The use of the trademark in the course of the trade is a sine qua non issue in the trademark law, which plays the pivotal role in determining and ascertaining rights of the proprietor. Even if the long continuous use of the descriptive mark makes it distinctive and to be a registrable mark under the purview of the trademark law. Generally, the registration of the trademark confers the exclusive rights upon the owner to use the mark and thus, the owner can file the suit for infringement of the trademark. Without the registration of the trademark, the owner cannot file the suit for infringement of the trademark. The unregistered trademark can be protected by the common law principle, passing off for continuous long use of the trademark, which may prevent the registration of the trademark. Conversely, non-use of the trademark ceases the registration of the trademark.
Cancellation of the registration of the trademark.
Section 42 of the Trademark Act, 2009 (TM Act, 2009) states the effect of non-use of the trademark. The registered trademark may be removed from the Register on the ground of the registration of the trademark without bonafide intention and not bonafide use of the trademark a month before filing of the application or bonafide non-use of the trademark for a continuous period of 5 (five) years or longer period.
Filing an application before the High Court Division or the Tribunal.
An aggrieved person on the above-mentioned ground(s) can file an application either before the High Court Division of the Supreme Court of Bangladesh or the Director General (DG), particularly the Tribunal to remove the registration of the trademark from the Register (section 42(1) of TM Act, 2009).
The tribunal shall refuse the application on the ground that (a) the applicant has been permitted under section 10 of the TM Act, 2009 to register an identical or nearly resembling trademark in respect of the goods or services; or (b) where the Tribunal is of opinion that there has been, before the relevant date or during the relevant period, bona-fide use of the trademark by any proprietor thereof for the time being in relation to goods or services.
Filing the application in the High Court Division or the DG, the Tribunal may impose on the registration such limitations as it thinks proper for securing that registration shall cease to extend to such use in cases where⎯ (a) circumstances exist in relation to goods or services, as the case may be, to be sold, or otherwise traded in, in a particular place in Bangladesh, or in relation to goods or services, as the case may be, to be exported to a particular market outside Bangladesh, that there has been no bona fide use of the trademark for 5 (five) years or more after registration by any proprietor thereof; or (b) more than one person have been permitted under section 10 of the TM Act, 2009 to register an identical or nearly resembling trademark in respect of identical goods or services, as the case may be, to be sold, or otherwise traded in, or to be exported.
An applicant shall not be entitled to rely on any non-use of a trademark, which⎯ (a) is shown to have been due to special circumstances; and (b) is not to any intention to abandon the business or not to use the trademarks.
TRIPS agreement and provision for non-use of the trademark.
Article 19 of Trade-Related Aspects of Intellectual Property Rights (TRIPS) provides the provision for non-use of the registration of the trademark and the effect of it. At least the continuous three years of non-use of the trademark is the valid ground for cancellation of the registration of the trademark unless the real reasons for obstacles to use the mark are shown by the trademark owner. Further, Article 19 of TRIPS agreement explores what constitutes the obstacle to the use of the trademark- such as import restrictions on or other government requirements for goods or services protected by the trademark and such obstacles shall be considered to be the valid reasons for non-use. The use of the trademark by another person under the control of the owner is to be treated as the use of the trademark.
In Bangladesh, in purview of the section 42 of the TM Act, 2009, the registration of the trademark may be cancelled on the reasons of registration without bonafide intention and bonafide non-use of the trademark for a continuous period of 5 (five) years or longer period. Though the TM Act, 2009 does not provides the provision for showing cause by the trademark owner for non-use of the trademark, Article 19 of TRIPS agreement explores the obstacles to the use of the trademark. Thus, High Court Division or the Tribunal can adopt the interpretation from the Article 19 of the TRIPS agreement avoiding any impediments for the non-use of the trademark.
