Bangladesh pairs a modern infringement section with an old-fashioned limit on monetary relief. Section 26 catches confusion, association and reputation-based harm. Section 97 then takes damages and accounts away from you where the defendant did not know and stopped once they did.
The practical consequence is simple: in Bangladesh, the date you put the defendant on notice is the date your damages claim starts.
Quick reference
| Unregistered marks | No infringement action — but passing off is preserved |
| Identical mark, identical goods | Infringement |
| Identical or similar mark, similar goods | Infringement where there is a likelihood of confusion, including association |
| Dissimilar goods | Infringement where the mark has a reputation in Bangladesh and use takes unfair advantage of or is detrimental to it |
| Registered well-known marks | A separate limb, covering dissimilar goods |
| Forum | Not inferior to a District Court |
| Reliefs | Injunction, and either damages or an account of profits, with or without delivery up |
| Innocent infringer | No damages or account where the defendant was unaware and stopped on learning |
Registration is the gateway
Section 24(1) is the old rule and it is unqualified: 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) preserves the alternative: nothing in the Act affects rights of action against any person for passing off goods or services as those of another, or the remedies for it. See passing off in Bangladesh.
So the question of whether you have a registration decides which claim you are bringing, not whether you have one.
What infringement covers
Section 26 sets out several limbs.
Section 26(2) — the core. A registered mark is infringed by a person who, not being the proprietor or a registered user, uses in the course of trade a mark which is:
- identical with the trademark and used for goods or services similar to those registered;
- similar to the trademark and used for goods or services identical with or similar to those registered; or
- identical with the trademark and used for goods or services identical with those registered,
and for this reason there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trademark.
Section 26(3) — reputation. Infringement also occurs where the mark used is identical with or similar to the trademark, used for goods or services not similar to those registered, and the trademark has a reputation in Bangladesh and the use, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trademark.
Section 26(7) — registered well-known marks. A separate limb for a well-known mark which is registered, covering use on identical or similar goods, and use on dissimilar goods where it would indicate a connection with the owner and the owner’s interests are likely to be damaged.
What counts as “use”
Section 26(4) defines it, and the list is broad:
- affixing the mark to goods or their packaging;
- offering or exposing goods for sale, putting them on the market or stocking them for those purposes under the mark, or offering or supplying services under the mark;
- importing or exporting goods under the mark; and
- using the mark on business papers or in advertising.
Import and export are both squarely within it, which matters in a manufacturing economy.
Materials for labelling and packaging. Section 26(5) treats a person who applies the mark to material intended for labelling, packaging, business papers or advertising as an infringer, where at the time of applying it they knew or had reason to believe that the application was not duly authorised. That reaches printers and packaging suppliers, on a knowledge test.
Honest practices, and referential use
Section 26(6) protects use of the registered mark for the purpose of identifying goods or services as those of the proprietor or an authorised user.
But that protection is conditional. Use otherwise than in accordance with honest practices in industrial or commercial matters is treated as infringing, where the use without due cause takes unfair advantage of, or is detrimental to, the distinctive character or repute of the trademark.
So referential use — a repairer, a reseller, a comparative advertisement — is permitted if it is honest, and becomes infringement if it is not. The dividing line is the same unfair-advantage test that governs the dilution limb.
Section 27 adds the further acts that do not constitute infringement, alongside the savings in sections 30 to 32 for vested rights, for use of a person’s own name, address or description of goods, and for words that are the name or description of an article.
The reliefs
Section 97(1): the relief a Court may grant in a suit for infringement or passing off includes an injunction and, at the option of the plaintiff, 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.
Note the election. Damages and an account are alternatives, and the choice is the plaintiff’s.
The innocent infringer rule
Section 97(2) is the provision that shapes strategy, and it has three limbs.
No damages or account for certification marks. Where the infringement complained of relates to a certification trademark, monetary relief is not granted.
No damages or account against an innocent infringer. The Court shall not grant damages or an account 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 mark was on the register, or that the plaintiff was a registered user using by way of permitted use; and
- that when he became aware of the existence and nature of the plaintiff’s right, he forthwith ceased to use the mark.
The same for passing off, on the equivalent terms — unaware that the plaintiff’s mark was in use, and ceased forthwith on becoming aware.
Both limbs have to be satisfied, so a defendant who continues after notice loses the defence entirely. That is exactly why the notice matters.
What that means in practice
Three consequences worth building into how a Bangladeshi matter is run.
Put the defendant on notice early and provably. A dated letter establishing the existence and nature of your right is what converts a potentially innocent infringer into one with no answer on damages. Delay in writing is delay in the damages claim starting.
Keep the registration visible. The first limb turns on whether the defendant had reasonable ground for believing the mark was on the register. Marking, published registrations and a visible market presence all make ignorance harder to assert.
Injunctions are unaffected. The innocent infringer rule limits damages and accounts, not injunctive relief or delivery up. A defendant who stopped on notice has avoided the money, not the order.
Where to sue
Section 96: no suit for infringement of a registered mark, relating to any right in a registered mark, relating to any corrected right in a registered mark, or for passing off arising out of the defendant’s use of a mark identical with or deceptively similar to the plaintiff’s — whether registered or unregistered — shall be instituted in any court inferior to a District Court having jurisdiction.
Note that passing off is expressly within section 96, so the forum rule is the same whether or not you hold a registration.
Validity is elsewhere. Section 98 provides that where in an infringement suit the defendant questions the validity of the plaintiff’s registration, and the plaintiff questions the validity of the defendant’s, the validity issue shall be determined only on an application for rectification, and such an application shall be made to the High Court Division. Section 102 provides for a stay of the suit where validity is in issue.
So an infringement suit and a validity fight run in different places, and a defendant with a credible invalidity case can move the centre of gravity.
Criminal and border measures
The Act carries a full set of offences — falsifying and falsely applying trademarks, applying false trademarks and trade descriptions, selling goods bearing them, falsely representing a mark as registered, falsification of entries in the register — with forfeiture of goods on conviction, provisions for offences by companies, and a limitation on prosecutions.
Section 109 provides a power to require information in respect of imported goods, which is the hook for border intervention.
Before you write the letter
- Check your registration is safe. A defendant will look at non-use under section 42 and rectification under section 51, both of which can be taken to the High Court Division.
- Check the term. Bangladeshi first terms are seven years from the application date. An expired registration is not a base for a suit. See renewal and restoration.
- Write it anyway, and early. The innocent infringer rule makes the notice the most valuable document in the file.
Frequently asked questions
Can I sue for infringement without a registration in Bangladesh? No. Section 24(1) bars any proceeding to prevent or recover damages for infringement of an unregistered mark. Passing off remains available.
Does Bangladesh protect against dilution? Yes. Section 26(3) covers use on dissimilar goods where the mark has a reputation in Bangladesh and the use without due cause takes unfair advantage of, or is detrimental to, its distinctive character or repute.
Can I claim both damages and an account of profits? No. The Act gives the plaintiff the option of either damages or an account of profits, not both.
What is the innocent infringer rule? A defendant who was unaware and had no reasonable ground for believing the mark was registered, and who stopped as soon as they became aware of the right, cannot be ordered to pay damages or an account. An injunction and delivery up remain available.
Where do I bring an infringement suit? In a court not inferior to a District Court. The same applies to passing off. A challenge to the validity of a registration goes to the High Court Division as a rectification application.
Is referential use of my mark allowed? Use to identify goods or services as the proprietor’s is permitted, but only where it accords with honest practices. Use that without due cause takes unfair advantage of or harms the mark’s distinctive character or repute is infringing.
Useful official resources
- Department of Patents, Designs and Trademarks, Bangladesh
- Trademarks Act, 2009 — sections 24 to 32, 42, 51, 72 to 79, 96 to 102, 109
- Trademarks Rules
See our related notes on passing off in Bangladesh, rectification and cancellation and well-known and defensive trademarks.
Dealing with infringement or counterfeit product in Bangladesh? Talk to us.