Protection of Intellectual Property through Trademarks
Intellectual property (IP) has been regarded as a significant concept over the past few decades, for being an important tool for boosting marketing strategies for companies, enhancing value addition and competitiveness of its products in the market.
Along with the growth of its relevance, awareness of IP has also grown positively, although the notion of IP is still quite new for many. In simple terms, IP refers to the creation of the human intellect, such as literary and artistic works, designs, symbols, names and images used in businesses.
Protection of IP is provided legally, through patents, designs, copyrights and trademarks, and such protection allows people to acquire recognition, pecuniary benefits, etc. from their intellectual creations.
An efficient IP system has massive advantages for a country, namely acting as a catalyst for its economic growth, creating job opportunities and enhancing the quality of life. It thus assists in establishing a balance between the innovator's interests and the public interest at large, providing an environment where creativity and inventions can prosper for the welfare of all.
As aforesaid, one of the ways of protection of IP is through trademarks.
A trademark refers to a sign or symbol capable of distinguishing the goods or services of one business from the other. There are various types of trademarks, such as wordmark, logo, colour mark, shape mark and sound mark. In Bangladesh, registration, protection and actions for infringement of trademarks are governed in the manner laid down in the Trademarks Act 2009 (TA 2009) and the Department of Patents, Designs and Trademarks (DPDT) under the Ministry of Industries of the Government of the People's Republic of Bangladesh administers all functions relating to trademarks, including their registration.
Under TA 2009, for a trademark to be registered, it must be unique and capable of being distinguishable from other marks that have already been registered. Moreover, where the mark is distinctive but is generic or descriptive of the goods or services, the said mark would not be registrable. Hence, for example, if a person creates a mark with the 'Orange' for selling oranges, such marks will not be registrable under TA 2009. Thus, it is imperative that when going for trademark registration, persons/businesses create marks which are not descriptive and are unique, not having any chance of deceiving consumers in any manner.
Any person/organization may apply for registration of a trademark in the prescribed manner, claiming to be the proprietor of a trademark already in use or proposed to be used in Bangladesh. However, before applying for a trademark, the applicant should search for availability of trademark to ensure whether the said mark is already in use or has been registered by someone else. Provided the mark is not taken, the applicant can proceed with the filing of the application. They must submit the prescribed form, including the wordmark, logo or device, along with its description, name, address and nationality of the applicant, specification of goods/services and class and date of use of the mark (i.e. whether the mark is in use or proposed to be used).
A Power of Authority (POA) also has been filed and all these shall be accompanied by prescribed fees for application. After filing the application, the Registrar may accept or reject or order to correct or modify the application.
After receiving the application, the Registrar will examine the mark on aspects of its distinctiveness and general compliance with the requirements laid down in the law. Where the application satisfies all the requirements and gets acceptance, the mark will be advertised in the Trade Marks Journal and the applicant will have to pay the prescribed journal fees. Where the Registrar objects as to the said mark, it will notify the applicant, seeking a written reply regarding the objections raised.
Failure to reply to the objections within the prescribed period results in the application being abandoned.
When a trademark is advertised in the Journal, any person may give notice of opposition to the Registrar in Form TM-5 within 2 months from the date of publication in the Journal. If no opposition is received at the expiry of the opposition period or if such opposition is decided and resolved in favour of the applicant, a Certificate of Registration for the trademark will be issued on payment of the prescribed fee.
On the registration of a trademark, the Registrar will issue a certificate of registration to the applicant in the prescribed form, containing the seal of the Trademarks Registry. A registered trademark is valid for an initial period of seven 7 years and maybe renewed for 10 years from the date of expiration of the original registration or, as the case may be, of the last renewal of registration.
Apart from the exclusive right to the use of the trademark concerning the goods or services, the registered proprietor of a trademark also possesses the power to assign the trademark, and to give effectual receipts for any consideration for such assignment. Further, where the rights of a registered proprietor are infringed, s/he can commence legal proceedings before the District Court, seeking relief.
The relief may be obtained in the form of an injunction and at the option of the plaintiff, either damages or an account of profits, together with/without any order for the delivery of the infringing labels and marks for destruction or erasure.
Barrister Atmaja Bhattacharjee Swarna is Associate at Legal Counsel
Law Column is authored by the associates of Legal Counsel which is one of the leading full-service corporate law chambers of Bangladesh having core expertise in corporate and commercial law, employment and labour law, family law, property law, corporate taxation and so forth. (www.legalcounselbd.com or email at [email protected])