From describing the procedure for registering a trademark to imposing strict punishment for infringement, this law mentions almost everything to establish trademark rights.
Derived from the common law, Section 96(d) aligns with the 鈥榩assing off鈥� principle to protect rights even if trademark is not being registered under this law. The passing off principle is adopted in several international instruments including the TRIPS agreement to protect the right of unregistered trademarks.
The Advocaat case, a significant legal precedent in passing off, helps to understand its relevance. Erven Warnink BV, a Dutch company known for producing 鈥楢dvocaat,鈥� sued UK-based J Townend and Sons for using the same name, misleading consumers into believing they were purchasing the original product. The court established the 鈥榗lassic trinity鈥� test for passing off, which includes proving goodwill, misrepresentation and damages. The inclusion of this principle in the trademarks law reflects Bangladesh鈥檚 effort to align with global best practices for protecting commercial goodwill.
The Trademarks Act 2009 also corroborates the amended provisions of the Paris Convention. The 2009 law has also adopted the 鈥榩riority date鈥� application under Section 120. Through this application, priority can be claimed while filing an application for trademark registration in a state signatory to the Paris Convention or a WTO member state if an earlier application is filed in another state signatory to the Paris Convention or a WTO member state in six months.
In 2009, the Trademarks Act was enacted to address the issues arising from the prevailing socio-economic culture. In today鈥檚 open trade economy, brand names are considered the cornerstone of a competitive economy, where people are motivated to excel and make their products identifiable to the public, who will ultimately decide their success. As international brands seek to invest in countries, they are increasingly focused on the existing trademark laws to determine whether the regulations will support them. So, it is an opportunity for Bangladesh to grab the attention of international investors and boost the economy.
Since its enactment, it has been 15 years since this law has not brought any notable change in the trademarks sector in Bangladesh. The market is filled with counterfeit products. It is common to find almost every international brand鈥檚 product in Dhaka city labelled with spurious tags. The critical loophole in this law is that it does not mandate any compulsory registration of trademarks. Businesses, companies, entities or individuals are not required to register trademarks. Additionally, the government鈥檚 failure to raise public awareness has resulted in a lack of understanding and enforcement of trademark protection, leaving businesses vulnerable to infringement.
Bangladesh has not yet adopted the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol) although India, Pakistan and Bhutan did. As a result, Bangladesh lacks jurisdiction beyond its territory and foreign trademarks are not protected in Bangladesh. Now, 115 countries are parties to the Madrid convention. Established in 1891, the agreement simplifies the process of international trademark registration by allowing applicants to submit a single application for protection across all member states鈥� jurisdictions, thereby eliminating the need for separate registrations. The Madrid system offers a cost-effective method for managing trademarks globally, enabling easy modifications, renewal or expansions of trademark portfolios. It is quite challenging to attract the attention of foreign investors without aligning with the Madrid convention.
About 500 applications are filed in a year, but sometimes, it takes around 2鈥�3 years to get trademark registration for lack of resources. It makes the trademarks registration process time-consuming and frustrating. To tackle the situation and achieve the goal of the Trademark Act, it should be reformed to introduce compulsory registration and the authority must be capable of handling the influx.
Unlike the Department of Consumer Rights Protection or the Department of Narcotics Control, there is no specific government authority responsible for inspecting fake products on the market or prosecuting offenders. Action can only be taken if a formal complaint is lodged with the police. Given the financial considerations, it may be challenging to establish a separate agency to monitor the market. Therefore, the law enforcement agency should more effectively address trademark-related offences. In addition, it is highly recommended that public awareness should be created to protect and promote trademark rights. Coordination between the public and private sectors is a must to enhance public understanding of intellectual property rights.
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Md Asif Hasan is a research associate and Tasmiah Zaman is a senior associate at Mahbub and Company.