Category Archives: Bangladesh

World IP Day celebrated by BIPF

In celebration of World Intellectual Property Day, Bangladesh IP Forum (BIPF) held a boot camp, “Volunteer for Intellectual Property” (VIP), on May 2, 2017 at the Nabab Nawab Ali Chowdhury Senate Bhaban of University of Dhaka to raise awareness on the importance of intellectual property rights (IPR).

On the fourth year this preparation has been held, 300 college students and youthful business people were prepared on fundamental intellectual property (IP) issues, for example, copyright, trademark, patent and designs, with the aim to develop attention to the significance of intellectual property rights (IPR). Manzurur Rahman, Additional Secretary, Ministry of Information, called for attention to the requirement for IP mindfulness so that no other Bangladeshi needs to meet an indistinguishable destiny as the late Lucky Akhand, and included that one ought to look for legitimate help for one’s intangible property the way one would for tangible property. Barrister ABM Hamidul Mishbah, Founder of Bangladesh IP Forum, highlighted the significance of IP mindfulness in the flourishing “idea market”, where even youthful youngsters are making recreations.

Speakers at the event included Ministry of Information Additional Secretary Md Manzurur Rahman; Bangladesh Copyright and IP Forum founder Barrister ABM Hamidul Mishbah; Bangladesh Association of Software and Information Services President Mustafa Jabbar; Copyright Office Registrar Jafor R Chowdhury; Director of Access to Information (A2i) Programme under Prime Minister’s Office Md Mustafizur Rahman; Kazi Food Industries Ltd CEO Tanvir Haider Chaudhury; Dr Nuzhat Chowdhury of Bangabandhu Sheikh Mujib Medical University; filmmaker Asif Munier; and Unmad Editor Ahsan Habib.

Other speakers were Director of Leveraging ICT under ICT Division Sami Ahmed; Bangladesh Organisation for Learning & Development Founder President Quazi M Ahmed; former CEO of IBM Bangladesh and stand-up comedian Naveed Mahbub; Dhaka University Assistant Professor Arif Jamil; Aamra Networks Ltd Head of Marketing Solaiman Shukhon; Gweebarra Bakery Industry Ltd Director Quaseed Abd-Allah Chowdhury, and Bangladesh Innovation Forum Founder Ariful Hasan Opu.

The event was inaugurated by Her Excellence Leoni Cuelenaere, Honourable Ambassador of the Kingdom of Netherlands in Bangladesh. The closing ceremony was presided over by Programme Director of A2i Kabir Bin Anwar, who presented the certificates to the participants.

Upon completion of the training, the volunteers are presently anticipated that they would spread IP mindfulness and go about as ministers of IPR in their groups and systems.

The VIP 2017 event was sponsored by Bellissimo Ice Cream, Kazi Food Kitchen, Microsoft, and Gweebarra Bakery Industry Ltd.

Author: Abin T Sam, Jr.Patent Associate at Khurana & Khurana Advocates and IP Attorneys.

Bangladesh puts to motion GI Registration for Comilla delicacy Rasmalai, textile Khadi

The process to get Geographic Indication (GI) registration of two famous Bangladeshi products, Comilla’s dessert Rasmalai and textile Khadi, has started. Comilla Deputy Commissioner Jahangir Alam has said the district administration has chosen the products and started to find their original producer. “We have started discussions with the producers,” he told bdnews24.com on February 14th.

According to the World Intellectual Property Organization, a Geographical Indication (GI) is a sign used on products that have a particular geographic origin, possess, qualities or a reputation that are due to that origin. GI indication of goods acts as the “claim to fame” for a state. The members of the World Trade Organization signed the Trade-Related Aspects of Intellectual Property Rights (TRIPS) agreement in 1994. The TRIPS agreement introduced intellectual property law into the international trading system for the first time and remains the most comprehensive international agreement on intellectual property to date.

Though TRIPS requires WTO members to provide copyright rights, including that related to GI, Bangladesh made the GI law – the Geographical Indicative Products (Registration and Protection) Act – in 2013. A GI policy was formulated in line with the law after another two years. Later, measures were taken to protect the ownership of traditional ‘Jamdani’ saree’s intellectual property. Now the steps have been extended to ‘Rasmalai’ and ‘Khadi’.

A letter from Assistant Commissioner Merina Sultana at the Comilla DC’s office has been issued, announcing the decision to have the two products as geographically indicative ones. ‘Rasmalai’ maker Matri Bhandar and ‘Khadi’ manufacturers were called to the DC’s office to discuss the matter on 13th February.

Brothers Khanindra Sen and Manindra Sen opened the sweets shop Matri Bhandar in Comilla’s Monoharpur in 1930. Now their descendants run the main shop, though shops with similar names are aplenty in the district. Many of the locals believe this shop is the origin of ‘Rasmalai’.

Comilla traditionally produces ‘Khadi’, a textile which was being exported along with world famous ‘Muslin’. Comilla’s Chandina is one of the places famous for handspun and hand-woven ‘Khadi’ or ‘Khaddar’ for a long time. The product became a symbol of the Swadeshi Movement during the British rule of the undivided India to boycott foreign products. A handloom used by Mahatma Gandhi is still there. Many weavers are now involved in the production of ‘Khadi’. Asked how the original producer will be determined from them, a district administration official told bdnews24.com: “The oldest ‘Khadi’ manufacturers are in Chandina. We are scrutinising them.”

DPDT Sub-Registrar (Patent and Design) Saidur Rahman has said the process to register Hilsha and several other products were under way. He told bdnews24.com that the DCs across Bangladesh are finding their corresponding districts’ products following Prime Minister Sheikh Hasina’s order.

A DPDT official, requesting anonymity, said the department would issue the registration for ‘Rasmalai’ and ‘Khadi’ after checking the products to be sent by Comilla district administration. He also said Netrokona’s ‘Sadamati’, Kataribhog’ and ‘Kalijira’ rice, Rajshahi’s mango, and several other products were also being scrutinised for GI registration.

The Department of Patents, Designs and Trademarks (DPDT) is the authority tasked with issuing GI registration.

Following an application from Bangladesh Small and Cottage Industries Corporation (BSCIC), ‘Jamdani’ saree became the first product to get GI registration in November last year.

Author: Abin T Sam, Jr.Patent Associate at Khurana & Khurana Advocates and IP Attorneys.

Trademark Law Bangladesh: An Abridgment

Bangladesh is a signatory to the Trade Related Aspects of Intellectual Property Rights (TRIPS) Agreement under the World Trade Organization (WTO), which came into force in 1995. TRIPS aim at harmonizing the intellectual property laws with most of the world. Hence, all the signatories of the agreement have a uniform IP law subject to minor modifications as allowed by the agreement. Bangladesh being in its transitional period complies with TRIPS to a larger extent (not fully compliant with international IP regime) and still in its process of harmonizing with TRIPS policy. Let’s take a sneak peek into the functionality of IP laws in Bangladesh in relation to the various sections prominently referred to from The Trademark Act, 2009:

The Trademarks Act, 2009:

Meaning of Trademark:

A trademark is any symbol, word, number, phrase, design, or any combination thereof which is used to identify the source of goods or services. The Trademarks Act, 2009 defines the term in Section 2(8). It provides for the following classification of marks:

  • Registered Trademark
  • Mark
  • Certification Trademark

A trademark is:

  • a registered trademark or a mark used in relation to goods so as to indicate a connection in the course of trade between the goods and the person having the right as proprietor to use the mark;
  • a mark used in relation to a service so that it leads to the indication that the person has the right to use the mark in the course of trade as a proprietor;
  • a mark used or proposed to be used (in future) in relation to any service or goods indicating a connection, between the goods and the person having the right, either as proprietor or as registered user (permitted user), to use the mark.

A trademark is generally used to identify the source for goods or services. Bangladesh has adopted the 9th Edition of NICE classification of goods and services. Hence, there are total 45 classes of goods and services, out of which 1-34 are goods, and 35-45 are services.

Procedure for Registration:

There are various steps involved in the procedure for registration:

Step 1: FILING OF APPLICATION – SECTION 15

  • Any person claiming to be the proprietor can file an application for registration of a mark used or proposed to be used.
  • The person(s) shall file separate application for each class of goods or services.
  • The application must be filed at the Head office or any branch of the Trademark Registry having territorial jurisdiction over the principal place of business. If the person does not carry on business in Bangladesh, the application must be filed in the office having territorial jurisdiction over the place mentioned in the address for service in Bangladesh.
  • Requirements:
  • Name of the Applicant(s)
  • Address and Nationality
  • Specification of goods
  • Fees: 3500 taka
  • Form- “TM-1”.

Step 2: ACCEPTANCE – SECTION 15

  • The Registrar may accept the application absolutely and go ahead with further process.
  • He may refuse to accept the application recording the grounds of refusal.
  • He may conditionally accept the application, i.e. subject to amendments, modifications, conditions or limitations.

Step 3: ADVERTISEMENT – SECTION 17

  • After the conditional or absolute acceptance of the application, the Registrar may advertise the application in the prescribed manner along with the prescribed fees.
  • If there are any corrections in the application under Section 19, it will be advertised again after such correction to the satisfaction of the Registrar.
  • Form- “TM-9”
  • Fees- 1000 taka.

Step 4: OPPOSITION – SECTION 18

  • Within 2 months from the date of advertisement of the application, any person may oppose the same by serving due notice to the Registrar via form TM-5 along with the prescribed fees (2000 taka).
  • He shall, within 1 month from the date of receipt of the notice, serve a copy of the same to the applicant.
  • Thereafter, the applicant shall file a counter within 2 months from the date of receipt of such notice to him via form TM-6 and the prescribed fees (1500 taka). If a counter is not filed, the application shall be deemed to have been abandoned.
  • The Registrar shall serve a copy of such counter to the opponent.
  • All the evidences upon which the applicant and opponent rely shall be submitted in the prescribed time and manner to the Registrar, and they shall be granted an opportunity of being heard if so desired upon application via form TM-7 or TM-23 along with prescribed fees (1000 taka).
  • The Registrar, after following due process of opposition shall decide whether to accept, conditionally accept, or reject the application.
  • Notwithstanding anything contained in the Act, the opposition proceedings must be wound up/ concluded in 120 working days.

Step 5: REGISTRATION – SECTION 20

  • If the application is accepted or not opposed or the notice period of opposition has expired, or it has been opposed and the decision is in favour of the applicant, the trademark shall be registered by the Registrar.
  • The applicant shall be issued a certificate of registration with the seal of the trademark registry.
  • Such certificate shall be issued within 150 working days from the date of filing of application.
  • The duration of the trademark shall be of 7 years, and can be renewed by paying the prescribed fees, from time to time.
  • The Registrar may renew the registration of the trademark for 10 years from the date of expiration of original registration or the last renewed registration on application by the applicant.

It takes around 24-36 months to get a trademark registered in Bangladesh in a smooth case.

Workflow:

1

Rights conferred by Registration:

Registration of a trademark confers the following rights under Section 25:

  • Exclusive right to use the trademark in relation to those goods and services for which it has been registered.
  • Obtain relief against infringement of the same in accordance with the Act.

It also provides that no person except the registered proprietor/ owner of the trademark shall use the same in respect of the goods and services for which it is registered under the Act, without the consent of the registered owner.

The Act, just like Indian law, also incorporates the common law remedy of “Passing Off’ in its Section 24. It provides that no infringement action be instituted for an unregistered Trade Mark. Secondly, nothing in the Act shall be deemed to affect the right of action against any person for passing off goods or services of another person and any other related remedies.

Infringement:

Section 26 deals with the Infringement of Trademarks. Usage by a person other than a registered proprietor of the identical or similar trademarks, the Trade Mark deemed to be infringed. On the other hand, Section 27 deals with the acts that do not amount to infringement. Lawful user, permitted use, etc. are provided in the section.

Assignment and Transmission:

The Act, in Chapter V, comprehensively provides for assignment and transmission of a registered trademark by the registered proprietor, with or without the goodwill (Section 34).  An unregistered trademark shall not be assignable or transmissible except along with the goodwill of the business concerned (Sec 35) under certain circumstances provided in the same section, it can be assigned or transmitted without the goodwill. Moreover, Section 38 incorporates assignment and transmission otherwise than in connection with the goodwill with conditions of fulfillment attached.

Offences and Penalty:

Section 71 firstly discloses the meaning of applying trademarks and trade descriptions, and secondly Section 72 mentions the circumstances when the Trade Marks are falsified or falsely applied. The penalties under the Act are as under:

  • Section 73: Penalty for falsifying or falsely applying Trademark: Imprisonment may extend to 2 years, but not less than 6 months, and/or fine which may extend to 2 lac taka, but not less than 50 thousand taka. For a second or subsequent conviction, the imprisonment would range from a minimum of 1 year to 3 years, and/or fine extendable up to 3 lac taka, but not less than 1 lac taka.
  • Section 74: Penalty for selling goods to which a false trademark or trade description is applied: Imprisonment for a term up to 2 years, and/or fine. For a second or subsequent conviction, imprisonment for a term up to 3 years, and/or fine.
  • Section 76: Penalty for falsely representing a trademark as registered: Imprisonment for a term up to 1 year, but not less than 6 months, and/or fine up to 1 lac, but not less than 50 thousand taka.
  • Section 77: Penalty of improperly describing a place of business as connected with the Trademarks office: Imprisonment for a term which may extend to 1 year but not less than 6 months, and/or with fine which may extend to 1 lac taka but not less than 50 thousand taka.
  • Section 78: Penalty for falsification of entries in the Register: Imprisonment for a term which may extend to 1 year but not less than 6 months, and/or fine, which may extend to taka 1 lac (84,600 INR approx.) but not less than 50 thousand taka.