The short answer
Only a registered trademark can be the basis of an infringement suit in Bangladesh (section 24). Section 26 sets out when infringement happens: using an identical or deceptively similar mark in your own trade, using it for similar goods with a likelihood of confusion, or, for a mark with a reputation, using it for other goods when that takes unfair advantage or harms it. Unregistered marks are protected only through passing off. Suits go to the District Court (section 96).
The tests in section 26
| Provision | Situation | What must be shown |
|---|---|---|
| 26(1) | Use of an identical or deceptively similar mark in the course of the person's own trade | Use by someone who is not the proprietor or registered user |
| 26(2) | Identical mark on similar goods; similar mark on identical or similar goods; identical mark on identical goods | A likelihood of confusion on the part of the public, including a likelihood of association |
| 26(3) | Identical or similar mark on goods or services that are not similar | The mark has a reputation in Bangladesh and the use, without due cause, takes unfair advantage of or harms its distinctive character or repute |
| 26(7) | Use against a well-known mark that is registered | Use on similar goods; or on other goods when it would indicate a connection and damage the owner's interests |
Section 26(4) lists what counts as use: affixing the mark to goods or packaging, offering or stocking goods under it, supplying services, importing or exporting under it, and using it on business papers or in advertising. Under section 26(5) a person who applies a registered mark to labels, packaging or advertising material is treated as an infringer if they knew or had reason to believe the use was not authorised.
Acts that do not infringe
- Use outside the limits or conditions entered on the Register (section 27(1)(a)).
- Use of goods that were put on the market by the proprietor or with permission, unless the proprietor later removed the mark or consented to its use (section 27(1)(b)).
- Use of a mark for goods that form part of, or are accessories to, other goods, within an established right (section 27(1)(c)(i)).
- Use of one of two or more similar marks that are each registered, within the rights each registration gives (section 27(1)(c)(ii)).
- Resale of lawfully acquired goods, even if the mark was later assigned (section 27(2)).
- Use of your own name or place of business, or an honest description of your goods, and use that began before the proprietor's first use (sections 30 and 31).
Section 26(8) gives a defence in a suit: no injunction or relief if the defendant shows to the Court that the use is not likely to deceive or cause confusion, or does not indicate a trade connection with a person who has the right to the mark.
Where to sue and what the Court can order
File in the District Court
- Suits for infringement, for rights in a registered mark, and for passing off must be filed in a District Court or a court above it (section 96).
- Passing off is available whether the mark is registered or not (sections 24(2) and 96(d)).
Relief
- An injunction and, at the plaintiff's option, damages or an account of profits, with or without delivery up of infringing labels and marks for destruction or erasure (section 97(1)).
- No damages or account of profits where the infringement relates to a certification mark, or where the defendant was unaware of the registration and stopped as soon as they became aware (section 97(2)).
Validity fights go to the High Court Division
- When each side attacks the validity of the other's registration, that question is decided on an application for rectification, which is made to the High Court Division (section 98).
- Appeals from the Registrar lie to the High Court Division (section 100).
Criminal remedies exist as well, for falsifying marks and selling goods with false marks (sections 72 to 74). See trademark offences and penalties.
If your mark is not registered
Section 24(1) says no person may sue for infringement of an unregistered mark or claim damages for it. Section 24(2) keeps the right to sue for passing off. A passing-off claim needs evidence of reputation and of confusion, which is harder to prove than a registration certificate. Registration also gives prima facie evidence of validity (section 28) and, after seven years, becomes conclusive subject to limited grounds (section 29).
For practical steps after you find a copy, see legal remedies for trademark infringement in Bangladesh.
Trademark infringement FAQ
Can I sue for infringement with an unregistered mark in Bangladesh?
No. Section 24 allows an infringement suit only for a registered mark. You may sue for passing off.
Which court hears trademark infringement cases?
A District Court, or a court above it (section 96).
What can the Court order?
An injunction and, at the plaintiff's option, damages or an account of profits, with delivery up of infringing material (section 97).
Is selling genuine goods under the mark infringement?
Not if the goods were lawfully acquired. Resale is protected by section 27(2).
Does infringement need proof of confusion?
Under section 26(2) a likelihood of confusion, including association, is needed. Section 26(3) applies to reputed marks used on non-similar goods and asks for unfair advantage or harm instead.
Found a copy of your mark?
SUPREMEiP® handles trademark enforcement in Bangladesh. Send us the mark, the infringing use and any registration number.
