Section 24 of the Trademarks Act does two things in two sentences. It closes the door on infringement claims for unregistered marks, and it holds another one open.
Quick reference
| Infringement of an unregistered mark | Barred — no proceeding to prevent it or recover damages |
| Passing off | Expressly preserved |
| Forum | Not inferior to a District Court, the same as infringement |
| Reliefs | Injunction, and either damages or an account of profits, with or without delivery up |
| Innocent defendant | No damages or account where unaware of the plaintiff’s use and stopped on learning of it |
| Also relevant | Bad faith as a registration bar; well-known marks; the Penal Code offences |
What section 24 says
Section 24(1): no person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trademark.
Section 24(2): nothing in the Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods or services of another person, or the remedies in respect of it.
So the statutory cause of action requires a registration. The common law one does not, and the Act leaves it untouched.
What a passing-off claim requires
The elements are the familiar common law ones: goodwill or reputation attaching to the claimant’s goods or services in Bangladesh; a misrepresentation by the defendant likely to lead the public to believe that what is offered is the claimant’s; and damage, or its likelihood.
In practice almost all of the weight is on the first. Goodwill has to be proved, and proving it is an evidential exercise — sales, advertising, distribution, press, how long and how visibly the mark has been used in Bangladesh.
That is the honest argument for registering. A certificate replaces an evidential case about reputation with a document.
Passing off is inside the forum provision
Section 96 is explicit, and it is worth noting because it is not the drafting everywhere in the region.
No suit for passing off arising out of the use by the defendant of any trademark which is identical with, or deceptively similar to, the plaintiff’s trademark, whether registered or unregistered, shall be instituted in any court inferior to a District Court having jurisdiction.
So a passing-off claim is treated for forum purposes exactly like an infringement claim, and it is contemplated by the Act rather than merely tolerated by it.
The reliefs are the same
Section 97(1) covers “a suit for infringement or passing off referred to in section 96”. The relief includes an injunction and, at the plaintiff’s option, either damages or an account of profits, together with or without an order for delivery up of infringing labels and marks for destruction or erasure.
The innocent defendant rule applies here too
Section 97(2)(c) mirrors the infringement provision. The Court shall not grant damages or an account of profits in a passing-off suit where the defendant satisfies the Court:
- that at the time he commenced to use the mark complained of he was unaware and had no reasonable ground for believing that the plaintiff’s trademark was in use; and
- that when he became aware of the existence and nature of the plaintiff’s mark, he forthwith ceased to use the mark complained of.
Note the difference from the infringement version. For infringement, the defendant’s ignorance is about the register. For passing off, it is about the plaintiff’s use — which is harder for a defendant to establish where the claimant was visibly trading, and easier where the claimant’s presence was thin.
The practical consequence is the same and it is the central one: notice starts the money. A dated letter establishing the existence and nature of your mark removes the defence for everything after it, and a defendant who continues trading after that letter cannot rely on section 97(2)(c) at all.
Injunctive relief and delivery up are unaffected by the rule.
Where unregistered rights show up elsewhere
Passing off is not the only place an unregistered position does work in Bangladesh.
Bad faith. Section 8(g) bars registration where the application is made in bad intention and faith. For a brand owner whose distributor or former partner filed first, that is a ground of opposition and a basis for rectification, and it does not require a registration of your own.
Well-known marks. Section 10(4) bars registration of a mark identical with, confusingly similar to, or a translation of a mark or trade description well known in Bangladesh for identical or similar goods of another enterprise — with no requirement that the well-known mark be registered there. Section 10(6) makes knowledge in the relevant sector of the public, including knowledge obtained through promotion in Bangladesh, the test.
That is the strongest route for an international brand with reputation but no Bangladeshi filing. See well-known and defensive trademarks.
Deception as a bar. Section 8(c) bars a mark the use of which would be likely to deceive or cause confusion, and section 8(f) bars one otherwise disentitled to protection in a court — the old equitable catch-all, which carries arguments about the applicant’s conduct.
Honest concurrent use under section 10(2) runs the other way, and is the answer where two parties have genuinely built separate positions.
Criminal provisions reach some unregistered conduct
The offence provisions in the Act are drafted around falsifying and falsely applying trademarks and applying false trade descriptions, with penalties, forfeiture of goods and provisions for offences by companies.
Those offences are not framed solely around registered marks in the way the civil infringement action is, so in a counterfeiting matter the criminal route is worth assessing separately from the state of the register.
Passing off is a remedy, not a plan
It works, and the Act plainly contemplates it. But every claim starts by proving goodwill, which is slow, expensive and contestable in a way a registration is not — and the innocent defendant rule means that even a successful claimant may recover nothing for the period before they wrote.
The sensible position is to register what matters, and keep passing off for what it is good at: the gap before registration completes, the conduct no registration would have caught, and the local party who filed first.
Frequently asked questions
Can I sue in Bangladesh without a trademark registration? Not for infringement — section 24(1) bars that. You can sue for passing off, which section 24(2) expressly preserves.
What do I have to prove in a passing-off claim? Goodwill or reputation in Bangladesh, a misrepresentation likely to deceive the public, and damage or its likelihood. The goodwill element is where most of the evidence goes.
Where is a passing-off claim brought? In a court not inferior to a District Court. Section 96 expressly covers passing off arising out of use of a mark identical with or deceptively similar to the plaintiff’s, whether registered or unregistered.
Can I recover damages for passing off? Yes, at your option either damages or an account of profits — unless the defendant shows they were unaware the mark was in use and stopped forthwith on becoming aware.
Can an unregistered mark stop someone else registering? Yes, through the bad faith bar in section 8(g), the deception bar in section 8(c), or the well-known mark grounds in section 10(4) and (5), none of which requires you to hold a Bangladeshi registration.
Does promotion without sales count for well-known status? Yes. Section 10(6) directs that knowledge of the mark in the relevant sector of the public, including knowledge obtained in Bangladesh as a result of the promotion of the mark, is taken into account.
Useful official resources
- Department of Patents, Designs and Trademarks, Bangladesh
- Trademarks Act, 2009 — sections 8, 10, 24, 72 to 79, 96, 97
- Trademarks Rules
See our related notes on trademark infringement in Bangladesh, well-known and defensive trademarks and marks that cannot be registered.
Holding goodwill in Bangladesh without a registration, or facing a claim from someone who does? Talk to us.