Enforcement of Intellectual Property Rights - Bangladesh
The development of the IP system depends on the effective enforceability of IP rights. Bangladesh present IP enforcement mechanisms are well organized and the agencies are now well coordinated and their effective measures can limit the number of violations.
Infringement is a common problem in the developing countries like Bangladesh but the law enforcing agencies are showing significant developments in enforcing and protecting the Intellectual Property (IP) Rights in Bangladesh. Acquiring and or securing IP rights is of little economic value if these rights cannot be enforced effectively. The development of the IP system depends on the effective enforceability of IP rights. Bangladesh present IP enforcement mechanisms are well organized and the agencies are now well coordinated and their effective measures can limit the number of violations. The Government has enacted the new law, The Trademarks Act, 2009 giving the scope to protect the services under International Classes 34-45. The said Act has a clause (109) authorizing the customs officials to call for records and disclose the source of importing items prohibited under the Customs Act, 1969, Section 15(d)(e) & (f).
To enforce the IP Rights or to limit the violations of IP Rights in Bangladesh the different agencies of the Bangladesh Government are empowered to take effective action under different provisions of the law. The present functional agencies are - Mobile Courts, Rapid Action Battalion (RAB) and the local Police. The agencies are working under different teams in different areas. The IP Right holders can take necessary assistance and co-operation from the aforesaid agencies.
It is possible to minimize the risk of violations by routine monitor and investigation of the markets in different fields and in different parts of the country. The necessary legal action depends on the nature of violation. However, remedies are available under the following provisions:-
1. The Trademarks Act, 2009
Chapter X: Offenses, Penalties and Procedure
Sections 73 - 91 of the Trademarks Act, 2009 are the relevant provisions for criminal proceeding for trademarks right violation in Bangladesh. If anybody commits offense as described in items (a) to (g) in Section 73 shall be liable for the first offense to pay penalty of Tk. 200,000 with sentence of two years and Tk. 300,000 and three years sentence for the second offense. The other sections are also open depending on the nature of violations.
2. The Customs Act [IV of 1969], Chapter IV.
Prohibition and Restriction of Importation and Exportation.
Section-15. Prohibitions. No goods specified in the following clauses shall be brought, whether by air or land or sea, in to Bangladesh:-
(d) goods having applied thereto a counterfeit trademark within the meaning of Bangladesh Penal Code or a false trade description within the meaning of the Merchandise Marks Act.
Section 17 - Detention and confiscation of goods imported in breach of Section 15 or Section 16. Where any goods are imported into or attempted to be exported out of Bangladesh in violation of the provisions of Section 15 …. such goods shall, without prejudice to any other penalty to which the offender may be liable under this Act, or any other law, but subject to rules, be liable to seizure and confiscation.
Recent Action: Munmuns Leather Pvt. Ltd. is the dealer for Bangladesh for American ‘Samsonite’ brand. They are informed throughly reliable source that a trader has opened Letter of Credit to import items including counterfeit ‘Samsonite’ suitcases. They lodged a formal General Diary with the local Police Station on October 7, 2010 informing the importation, and the details of importer and also made a representation to the Authorities, The Joint Commissioner of Customs in Dhaka and Chittagong. They immediately contacted with the Authority for necessary action for not delivering the goods. The Authority being satisfied locked the assignment in Dhaka on October 10 and in Chittagong on October 11, 2010. The same procedure is applicable for all unlawful importation with counterfeit trademark.
Bangladesh Penal Code 1860.
There are various sections that deal with trademarks infringement and other violations. The relevant provisions are Section 78 to 489.
Recent Action: Samsonite Corporation –vs- Moon Light Travels.
The local agent of Samsonite Corporation initiated a criminal proceeding under the Penal Provision against a trader who imported counterfeit ‘Samsonite’ product in the year 2008 for marketing in Bangladesh. The Agent investigated markets through their own investigator and found counterfeit product in a famous market, Shahbagh Biponi Bitan. Accordingly the Agent informed the same to Rapid Action Battalion (RAB-3). The Commanding Officer of RAB-3 entrusted the operation to one of its team leaders, Assistant Superintendent of Police. The team leader investigated the place and found the allegation true. The RAB Team conducted raid on February 27, 2008 and arrested three people with huge counterfeit ‘Samsonite’ product. The local police lodged criminal action under the penal provision. The infringers found no other alternative but to surrender with the local Agent and accordingly disclaimed entire seized items of 310 big suitcases in quantity in favor of the local agent and given adequate compensation including undertaking for not trading anymore with counterfeit ‘Samsonite’ product. The matter disposed of in February 2010 on the basis of out of court settlement.
The Code of Civil Procedure 1908.
Kraft Foods Globe Brands LLC. –vs- IBN Sina Food Products Pvt. Ltd.
The brand, ‘Tang’ is a popular name in concentrated form for preparing soft drinks product. Kraft has secured the IP rights in Bangladesh in the year 1987 and has business since long through its agent, Sajeeb Corporation. A Bangladeshi small entity, Ibnsina Food marketed preparations for soft drink under brand, Ibnsina Orange Tang. On an application with the local police station the enforcing agencies seized the items and put the people under trial. The District Court has also issued an and-interim order restraining the Ibnsina for not trading with the mark ‘Tang’.
Ibnsina tried to obtain registration for the mark with suffix Tang but the Trademark Department has rejected all their applications.
ABOUT THE AUTHOR: Md. Delwar Hossain, Advocate
Delwar Hossain, born Bangladesh, March 3, 1959; admitted to bar, 1992, Advocate, Supreme Court of Bangladesh.
Education: University of Dhaka (B.A., 1984; LL.B., 1989). Notary Public, People's Republic of Bangladesh. Member: Asian Patent Attorneys Association, APAA, Japan; European Communities Trademark Association, ECTA, Belgium; Intellectual Property Owners Association IPO, USA; International Association for the Protection of Intellectual Property, Switzerland, AIPPI; International Federation of Intellectual Property Attorneys, FICPI, France; International Trademarks Association, INTA, USA; Dhaka Bar Association; Supreme Court Bar Association; National Bar Association; Bangladesh Patent Attorneys Association. Correspondent to Trademarks Throughout the World, a Thomson West Publication.
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Disclaimer: While every effort has been made to ensure the accuracy of this publication, it is not intended to provide legal advice as individual situations will differ and should be discussed with an expert and/or lawyer. For specific technical or legal advice on the information provided and related topics, please contact the author.