Previously the registration procedure of trademark and remedy for infringement or passing off goods or services of the trademark’s owners were dealt under Trademarks Act, 1940 which is now repealed by Trademarks Act, 2009. The Act 2009 provides civil remedy for infringement or passing off and the Penal Code provides criminal action for infringement of trademarks.
Let us first discuss about civil action. The Act 2009 gives exclusive rights to use to the proprietor of the registered trade mark. When a trademark is used by others without the consent of the registered owner an action for infringement of trademark can be sought by the owner of registered trademark. Even if the application for registration of its trademark is pending in Bangladesh they can file a suit for infringement of trademark coupled with passing off action. Sections 24, 25, 96(a) and 97 of the Trademarks Act 2009 deal with the exclusive rights of the registered owner of a trademark.
A registered trademark is deemed to be infringed by any person who is not being the registered proprietor of the trademark are using impugned mark which is identical with or deceptively similar to any registered trademark of goods or services of his own trade. According to the Act 2009 a person uses “a registered trademark” means that (a) affixes it to goods or the packaging thereof; (b) offers or exposes goods for sale, puts them on the market or stocks them for those purposes under the mark, or offers or supplies services under the mark; (c) imports or exports goods under the mark; (d) uses the mark on business papers or in advertising.
In case of infringement of registered trademark civil action can be sought praying for injunction and/ or damages against any person who is not being the registered proprietor of the trademark are using impugned mark which is identical with or deceptively similar to his registered trademark. District Judge has the original jurisdiction to entertain such action to allow injunction and award damages to the registered proprietor for infringement of trademark.
Apart from that passing off action can be sought in case of unregistered trademark. Section 24(2) of the Act 2009 reserves the right to file passing off action by the unregistered trademark owners. Section 96(d) and 97 of the Act 2009 provides that in a suit for passing off relief like injunction and/or damages can be sought. For a passing off action it needs to proof 2 things such as (a) it is the earlier user of the well known trademark and (b) the impugned mark is identical or deceptively similar with the owner of trademark. The Court of District Judge is the forum for such passing off action.
Let us now consider about criminal action for infringement of trademark. The proprietor of the trademark may file Complaint Case (i.e. criminal action) under Section 482 of the Penal Code which reads as follows:
“482. Whoever use any false trade mark or any false property mark shall, unless he proves that he acted without intent to defraud, be punished with imprisonment of either description for a term which may extend to one year, or with fine, or with both.”
In such an action the Court of Metropolitan Magistrate (CMM) may pass necessary order directing concerned Police Station to take necessary action. The proprietor of trademark may also directly approach the Criminal Investigation Department (CID), Bangladesh Police to investigate in the matter.
MD. RASEL MAHMUD
Barrister-at-Law, Lincoln’s Inn
Advocate, Supreme Court of Bangladesh
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