Md. Jumon Ali
Trademark and Patent Attorney in Bangladesh
1. Introduction.
When the trademark acquires the reputation or goodwill over the country or transborder reputation in the relevant sector of the public, the trademark turns into the well-known trademark which is protected irrespective of registered or unregistered mark in goods or services. The Trademark Act, 2009 (TMA, 2009) explores the provisions only for determining the well-known mark in Bangladesh but both the TMA, 2009 and Trademark Rules, 2015 (TMR, 2015) do not define the well-known mark specifically and state what procedure is to be followed for determining the well-known mark in Bangladesh. This paper explores the position of determining the well-known mark in Bangladesh in light of the international IP conventions and international practice.
2.1. Well-known mark and factors to be considered for determination of the well-known mark in Bangladesh.
TMA, 2009 does not expressly define the well-known mark in Bangladesh rather section 10(6) of TM Act, 2009 states the criteria as to when a mark is to be determined the well-known mark in Bangladesh. Thus, in determining whether a mark is well known, the knowledge of the mark in the relevant sector of the public, including knowledge which has been obtained in Bangladesh as a result of the promotions of the mark, shall be taken into account. What procedure is to be followed is not stated in the TM, 2009 or TMR, 2015. However, the Registrar is allowed to refuse the mark resembling with the well-known mark on the absolute ground for refusal.
2.2. Protection of well-known mark in Bangladesh.
Section 43(1) of TMA, 2009 states that where a trademark comprising of innovative words using in goods or services turns into a well-known mark and registered for goods or services, it creates confusion for using the mark in other goods or services as to whether it has a connection with the former mark. Thus, the owner of first goods or services not using or proposing to not use the mark can be registered as the owner of the well-known mark despite of having no use of the mark within 5 years and similar goods or services will not be canceled from the Register. Accordingly, the well-known trademark can be registered as a defensive trademark despite of having earlier registration of the trademark in any other way (section 43(2) of TMA, 2009). The High Court Division has the jurisdiction to cancel the defensive mark on the application of the aggrieved person if it does not pass the test of the defensive mark and create confusion when it is used in other goods or services. Moreover, the well-known mark can be protected through the common law principle of passing off as stated in section 24(2) of TMA, 2009 and the suit is instituted under section 96(d) of TMA, 2009. Thus, the remedy is the injunction and compensation or profit on prayed by the plaintiff.
2.3. Protection Mechanism of the well-known mark in Bangladesh.
The procedure for registration of the trademark is applied for registration of the defensive mark in Bangladesh (Rule 28 of TMR, 2015). In addition, the statements of arguments for being a well-known mark and describing grounds in the form of an affidavit for filing the application are to be submitted with the prescribed application (Rule 29 of TMR, 2015). The applicant may submit the necessary evidence himself or on the demand of the Registrar.
3. Well-known trademark and Determination of the Well-known trademark in India.
Section 2(1)(zg) of the Trademark Act, 1999 (TMA, 1999) in India defines the well-known trademark that a mark used in goods or services becomes well-known in the substantial segment of the public and when the mark is used in other goods or services, it creates confusion that former goods/services has relation with later goods or services. Section 11 of TMA, 1999 provides provisions for determining the well-known mark in India and incorporates the provisions of Article 6bis of TRIPS agreement, and Article 2(1)(b), Article 2(2)(a) and 2(3)(a) of Joint Recommendation. Section 11(10) debars to register the mark which is identical with or similar to the well-known mark and states to take into consideration of the bad faith in respect of the registration and opposition case. However, TMA, 1999 does not affect the validity of the mark registered in good faith before the commencement of TMA, 1999 despite the mark being identical with or similar to the well-known mark (section 11(11) of TMA, 1999). Rule 124 of the Trademark Rules, 2017 (TMR, 2017) and General Guidelines, 2017 provide the procedure for the determination of well-known mark in India. Thus, the application can be filed with the necessary documents. After examination, the office will publish the details of the trademark for inclusion in the list of well-known mark. The objection can be filed within 30 days. After determining the well-known mark, the same shall be published in the trademark journal and included in the list of well-known mark (Rule 124(5) of TMR, 2017). However, giving an opportunity of being heard, the well-known mark can be removed at any time from the list of the well-known mark on the grounds of erroneous or inadvertent inclusion or no justification for inclusion (Rule 124 (6) of TMR, 2017).
4. International Provisions concerning well-known mark.
4.1 Paris Convention.
Article 6bis of the Paris Convention for the Protection of the Industrial Property, 1883 (Paris Convention) provides the protection of the well-known mark. Article 6bis (1) of the Paris Convention provides the provisions for, with permission of legislation, refusing or canceling the registration of the mark and prohibition of the use of the mark causing of a reproduction, an imitation, or a translation that creates confusion or use to be well known in that country because of entitling the benefits under the convention and used for identical or similar goods. This Article also sets out the limitation for requesting to cancel the registration within at least 5 years from the date of the registration but no fixed time limit is provided for cancelation or prohibition of the mark registered or used in bad faith.
4.2. TRIPS agreement.
Article 16 (2) and (3) of the TRIPS agreement broadened the scope of Article 6bis of the Paris Convention incorporating the provision for application of services in Article 6bis of the Paris Convention as the Article 6bis is only applicable for the identical or similar goods. Thus, the Article 6bis is applicable for both goods and services which are not similar to those in respect of which a trademark is registered. In determining the well-known mark, the knowledge of the trademark in the relevant sector of the public, including knowledge obtained as a result of the promotion of the trademark is to be taken account.
4.4. WIPO Joint Recommendation for the protection of the well-known mark.
The World Intellectual Property Organization (WIPO) made Joint Recommendation. Article 2(1)(b) of the Joint Recommendation provides what factors (these are not exhaustive) are to be considered for determining the well-known mark: the degree of knowledge or recognition of the mark in the relevant sector of the public; the duration and extent use the duration, extent and geographical area of any use of the mark; the duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies; the duration and geographical area of any registrations, and/or any applications for registration, of the mark, to the extent that they reflect use or recognition of the mark; the record of successful enforcement of rights in the mark, in particular, the extent to which the mark was recognized as well known by competent authorities; the value associated with the mark. Article 2(2)(b) of the Joint Recommendation contains that when a trademark is considered to be well-known towards one relevant sector of the public in a member State, this mark shall be considered as well known to the whole territory of that State. For determining the well-known mark, the competent authority of the state may consider any other factors.
5. Way forward.
Way forwards are the following:
i. defining and incorporating provisions of the well-known mark in TMA, 2009 in compliance with Joint Recommendation;
ii. making rules and issuing guidelines providing the procedure for the determination and protection of the well-known mark in Bangladesh; and
iii. developing and maintaining the well-known mark database.
6. Conclusion.
In Bangladesh, TMA, 2009 only explains provisions for determining the well-known mark, which does not completely insert the provisions of well-known mark stating Joint Recommendation but India has specifically made the substantive and procedural provisions of well-known mark complying with international obligations for registration of the well-known mark. Some jurisdictions are developing and maintaining the well-known mark database through practice or case law. Thus, Bangladesh is to make the rules and guidelines for the protection of the well-known mark in Bangladesh, specifically in the light of the way forward.
