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Revisiting the Regime of Trademark Protection in Bangladesh: TRIPS Compatibility and Ramifications
Published online by Cambridge University Press: 04 May 2016
Abstract
Bangladesh recently established a new trademark regime in 2009, repealing the seventy-year-old statute that was enacted as a response of the colonial government to comply with the requirements of the Paris Convention. This newly established regime governing the protection of trademarks was particularly important in discharging Bangladesh’s obligations under the WTO Agreement on TRIPS. The present study is an attempt to examine the compatibility of Bangladeshi law with the TRIPS regime of trademarks. The major focus of this study is, however, confined to the TRIPS compatibility of the Trademarks Act in relation to the aspects of acquisition and cancellation of trademark rights in particular, and the nature and scope of these rights in general. In so doing, this paper thus speaks of the success and ramifications of the present regime in exploiting the TRIPS flexibilities—the challenge that Bangladesh is supposed to encounter as a member of LDCs.
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Footnotes
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Lecturer, Faculty of Law, Jahangirnagar University, Bangladesh. The author would like to acknowledge Althaf Marsoof, whose writing on the TRIPS Agreement compatibility of Sri Lankan trademark law has benefited him in determining the theme and structure of this paper.
References
1. World Trade Organization (WTO) Trade-Related Aspects of Intellectual Property Rights Agreement, 15 April 1994, 33 I. L. M. 81 (entered into force 1 January 1995) [TRIPS Agreement].
2. DEERE, Carilyn, The Implementation Game: The TRIPS Agreement and the Global Politics of Intellectual Property Reform in Developing Countries (Oxford: Oxford University Press, 2009) at 1 Google Scholar.
3. As described by Dr Wei Shi: “[i]ntellectual property (IP) had been traditionally regarded as a cultural concept until 1994, when IPR was formally elevated as a trade issue in the TRIPS Agreement. Concluded at the Uruguay Round of GATT in 1994, TRIPS has been seen as a logical consequence of efforts of developed countries to harmonize the standards for international IPR protection. As one of the most significant features of the TRIPS Agreement, TRIPS links IPR to trade for the first time in a multilateral agreement and requires members to implement and enforce minimum standards. Nations are obliged to accept the prevailing view on the proper role of IPR as a bid to participate in the world trading club.” See SHI, Wei, Intellectual Property in the Global Trading System: EU-China Perspective (Berlin: Springer, 2008) at 3 Google Scholar.
4. The TRIPS Agreement crosses the traditional line that separates the two main categories of intellectual property rights, namely copyright (which is generally covered by the Berne Convention) and industrial property (the basic discipline of which was established under the Paris Convention). Thus, it includes, on the one hand, the copyright and related rights, and on the other, six areas of industrial property. The six separate areas are: trademarks, geographical indications, industrial design, patents, lay-out designs of integrated circuits, and undisclosed information. See de CARVALHO, Nuno Pires, The TRIPS Regime of Trademarks and Designs (The Hague: Kluwer Law International, 2006) at 37 Google Scholar.
5. DRAHOS, Peter and RUTH, Mayne, eds., Global Intellectual Property Rights: Knowledge, Access and Development (Basingstoke: Palgrave, 2002) at 1 CrossRefGoogle Scholar.
6. Act No. XIX of 2009.
7. Paris Convention for the Protection of Industrial Property of 1883 (as Amended on September 28, 1979), 28 September 1979, 828 U.N.T.S 305, 21 U.S.T. 1583 (entered into force 3 June 1984) [Paris Convention].
8. Mohammad Towhidul Islam describes this fact as: “The Trademarks Act 1940 was enacted as an instrument of protection of the industrial property as formulated in the Paris Convention. Over the years, the definition and scope of trademarks have undergone gradual international development and application and the Convention has also contained some revisions. However, these revised or amended provisions of the Conventions are not covered in the present [1940s] Act. Some of them include refusal or cancellation of registration or use of well-known marks in another member country or protection of marks registered in one member country in the other member countries.” See ISLAM, Mohammad Towhidul, “Problems and Politics of IPRS Protection from WIPO to WTO: The Case Study of Bangladesh” (2009) 21 Sri Lanka Journal of International Law 1 at 49 Google Scholar.
9. The Trademarks Act of 2009 has been enacted “to repeal, amend, consolidate and re-enact the laws relating to trademarks”. As such, it has repealed the Trademarks Act of 1940, the Trade Marks (Invalidation and Summary Registration) Order 1973, and the Merchandise Marks Act 1889.
10. See ISLAM, Mohammad Towhidul, “Implication of the TRIPS Agreement in Bangladesh: Prospects and Concerns” (2009) 6 Macquarie Journal of Business Law 1 at 1–2 Google Scholar.
11. The major dissent between the developed and developing countries in the field of trademarks was on the issue of harmonizing the principles of future agreement with the existing rules of the Paris Convention. See Carvalho, supra note 4 at 207.
12. KEON, Jim, “Intellectual Property Rules for Trademarks and Geographical Indications: Important Parts of the New World Trade Order” in Abdulqawi A. YUSUF and Carlos M. CORREA, eds., Intellectual Property and International Trade: The TRIPS Agreement (London: Kluwer Law International, 1998), at 167 Google Scholar.
13. Before beginning the analysis of the provisions dealing with trademarks, one must recall that the relevant provisions of the Paris Convention were incorporated here by reference (see art. 2(1)). The relevant provisions in this respect are arts. 4, 5C, 6, 6bis, 6ter, 6quinquies, 6sexies, 6septies, 7, 7bis, 8, 9, 10ter, 11, 12.
14. Trademark rights are established in two different ways. When trademark rights have been established based on formal registration, the rights as granted are said to be “registration-based”. When trademark rights are established based on actual use, the rights that are effectively granted are said to be “used-based”.
15. “Registration systems designed to promote economic expansion derive their territorial character from their grounding in economic policymaking, effected by institutions that focus on the regulation or development of discrete economic regions. And rules regarding the enforcement of trademark rights assume their territorial quality because of their connection to political institutions with territorially defined sovereignty. Thus, some aspects of territoriality are rooted in social and commercial practices that dictate the reach of a brand, while other aspects are a function of political or policymaking authority. In an era of global trade and digital communication, social and commercial practices are less territorially confined and less commensurate with the nation-state. But economic policymaking and political institutions may prove more resistant to change than social or commercial behavior.” For the latest trend towards the principle of territoriality of trademarks rights, see DINWOODIE, Graeme B., “Trademarks and Territory: Detaching Trademark Law from the Nation-State” (2004) 41 Houston Law Review 886 at 888 Google Scholar.
16. Although the Trademarks Act recognizes the protection of unregistered trademarks through the common-law action of passing off under subsection 24(2), the Act categorically states that “[n]o person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trademark”. The wording of this section thus suggests that the full protection of the Trademarks Act of 2009 is only conferred to the marks that are registered under this Act. However, in the recent case of Kohinoor Chemical Co. (BD) Limited v. Unilever Bangladesh Limited [(2011) 16 B.L.C. (HCD) at 60], the High Court Division of the Supreme Court held that both unregistered trade mark parties may restrain their activities by status quo order till disposal of trial suit. This approach clearly signifies the Court’s stand in favour of a stronger protection regime for trademarks rights.
17. Chapters II, III, and IV of the Trademarks Act contain provisions relating to trademark registry, conditions of trademark registration, procedure, and duration and effect of registration.
18. GERVAIS, Daniel, The TRIPS Agreement: Drafting History and Analysis, 2nd ed. (London: Sweet and Maxwell, 2003) at 167 Google Scholar.
19. Emphasis added.
20. Distinctiveness may flow from two sources. One source of distinctiveness is inherent distinctiveness, and the second source of distinctiveness is distinctiveness acquired by use of a sign in such a way as to associate the sign with the goods or services of the relevant undertaking. The distinctiveness in question is the distinctiveness referred to in the first sentence, namely that of distinguishing the goods or services of one enterprise from those of another. According to this, an arbitrary or fanciful sign may be selected to denote the goods or services in question, in which case it is capable of distinguishing them and will do so immediately upon use. See MALBON, Justin, LAWSON, Charles, and DAVISON, Mark, The WTO Agreement on the Trade-Related Aspects of Intellectual Property Rights: A Commentary (Cheltenham: Edward Elgar Publishing Limited, 2014) at 279–282 Google Scholar.
21. This should be read in contrast to the provisions of art. 15(3) of the TRIPS Agreement, which provides that the members may make registrability depend on use.
22. UNCTAD-ICTSD, Resource Book on TRIPS and Development (New York: Cambridge University Press, 2005) at 231 Google Scholar. (That is what the third sentence of art. 15(1) of the TRIPS Agreement means when it refers to the “distinctiveness acquired through use”. According to this Article, the members may condition registration of descriptive marks, depending on the terms having a certain level of distinctiveness among the consumers as associating goods or services with an enterprise.)
23. See MARSOOF, Althaf, “TRIPS Compatibility of Sri Lankan Trademark Law” (2012) 15 Journal of World Intellectual Property 51 at 52 Google Scholar.
24. In this respect, Burton Ong argues that: “[t]his expansion of the scope of registrable trademarks to include non-visually perceptible subject matter has important consequences on the boundaries of trademark law and how scents, sounds, tastes and textures are used in the marketplace as devices by traders to differentiate their goods or services from those offered by their rivals. Parties who stand to gain the most from the trademark law provisions in these bilateral free trade agreements are those large corporations which have the resources to include these non-visual elements in their marketing campaigns so that they acquire the necessary degree of distinctiveness to qualify for trademark protection.” See ONG, Burton, “The Trademark Law Provisions of Bilateral Free Trade Agreements” in Graeme B. DINWOODIE and Mark D. JANIS, eds., Trademark Law and Theory: A Handbook of Contemporary Research (Cheltenham: Edward Elgar Publishing Limited, 2008), at 241 Google Scholar.
25. The law in the US is quite different: trademark rights arise from adoption and use of a mark, not from registration. Thus, a person using a mark may have valid and enforceable rights in a mark even though the mark is not registered with the USPTO (United States Patent and Trademark Office). See, for detail, BOUCHOUX, Deborah E., Intellectual Property: The Law of Trademarks, Copyrights, Patents, and Trade Secrets, 3rd ed. (New York: Delmar Cengage Learning, 2009) at 23 Google Scholar.
26. This section provides for a two-fold definition of the term “trademark”: the first part of the definition refers to a registered trademark or a mark used in relation to any goods or service in order to remedy the infringement under the provisions of Chapter X, while the second part of the definition recognizes the marks that are proposed to be used as trademarks.
27. Art. 15(3) provides that: “[m]embers may make registrability depend on use. However, actual use of a trademark shall not be a condition for filing an application for registration. An application shall not be refused solely on the ground that intended use has not taken place before the expiry of a period of three years from the date of application.”
28. RAMSEY, Lisa P., “Reconciling Trademark Rights and Free Expression Locally and Globally” in Daniel J. GERVAIS, ed., International Intellectual Property: A Handbook of Contemporary Research (Cheltenham: Edward Elgar Publishing Limited, 2015) at 359 Google Scholar. (The TRIPS Agreement gives states the flexibility to resister and protect trademark rights in signs that have acquired distinctiveness rather than inherent distinctiveness [such as descriptive words or product configuration], or in signs that are not visibly perceptive [such as scents and sounds], but it does not require states to register or protect such marks.)
29. TAUBMAN, Antony, WAGER, Hanuu, and WATAL, Jayashree, A Handbook on the WTO TRIPS Agreement (Cambridge: Cambridge University Press, 2012) at 63 CrossRefGoogle Scholar.
30. In this respect, art. 15(2) of the TRIPS Agreement provides that “[p]aragraph 1 shall not be understood to prevent a Member from denying registration of a trademark on other grounds, provided that they do not derogate from the provisions of the Paris Convention (1967)”. The wording of this Article suggests an important point that the WTO members can provide for any grounds of refusal to registration, but in doing so they cannot derogate from the provisions of the Paris Convention and, in particular, arts. 6quinquies and 7.
31. Gervais, supra note 18 at 168.
32. In practice, these grounds may relate to the trademark itself or to the right of the third party in relation to an earlier trademark. The ground that refers to an obstacle inherent to the trademark itself is typically described as “absolute grounds” of refusal of registration. On the other hand, the grounds for refusal of registration of a mark which arise from conflicts with an earlier right in relation to other earlier trademarks are accordingly referred to as the “relative grounds” of refusal.
33. Art. 6quinquies of the Paris Convention deals with tellequelle marks, that is, marks that have already been registered in a Paris Union country. Art. 6quinquies (A)(1) provides that “[e]very mark duly registered in the country of origin shall be accepted for filing and protected as is in the other countries of the Union, subject to the reservations indicated in this Article”.
34. Those grounds on which marks can be refused protection are: (1) when they are of such a nature as to infringe rights acquired by third parties in the country where protection is claimed; (2) when they are devoid of any distinctive character, or consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, place of origin, of the goods, or the time of production, or have become customary in the current language or in the bona fide and established practices of the trade of the country where protection is claimed; and (3) when they are contrary to morality or public order and, in particular, of such a nature as to deceive the public. It is understood that a mark may not be considered contrary to public order for the sole reason that it does not conform to a provision of the legislation on marks, except if such provision itself relates to public order.
35. Art. 15(4) of the TRIPS Agreement provides that “[t]he nature of the goods or services to which a trademark is to be applied shall in no case form an obstacle to registration of the trademark”.
36. Taubman et al., supra note 29 at 62.
37. In respect of the nature of absolute grounds, Lionel Bently and Brad Sherman observe that: “[t]he absolute grounds share two key characteristics. First, with one or two exceptions, the term ‘absolute’ indicates that the ground for objection relates to the sign itself, rather than to the rights of individual third parties. For this reason, the absolute grounds of refusal concern matters that can be scrutinized easily by the various offices without reference to third parties. Second, the absolute grounds of refusal are grounds that give effect to a ‘public’ or ‘general’ interest. One consequence of this is that if a sign is registered, which should have been refused on absolute grounds, any person may bring any proceeding to have the mark declared invalid.” See BENTLY, Lionel and SHERMAN, Brad, Intellectual Property Law (Oxford: Oxford University Press, 2014) at 928 CrossRefGoogle Scholar.
38. Section 119 of the Act provides: “[w]ith a view to the fulfillment of a treaty, convention or arrangement with any country which is a member of Paris Convention or World Trade Organization outside Bangladesh which affords to citizens of Bangladesh similar privileges as granted to its own citizens in respect of registration and protection of trademarks, the Government may, by notification in the official Gazette declare such country to be a Convention Country for the purposes of this Act.” On the other hand, s. 121 provides that: “[w]here any country specified by the Government in this behalf by notification in the official Gazette does not accord to citizens of Bangladesh the same rights in respect of the registration and protection of the trademarks as it accords to its own nationals no national of such country shall be entitled, either solely or jointly with any other person⎯ (a) to apply for the registration of, or be registered as the proprietor of a trademark in the Register; or (b) to be registered as the assignee of the proprietor of a registered trademark; or (c) to apply for registration or be registered as a registered user of a trademark under section 45 of this Act.”
39. [2012] 17 B.L.D. (HCD) at 730.
40. LADAS, Stephen Pericles, Patents, Trademarks, and Related Rights: National and International Protection (Cambridge, MA: Harvard University Press, 1975) at 979 Google Scholar.
41. By “ownership requirement”, the legislature is intended to impose a requirement for a trademark registrant to establish the link between himself and the manufacturer of the goods or the provider of the services in relation to which the mark will be used. As such, a mark that does not represent any commercial linkage to an individual or enterprise engaging in business would be incapable of being registered.
42. See s. 6(1)(b) of the Trademarks Act 2009.
43. In the case of Md. Ripon, Proprietor, Ripon & Bros v. Heze Wanda Playing Cards Co. Ltd. & Others, [(2009) VI A.D.C. (AD) at 819], the Appellate Division of the Supreme Court has thus strictly relied on the ownership requirement and held that the producer or manufacturer of the goods will get entitlement over the trademarks. Again, in the case of New Zealand Milk Brands Ltd. v. Sanowara dairy & Industries Ltd. and another, [(2010) 30 B.L.D. (HCD) at 24 ], the High Court Division of the Supreme Court (HCD) observed that no agent can claim the ownership of a trademark.
44. This ground signifies a positive step in eliminating mala fide registrations by persons not engaging in any business or trade in an attempt to prevent others from lawfully registering a mark. Seen in this light, the requirement as to ownership is regarded as a safeguard to limit trademark registration to bona fide businesses.
45. This view is based on the argument that it results in derogating from the provisions of Paris Convention that obliges Bangladesh to provide protection to the tellequelle marks under the regime of national legislation.
46. United States—Section 211 Omnibus Appropriations Act of 1998, cited in Marsoof, supra note 23 at 57.
47. The protection granted by such registration is of course a very narrow one, because it does not cover the use of the name itself. See Ladas, supra note 40 at 981.
48. Ibid.
49. There is a key difference between protection of trademarks and protection of IPRs that seek to stimulate creative and inventive activity—patent, copyrights, plant breeder’s rights, and so on. In view of this, trademark protection has none of the element of patent protection. A closely related difference between the two forms of IPRs is that patent and copyrights expressly grant monopolies—albeit limited in scope—whereas trademarks can, in theory, co-exist with perfectly competitive markets. See FINK, Carsten and SMARZYNSKA, Beata K., “Trademarks, Geographical Indications and Developing Countries” in Bernard M. HOEKMAN, Aditia MATTOO, and Philip ENGLISH, eds., Development, Trade and the WTO: A Handbook (Washington: World Bank, 2002), at 404 Google Scholar.
50. Ladas, supra note 40 at 967. (“A trademark is not an invention. No new idea or devise is necessarily involved in it. It may sometimes be forced upon the producer by the public. A certain sign, fortuitous and unintentional, may be liked by the public and become eventually a distinguishing sign of the producer of the product, although it was not so intended at first. A trademark need not be novel, in the sense that a novelty has in the case of inventions.”)
51. A generic term is not truly a mark at all but is merely a common name of a product, such as car, soap, or beverage. Such generic terms are not protectable and cannot be exclusively appropriated by one party inasmuch as they are needed by competitors to describe their goods. On the other hand, a descriptive mark tells something about the product or service offered under a mark by describing some characteristic, quality, ingredient, function, feature, purpose, or use of the product or service. For example, in In re Bed & Breakfast Registry, [1986]791 Fed. Cir. F.2d 157, “Bed & Breakfast Registry” was held merely descriptive of lodging registration services.
52. GREAVES, Rosa, “A Private Right Conferred Directly by EU Trade Mark Law: An Analysis of the Concept of ‘Distinctiveness’ under EU Law” in Niamh Nic SHUIBHNE and Laurence W. GORMLEY, eds., From Single Market to Economic Union: Essays in Memory of John A Usher (Oxford: Oxford University Press, 2012), at 144 Google Scholar.
53. In OHIM v. Wm. Wrigley Jr. Co (Doublemint case), [2003] Case C-191/01 P, the ECJ has held in relation to the EU Trademark Law that a word cannot be registered as a trade mark if it designates a characteristic of the goods or services concerned in one of its possible meanings. Similarly, in Campina Melkunie BV v. Benelux-Merkenbureau (Biomild case), [2004] Case C-265/00, the ECJ observed that a combination of descriptive words is also descriptive itself, unless there is a perceptible difference which can be discerned between the neologism and the mere sum of its parts.
54. MCKEOWN, John S., Canadian Intellectual Property Law and Strategy: Trademarks, Copyright and Industrial Designs (Oxford: Oxford University Press, 2010) at 28 Google Scholar.
55. Office for Harmonization in the Internal Market (Trade Marks and Designs), v. Wm. Wrigley Jr. Company, [2003] Case C-191/01 P.
56. This view can be substantiated with reference to the implication of the qualification to the scope of art. 6quinquies (B) by virtue of the last sentence in that Article, which provides that “[t]his provision is subject, however, to the application of article 10bis”. Art. 10bis, dealing with unfair competition, mandates that: “(1) The countries of the Union are bound to assure to nationals of such countries effective protection against unfair competition; (2) Any act of competition contrary to honest practices in industrial or commercial matters constitutes an act of unfair competition.”
57. Joined Cases C-108/97and C-109/97at [47]. In this case, the ECJ, by interpreting art. 3(1)(c) of the European Union Trademarks Directive, thus opined that merely because a mark amounted to a geographical name, that did not necessarily mean that it cannot be registered as a trademark. As such, there is no absolute prohibition on the registration of geographical names as trademarks.
58. See Marsoof, supra note 23 at 58.
59. Given the possibility of geographical names being registered as trademarks in other jurisdictions, including Paris Union countries, it is always possible for geographical names to form part of tellequelle marks that must be registered pursuant to Bangladesh’s obligations under the Paris Convention. An example includes Montblanc being registered as a trademark for pens despite the fact that Mont Blanc, meaning “white mountain”, also denotes the highest mountain in the Alps. If such a mark is registered in a Paris Union country, which undoubtedly in its ordinary signification denotes a geographical name, such a mark would be incapable of being registered in Bangladesh as a result of s. 6(1)(d).
60. Some examples include Cadbury, T.M. Lewin, and even the most renowned HP (Hewlett Packard). These are trademarks that originate from the surnames of the individuals who worked towards the establishment of their businesses.
61. The ECJ observed in Nichols plc v. Registrar of Trade Marks, [2004] Case C-404/02 that the distinctive character of personal names and common surnames must be assessed in relation to the goods or services involved and to the perception of the relevant consumers, with a specific assessment in each case, and applying the same criteria that are utilized in the assessment of the distinctiveness of any other mark. Thus, marks consisting of personal names are to be assessed on the same footing as any mark, thus reiterating that names too can form valid trademarks provided that they are distinctive.
62. It is found to be so, because in cases of both geographical names and surnames, the Trademarks Act does not set out the scope within which the “ordinary signification” must be assessed.
63. These may be treated as natural extensions to grounds as embodied in s. 10 of the Act. In terms of this section, “no trademark shall be registered in respect of any goods or description of goods or in respect of any services or description of services which is identical with or deceptively similar to a trademark which is already registered in the name of a different proprietor in respect of the same goods or description of goods or in respect of the same services or description of services, as the case may be”.
64. Insofar as tellequelle marks are concerned, it may be stated without doubt that such grounds can form a valid ground for denial under art. 6quinquies, and hence do not stand contrary to both the Paris Convention and the TRIPS Agreement.
65. “Article 6ter of the Paris Convention for the Protection of Industrial Property 1883 requires contracting states to prohibit the registration, without authorization, as trademark, of certain armorial bearings, flags, and other emblems, etc of the states and international organization and hallmarks and other official signs indicating control and warranty under certain circumstances.” See, for details, BAINBRIDGE, David, Intellectual Property (Harlow: Pearson Education Limited, 2010) at 696 Google Scholar.
66. The judicial practice of Bangladesh shows that this ground of refusal has been applied by the court in a wide variety of cases. Under the earlier regime of the trademarks law, similar ruling was given in some other cases, such as Sunil Kumar Das v. Deputy Registrar of Trade Marks, [ (2008) V A.D.C. (AD) at 202]; Ali and Brothers & Marquis Pump Marketing and another v. Pedrollo NK Ltd. &ors, [(2007) IV A.D.C. (AD) at 934]; Sattar Match Works and others v. Bangladesh Chemical Industries Corporation and others, [(1991) 43 D.L.R. (HCD) at 532] ; Jamal Uddin Ahmed v. Abdul Haque and another, [(2003) 55 D.L.R. (HCD) at 102].
67. In LTJ Diffusion SA v. Sadas Vertbaudet SA (Arthur & Félicie), [2003] Case C-291/00, the ECJ has observed in this respect that: “the perception of identity between the sign and the trade mark must be assessed globally with respect to an average consumer who is deemed to be reasonably well informed, reasonably observant and circumspect. The sign produces an overall impression on such a consumer. That consumer only rarely has the chance to make a direct comparison between signs and trade marks and must place his trust in the imperfect picture of them that he has kept in his mind. Moreover, his level of attention is likely to vary according to the category of goods or services in question” (at [50]–[52]).
68. In this respect, the TRIPS Agreement and the Paris Convention oblige parties to provide for a mechanism to oppose trademark registration. Art. 15(5) of the TRIPS Agreement provides that: “[m]embers shall publish each trademark either before it is registered or promptly after it is registered and shall afford a reasonable opportunity for petitions to cancel the registration. In addition, Members may afford an opportunity for the registration of a trademark to be opposed.” According to the wording of this Article, a WTO member must provide a mechanism for a registered mark to be cancelled if it is in conflict with third-party rights or on the basis of any objective ground for denying registration. However, this Article makes it optional for a country to provide for opposition during the application process for registration. In fact, in terms of art. 16(1), the exclusive rights of a trademark owner extend only to the prevention of third parties using a mark identical or similar to that of the owner, but does not explicitly grant a right to challenge or oppose the registration of a mark.
69. S. 18 provides that “any person may, within two months from the date of the advertisement of an application for registration, and on payment of the prescribed fee, give notice in writing in the prescribed manner to the Registrar, of opposition to registration”.
70. It is clear that the design of s. 18 of the Trademarks Act enables any person to protest against a mark from being registered in terms of the grounds specified in ss. 10(4) and 10(5). Since these grounds envisage a situation where a mark conflicts with a well-known mark, by virtue of s. 18, a well-known mark owner can apply to have a conflicting mark refused registration.
71. Both art. 15(5) of the TRIPS Agreement and art. 6bis (1) of the Paris Convention, read with art. 16(2) of the TRIPS Agreement, require parties to provide for a cancellation mechanism. This contemplates a situation where a conflicting mark has already been registered and requires to be annulled on the application of an affected party. Under the Trademarks Act 2009, provision for annulment is found in s. 51. S. 51(1) reads as follows: “[o]n application made in the prescribed manner by any person aggrieved to the High Court Division or to the Registrar, the Tribunal may make such order as it may think fit for cancelling or varying the registration of a trademark on the ground of any contravention of, or failure to observe a condition entered on the Register in relation thereto.”
72. S. 51 also can serve for the benefit of well-known mark owners, thus fulfilling obligations under art. 16(2) of the TRIPS Agreement read with art. 6bis of the Paris Convention. As such, the provisions in the Trademarks Act 2009 pertaining to the cancellation of a registered trademark conform to the standards envisaged by the Paris Convention and the TRIPS Agreement.
73. For example, Rochelle Cooper Dreyfuss argues that “the changing legal climate has tended to grant trademark owners ever greater control over their marks”. See DREYFUSS, Rochelle Cooper, “Expressive Genericity: Trademarks as Language in the Pepsi Generation” (1990) 65 Notre Dame Law Review 397 at 399 Google Scholar.
74. BENTLY, Lionel, “From Communication to Thing: Historical Aspects of the Conceptualization of Trade Marks as Property” in Dinwoodie and Janis, supra note 24 at 3 Google Scholar.
75. Art. 16(1) reads as follows: “[t]he owner of a registered trademark shall have the exclusive right to prevent all third parties not having the owner’s consent from using in the course of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion. In case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed.”
76. Gervais, supra note 18 at 172.
77. It is important to note that the Paris Convention is ambiguous and less than explicit as to the scope of trademark rights. However, art. 16(1) of the TRIPS Agreement has made explicitly clear the minimum standards of rights that must be made available by members to owners of trademarks.
78. Art. 16(1) of the TRIPS Agreement.
79. S. 10(5) and 26 of the Trademarks Act 2009.
80. In this respect, s. 25(1) provides that: “[s]ubject to the other provisions of this Act, the registration of a person in the Register as proprietor of a trademark in respect of any goods or services shall, if valid give to that person the exclusive right to the use of the trademark in relation to those goods or services, as the case may be, and to obtain relief in respect of infringement of the trademark in the manner provided by this Act” (emphasis added).
81. Althaf Marsoof argues that art. 16(1) of the TRIPS Agreement does not confer a right to use a mark. Thus, in relation to Sri Lankan trademark law, he describes the provision giving the right to use the mark as a TRIPS-plus feature. See Marsoof, supra note 23 at 60.
82. ABBOTT, F.M., COTTIER, Thomas, and GURRY, Francis, eds., International Intellectual Property in an Integrated World Economy (Baltimore, MD: Wolters Kluwer Law & Business, 2007) at 335 Google Scholar.
83. A registered trademark is infringed by any person who, not being the registered proprietor of the trademark or a registered user thereof, uses in the course of trade a mark where the mark is (1) identical with the trademark and is used in relation to goods or services similar to those for which the trademark is registered; (2) similar to the trademark and is used in relation to goods or services identical with or similar to those for which the trademark is registered; or (3) identical with the registered trademark and is used in relation to goods or services which are identical with those for which the trademark is 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.
84. See Ong, supra note 24 at 240–3.
85. Sabel BV v. Puma AG, Rudolf Dassler Sport, [1997] Case C-251/95.
86. Ibid., at [26].
87. This principle has been reaffirmed in Canon Kabushiki Kaisha v. Metro-Goldwyn-Mayer Inc., [1998] Case C-39/97, where the ECJ has observed that “[a] global assessment of the likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between these goods or services. Accordingly, a lesser degree of similarity between these goods or services may be offset by a greater degree of similarity between the marks, and vice versa” (at [17]).
88. [1969] 21 D.L.R. at 415.
89. [2008] V A.D.C. (AD) at 967.
90. The case of Anil Kumar Ghose v. Shamir Kumar Ghose, [2001]54 D.L.R. 273 is another example, where the court applied the same principle in presuming the likelihood of confusion. In this case, the court observed that “while considering the trademark applications all the surrounding circumstances must be taken into consideration so that each of the trademarks used in a normal way may not create confusion in the mind of the people. The trademark of both the opposite parties ‘New BaghabariKhatiGawa Ghee’ and ‘No. 1 Baghabari Khati Gawa Ghee’ are similar to the registered trademark of the petitioner i.e. ‘Bangladesh Special KhatiGawa Ghee’ with the same level of cow, colour scheme and other details, thus they are bound to cause confusion in the minds of the public even after amendment is allowed to ‘New Baghabari Khati Gawa Ghee’ by the Registrar, Trademarks. The main emphasis should be put on the interest of the public so that there is no confusion regarding the production of the Gawa Ghee.”
91. COOK, Andrew, “Do As We Say, Not As We Do: A Study of the Well-Known Marks Doctrine in the United States” (2009) 8 John Marshall Review of Intellectual Property Law 412 at 412 Google Scholar. See also MCCARTHY, J. Thomas, McCarthy on Trademarks and Unfair Competition (New York: Clark Boardman Callaghan, 1984) at 29–109 Google Scholar.
92. The first sentence of art. 16(2) provides that “article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to services …”. In terms of art. 6bis of the Paris Convention, “[t]he countries of the Union undertake … at the request of an interested party … to prohibit the use, of a trademark which constitutes a reproduction, an imitation or a translation, liable to create confusion …” (emphasis added) of a well-known mark.
93. Darnton says that: “[S]ection 3 of Article 16 expanded the Paris Convention rules on well-known marks to dissimilar goods. Where the Paris convention protected well-known trademarks from other parties who wanted to use the mark on ‘the same or similar goods,’ TRIPs now protects well-known trademarks from a third party’s use of the well-known mark on other classes of goods if (1) the third party’s use of that trademark on dissimilar goods would indicate a connection between those goods or services, and (2) the interests of the owner of the well-known trademark are likely to be damaged by such use. Note, however, that section 3 of Article 16 refers to trademarks that are registered in the country in question.” See DARNTON, James E., “The Coming of Age of the Global Trademark: The Effect of TRIPS on the Well-Known Marks Exception to the Principle of Territoriality” (2011) 20 Michigan State International Law Review 11 at 19 Google Scholar.
94. Yumin, ZHANG, “Several Issues on the Well-known Trademarks” IPKey (20 June 2015), online: IPKey <http://www.ipr2.org/storage/Zhang_Yumin_well-known_TMs-EN937>>Google Scholar.
95. S. 10(4) provides that: “No trademark shall be registered in respect of any goods or services if it is identical with, or confusingly similar to, or constitutes a translation or a mark or trade description which is well-known in Bangladesh for identical or similar goods or services of another enterprise” (emphasis added); s. 10(5) provides that: “No trademark shall be registered in respect of goods or services if it is well-known and registered in Bangladesh for goods or services which are not identical or similar to those in respect of which registration is applied for, if (a) the trademark is used in such a way that may create a false conception that there is a connection between those goods or services and the owner of the registered trademark; and (b) the interests of the registered trademark are likely to be damaged by such use” (emphasis added).
96. S. 26(7) provides that: “A well-known mark which is registered is infringed or is deemed to be infringed by a person who, not being the registered proprietor of the well-known mark or a registered user thereof using by way of permitted use (a) uses the mark in relation to goods or services identical with or similar to the goods or services for which the well-known mark has been registered; or (b) uses such a mark in relation to goods or services which not being identical with or similar to those in respect of which the well-known mark has been registered, by using of the mark in relation to those goods or services, would indicate a connection between those goods or services and the owner of the registered well-known mark and that the interests of the owner of the registered well-known mark are likely to be damaged by such use” (emphasis added).
97. As said earlier, the TRIPS Agreement permits the requirement of registration for the protection of the interest of well-known marks’ owners against the confusing use of non-identical or non-similar marks. Thus, the precondition of registration in order to provide protection to the interest of the well-known marks can be taken as a TRIPS-compliant feature.
98. Art. 16(3) of the TRIPS Agreement provides that: “Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to goods or services which are not similar to those in respect of which a trademark is registered, provided that use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trademark and provided that the interests of the owner of the registered trademark are likely to be damaged by such use.”
99. CORREA, Carlos M., Trade Related Aspects of Intellectual Property Rights: A Commentary on the TRIPS Agreement (Oxford: Oxford University Press, 2007) at 192 CrossRefGoogle Scholar.
100. Ibid., at 193.
101. Marsoof, supra note 23 at 67.
102. Apart from this, s. 10(5) of the Act also complies with art. 16(2) of the TRIPS Agreement, which provides that: “[i]n determining whether a mark stating in sub-sections (4) and (5) 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.”
103. See Marsoof, supra note 23 at 67–8.
104. The Trademarks Act of 2009 is, by and large, in line with the TRIPS Agreement. See ISLAM, Mohammad Towhidul, TRIPS Agreement of the WTO: Implications and Challenges for Bangladesh (Cambridge: Cambridge Scholars Publishing, 2013) at 193 Google Scholar. The case-law or practices are also consistent with the TRIPS norms in general.
105. Because it is believed that the TRIPS-plus feature includes any new standards that restrict the ability of member countries to: (1) promote technological innovation and to facilitate the transfer and dissemination of technology; (2) take necessary measures to protect public health and nutrition and to promote the public interest in sectors of vital importance to their socioeconomic and technological development; or (3) take appropriate measures to prevent the abuse of intellectual property rights by right holders or the resort by right holders to practices which unreasonably restrain trade or adversely affect the international transfer of technology. As a result, the TRIPS-plus concept covers both those activities aimed at increasing the level of protection for rights holders beyond that which is given in the TRIPS Agreement. In addition, such measures reduce the scope or effectiveness of limitations on rights and exceptions under the TRIPS Agreement.
106. For example, since unregistered trademarks are difficult to prove, agricultural products and services could specifically be mentioned in ss. 2(8)(b), 2(28), and 6(1)(d) of the Trademarks Act. This will serve the purposes of the registration and recognition of service marks, especially well-known marks related to agricultural products or services.