Our Firm provides full range of trademark services in Bangladesh, including the filing and prosecution of trademarks, service marks, three dimensional marks, certification marks, collective marks, and geographical indications; the urgent searching of word marks using the on-line data base of the Bangladesh Trade Mark Registry and petitioning to the Trade Mark Registry for searches of design and device marks; the surveillance of our clients' marks for purposes of attacking conflicting marks that are published for opposition purposes or granted; and representation of clients before the Bangladesh Trade Mark Registry concerning oppositions, administrative nullity proceedings, non-use cancellation actions, renewals, assignments, changes of name and address and licensing.
For more than 40 years, we have defended our clients' interests in all over Bangladesh in litigation involving intellectual property and other areas of law, including entertainment, unfair competition, false advertising, and consumer protection. Our Litigation Section provides legal consultation and advice; drafts contracts, opinions, and strategic legal analyses; negotiates out-of-court settlements; and litigates forcefully at the Patent, Design Trade Mark Registry of Bangladesh and other government agencies and in various courts. The firm's extensive experience in judicial litigation enables it to defend its clients' IP rights against infringement; seek damages for infringement; enforce IP-related contractual obligations; and secure rights which have been unduly denied by any authority of Bangladesh or improperly secured by third parties.
Unfair competition is defined by various Bangladeshi legislations, in general terms, as any act designed to unlawfully deviate a competitor's clientele, or to lead consumers into error, mistake or undue association between companies and products. The prohibited association is normally caused by the use of similar or even identical distinctive features in products, packages, labels and establishments.Unfair competition is repressed by the law both through civil and criminal actions. The firm is prepared to assist you in identifying cases of unfair competition and in obtaining effective remedies against unfair competition, either through pre-litigation or litigation measures.
Our possesses market leading capabilities in the fields of IP Enforcement. It represents clients against counterfeiting, passing off and infringements before all tribunals including the Trademark Tribunal, Patent Tribunals, all district courts, High Court and Appellate division of Supreme Court. It has vast knowledge on various international and specialized protections available to well known marks, trade-names and maintains extensive research materials specially with respect to local and international Intellectual Property law publications. The firm offers market leading enforcement services in mass-scale infringement and passing off matters though multi-party and multi-level class actions, administrative actions (e.g. in customs department), police raid and seizure, arbitration and judicial remedies. It maintains close relations with international bodies like WTO, ICC etc. to facilitate higher level remedies and settlements. With unparallel capabilities in IP enforcement our firm is set to represent major brands effectively to protect their intellectual property rights in Bangladesh.
MARKET SURVEY & DUE DILIGENCE
Our firm possesses extensive market survey, investigation and due diligence capabilities. It can trace the source of such counterfeit and infringed products from small markets to production factories. It also provides service with respect to company due diligence and background check for possible partnership, technology transfer or dispute settlement.
LICENSING & CONTRACTS:
Our firm has solid experience in contract law. Our professional staff includes attorneys with law degrees from, and practice experience in, both common law and civil law jurisdictions, who are consequently uniquely qualified to deal with the complex issues that arise out of international contractual relationships. We can assist you not only with the drafting of agreements in various areas of law, but also with the recordation of these agreements with the Bangladesh Patent, Design and Trade Mark Registry as necessary. Our areas of expertise include technology transfer agreements, trademark licensing, patent licensing, entertainment agreements, commercial representation agreements, software licensing agreements, franchise agreements, hotel management agreements and copyright licensing agreements. Since most of these agreements are drafted abroad, many in common law jurisdictions, they must be carefully worded in order to produce in Bangladesh results similar to those produced in the foreign party's country of origin. Because of our attorneys' experience in both common law and civil law jurisdictions, we are able to offer unique services in this particular area.
What is a trademark?
A trademark is a distinctive sign which identifies certain goods or services as those produced or provided by a specific person or enterprise. Its origin dates back to ancient times, when craftsmen reproduced their signatures, or "marks" on their artistic or utilitarian products. Over the years these marks evolved into today's system of trademark registration and protection. The system helps consumers identify and purchase a product or service because its nature and quality, indicated by its unique trademark, meets their needs.
A trademark provides protection to the owner of the mark by ensuring the exclusive right to use it to identify goods or services, or to authorize another to use it in return for payment. The period of protection varies, but a trademark can be renewed indefinitely beyond the time limit on payment of additional fees. Trademark protection is enforced by the courts, which in most systems have the authority to block trademark infringement.
In a larger sense, trademarks promote initiative and enterprise worldwide by rewarding the owners of trademarks with recognition and financial profit. Trademark protection also hinders the efforts of unfair competitors, such as counterfeiters, to use similar distinctive signs to market inferior or different products or services. The system enables people with skill and enterprise to produce and market goods and services in the fairest possible conditions, thereby facilitating international trade.
What kinds of trademarks can be registered?
The possibilities are almost limitless. Trademarks may be one or a combination of words, letters, and numerals. They may consist of drawings, symbols, three- dimensional signs such as the shape and packaging of goods, audible signs such as music or vocal sounds, fragrances, or colors used as distinguishing features.
In addition to trademarks identifying the commercial source of goods or services, several other categories of marks exist. Collective marks are owned by an association whose members use them to identify themselves with a level of quality and other requirements set by the association. Examples of such associations would be those representing accountants, engineers, or architects. Certification marks are given for compliance with defined standards, but are not confined to any membership. They may be granted to anyone who can certify that the products involved meet certain established standards. The internationally accepted "ISO 9000" quality standards are an example of such widely-recognized certifications.
How is a trademark registered?
First, an application for registration of a trademark must be filed with the appropriate national or regional trademark office. The application must contain a clear reproduction of the sign filed for registration, including any colors, forms, or three-dimensional features. The application must also contain a list of goods or services to which the sign would apply. The sign must fulfill certain conditions in order to be protected as a trademark or other type of mark. It must be distinctive, so that consumers can distinguish it as identifying a particular product, as well as from other trademarks identifying other products. It must neither mislead nor deceive customers or violate public order or morality.
Finally, the rights applied for cannot be the same as, or similar to, rights already granted to another trademark owner. This may be determined through search and examination by the national office, or by the opposition of third parties who claim similar or identical rights.
How extensive is trademark protection?
Almost all countries in the world register and protect trademarks. Each national or regional office maintains a Register of Trademarks which contains full application information on all registrations and renewals, facilitating examination, search, and potential opposition by third parties. The effects of such a registration are, however, limited to the country (or, in the case of a regional registration, countries) concerned.
In order to avoid the need to register separately with each national or regional office, WIPO administers a system of international registration of marks. This system is governed by two treaties, the Madrid Agreement Concerning the International Registration of Marks and the Madrid Protocol. A person who has a link (through nationality, domicile or establishment) with a country party to one or both of these treaties may, on the basis of a registration or application with the trademark office of that country, obtain an international registration having effect in some or all of the other countries of the Madrid Union.
Bangladesh is a signatory-party to the Convention establishing the World Intellectual Property Organization (WIPO) from January 1, 1987. In addition, Bangladesh is also a signatory-party to The Universal Copyright Convention, Berne Convention for the Protection of Literary and Artistic Works (Paris, 1971), and The Paris Convention for the Protection of Industrial Property of March 20, 1883. In Bangladesh the laws governing the Intellectual Property matters are:
A. The Patents and Designs Act, 1911;
B. The Trademarks Act, 2009; and
C. The Copyright Act, 2000.
In addition, there are several penal laws against the violations of various Intellectual Property Rights in The Penal Code as well as in The Customs Act of Bangladesh.
Moreover, Bangladesh is a party to The General Agreement of Tariffs and Trade 1994 (GATT), which includes the Chapter entitled “ Trade-Related Aspects of Intellectual Property Rights” (TRIPS) and, as such, makes her a Member of the World Trade Organization (WTO) family.
The Government of Bangladesh maintains offices of the Trademark Registry, in Dhaka and Chittagong, Patent & Design Office in Dhaka, and the Copyright Office in Dhaka at present. All the courts of District Judge in each district and the courts of Magistrates do take cases for judicial enforcement of various existing Intellectual Property laws of Bangladesh. The Supreme Court and the several courts of the High Court Division of the Supreme Court of Bangladesh hear the Intellectual Property appeal cases.
From the above it is clear that Bangladesh is marching forward to be closely associated with the process of globalization of Intellectual Property Laws. In Bangladesh lately new laws have been drafted further modifying and modernizing the laws on Patent and Design; Trademarks and Copyrights. We are pleased to say that we had been associated with the processing of the said laws which are to be introduced with wider legal protections and scopes.
Our Firm keeps constant watch on the present status and the future trends of Intellectual Property laws at home and abroad. We are associated with the country’s first incorporated Bangladesh Intellectual Property Law Society. This Society published the comprehensive book entitled Major International Laws for the Protection of Intellectual Property Rights, 1999; viii, 408 Pp. which greatly helped the Intellectual Property officials and judiciary a better understanding of the relevant international laws and Conventions and the enforcement of the same in Bangladesh.