COPYRIGHT

Copyright (or author’s right) is a legal term used to describe the rights that creators have over
their literary and artistic works. Works covered by copyright range from books, music, paintings,
sculpture, and films, computer programs, databases, advertisements, maps, and technical
drawings. The owners of the copyright can control the exploitation of his work, for example by
making or selling copies to the public or by granting permission to another to do this in return for
a specified payment or not. If a person infringes copyright without the permission or license of
the copyright holder, the latter can sue for infringement of his copyright and can obtain remedies.
The ownership of copyright is limited to a fixed period of time, after the expiry of which copyright
does not subsist and the work becomes work in the public domain. A work may be subject to
several distinct copyrights. Thus the copyright protection of a film is additional to any copyright
in the content of the film such as the underlying script or music. Copyright of a sound recording
is distinct from music and lyric.
The Copyright Act 2000 was enacted in Bangladesh replacing the older Ordinance of 1962. The
Act provides the rules relating to scope, ownership, registration, transfer and enforcement of
copyrights. Copyright Rules were framed by the government in 2006.

DEFINITION OF COPYRIGHT
According to s. 14 of the Copyright Act, 2000, “copyright” means any right to do or authorize the doing
of any of the following acts in respect of a work: reproduce copy, issue copy to public, perform, produce
translation or adaptation, sell or hire, use, broadcast etc.

COPYRIGHTABLE WORKS
A copyrightable work may take any of the following forms:
● Visual, e.g. photograph, video, movie, painting, drawing, graphic design, broadcast.
● Audio, e.g. music, sound recording, audio broadcast.
● Literary, e.g. poem, lyric, story, screenplay, character, article, book.
● Software, e.g. computer program, website, computer game, mobile app.
● Collection, e.g. database, compilation of works.
Section 2(11) of the Copyright Act 2000 defines work as any literary, dramatic, musical or artistic
work, cinema, sound recording and broadcast.
Under the Act, classification of copyright works are as following:
1. Artistic work:
a. Literary work - writing that is creative, for research or information and computer
programs.
b. Dramatic work - recitation, entertaining display, acting sequences.

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 c. Musical work - melody and its annotation.
d. Other work such as drawing, painting, photo, sculpture, architecture etc.
2. Cinematic work - sequences of images forming moving scenes.
3. Sound recording - reproducible recording of any sound.
4. Broadcast - mass communication of signal, symbol or sound by any means.
Every literary, artistic, cinematic and sound recording works are protected by the Copyright Act,
2000 except seven types of work which are excluded by the Act. The excluded works are as
follows:
1. A foreign author’s work first published outside Bangladesh.
2. Architecture not located in Bangladesh.
3. Foreign work not covered under s. 68-69.
4. Cinema infringing any other copyright.
5. Sound recording that infringes any literary, dramatic and musical work.
6. Design registered under the Patents and Designs Act 1911.
7. Unregistered design reproduced more than 50 times through any industrial process.
S. 15 describes that the following types of works shall be protected under the Act:
● Copyright is applicable to an original work first published in Bangladesh or a work all the
authors of which are Bangladeshi citizens/permanent residents. For architecture, the
work must be situated in Bangladesh. For cinema, the work will be protected if the office
of the producer is situated in Bangladesh.
● However, under s. 68-69, the government may provide copyright protection to any
foreign works by gazette notification if that foreign country provides the same protection
for Bangladeshi works.
● No cinema or sound recording will be protected if it violates any other copyright.
Copyright in cinema or sound recording shall not affect separate copyright on works on
which the cinema/recording is made. So copyright of music shall be independent of the
copyright of the lyrics. Copyright of a movie is independent of the story/character used in
the movie.

THINGS NOT TREATED AS COPYRIGHT WORK

Copyright protection does not extend to facts, data, ideas, systems of operation, methods,
principles, discoveries, and names, titles, and short phrases.
Facts can be used in a work without the fear of liability because facts are not protected under
copyright law. For example, cricket scores, telephone numbers and dates of birth are non-
copyrightable facts.
Copyright does not cover ideas, concepts, and principles themselves, only the form in which they
are expressed is covered. For example, Einstein's theory of special relativity is not copyrightable

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because it is an idea (or concept or principle). However, Einstein's article, "On the
Electrodynamics of Moving Bodies," in which he explained and expressed the theory, was
copyrightable. So copyright protects the tangible mediums that express these facts, ideas, and
systems, such as: A scholarly article that expresses certain concepts and ideas, an encyclopedia
that expresses facts, a book that expresses a method of operation, a magazine that expresses a
new discovery.
Copyright does not protect individual words, short phrases, and slogans. However, these things
might be protected under trademark laws.
Laws and similar works of the government are uncopyrightable.
Works not fixed in a tangible form of expression are not copyrightable. For example, if someone
attends an improvised speech that has not been notated or recorded, he may publish or use the
speech without fear of liability.
Any work in the public domain can be used without obtaining permission of the copyright owner.
A work falls into the public domain when the copyright term expires or if the copyright owner
directly dedicates the work to the public domain. However, if any public domain work is used in
another work, the author's new expressive content, selection and arrangement of the public
domain work may be protected by copyright.

REQUIREMENTS OF COPYRIGHT
Every original work of authorship fixed in a tangible form gets copyright protection. So there are
three basic requirements for copyright.

Work of Authorship
Literary and artistic works such as book, article, lyrics, literary character, drawing, sculpture,
painting, photography, video, music, sound recording, mobile app etc are examples of works of
authorship. Under s. 2(11) of the Copyright Act 2000, the following shall be considered as work:
a literary, dramatic, musical or artistic work; a cinematograph film; a sound recording; and a
broadcast.
● Literary work means a work of humanities, religion, social and physical sciences, and other
areas, written or produced in book form, which is of creative, research-oriented,
informative and similar nature or of translated, converted, adapted, modified or compiled
nature, or a programme produced by a computer intended for study and listening of
people in general.1
Literary works are not limited to works of literature like plays, novels or poems and
instead include all forms of written documents. Works like technical books, scripts,

1
S. 2(46).

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 research work, computer programs or databases, and thesis also form a part of literary
works.
● Artistic work means a painting, a sculpture, a drawing (including a diagram, map, chart or
plan), an engraving or a photograph whether or not any such work possesses artistic
quality; a work of architecture; and any other work of artistic craftsmanship. 2
● Musical work means a work consisting of music and includes any graphical notation of
such work but does not include any words or any action intended to be sung, spoken or
performed with the music.3
● Dramatic work includes any piece for recitation, choreographic work of entertainment in
dumb show, the scenic arrangement of acting, form of which is fixed in writing otherwise
but does not include a cinematograph film.4
● Broadcast means communication to the public by means of wireless diffusion,whether in
any one or more of the forms of signals, signs, sounds, computer with internet
connections, satellites or visual images including telecast or broadcast by wire or wireless
devices or by both; and it also includes a re-broadcast/re-telecast.5
Work consists of expression of an idea, not the idea itself. So the same idea can be expressed in
different ways and each expression can be protected by separate copyrights without infringing
each other’s copyright. Same plot can be used in different stories and the same scene can be
photographed in different ways.
● Titles, names, single words and phrases have been refused to be treated as work covered
by copyright. These are subjects of trademark, not copyright. In Navitaire Inc v easyJet
Airline Co Ltd (2004), it was held that ‘single words in isolation are not to be considered
literary works’ and that command names used to execute a computer program could
therefore not be independently protected.
● In Detective Comics, Inc. v. Bruns Publications, Inc. (1940), it was held that the archetype
of a cape-wearing benevolent-Hercules figure (Superman) is an idea, which was not
infringed by the copyright in the character Wonder Man; only the specific details of the
strips, their particular expression etc enjoy legal protection.
● Nichols v. Universal Pictures Corporation (1930): Copyright protection can be extended to
distinctly delineated characters, not to stock characters in a story. So the character Tarzan
was held to be protected in Burroughs v. Metro-Goldwyn-Mayer, Inc 1983.

Original Work
Originality of a work means that the work is not copied from any other work. The level of
creativity required for a work to be "original" is extremely low. A work may be of poor quality,

2
S. 2(36).
3
S. 2(37).
4
S. 2(18).
5
S. 2(43).

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but it must involve an element of creativity. It is the originality, not the quality of the work, which
matters for copyright protection. Sometimes, a creative work will have both original and
unoriginal elements. In that case, the owner of the copyright to the work may assert rights over
the original elements, but not the unoriginal elements. For example, a remixed production of a
public domain song with new musical arrangements will have copyright for the new portion.
● University of London Press v. University Tutorial Press (1916): examination questions were
held to be copyrighted original literary works.
● Warwick Films v. Eisinger (1969): a film based on trials of Oscar Wilde was protected
under copyright because the screenplay was original even though the source materials
were legal documents.
● Walter v Lane (1900): A reporter who produced a verbatim report of a political speech
enjoyed copyright in his report of the speech, though not, of course, in the speech itself.

Fixation of Work
Fixation means the incorporation of sounds or images or both in a device by means of which they
can later be made orally or visually perceivable.6 A copyrightable work is automatically protected
upon creation without any necessity of registration. But the work must be fixed in a tangible
medium of expression. This requirement can be satisfied by recording even without the
permission of the author. Copyright protects things that can be copied, not things that can be
imitated. So, a work of choreography may be protected if the moves are recorded as dance
notation or in video or in any other medium. Moreover, it does not matter whether the work has
been published or made available to the public, as copyright protection is available to both
published and unpublished works
● Merchandising Corp of America v. Harpbond (1983): facial make up is not copyrightable
because it is not fixed.
● Tandy Corp. v. Pers. Micro Computers, Inc. (1981): most computer memory media are
adequate for fixation.
● Williams Electronics, Inc. v. Arctic International, Inc. (1982): a game satisfied the fixation
requirement, since the player was interacting with copyrighted art and sound in set
patterns determined by copyrights. So an inherently changeable work could be said to be
fixed.

RIGHTS UNDER COPYRIGHT

There are two types of rights under copyright: Economic rights and moral rights. Economic rights
last for a limited period and can be transferred by licensing or assignment. On the other hand,
the author’s moral rights in a copyright work lasts forever and can't be transferred or sold, but it
can be waived. Moral rights consists of the two:

6
S. 2(38).

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 a. Recognition of authorship.
b. Use of work will not be disrespectful to the author.
In Bangladeshi law, there is no explicit provision relating to protection of the author’s moral right.

Economic Rights protected by Copyright

1. Make copies.
2. Distribute copy.
3. Assignment.
4. Licencing and Rental: Territorial, differentiated pricing.
5. Use the work.
6. Perform the work.
7. Display the work.
8. Derivative and Collective works: translation, adaptation, compilation.
9. Modification.

Related Rights
Related rights are a set of economic rights which belong to performers and broadcasters of any
copyrighted work. Related rights can be assigned, transferred and licensed like copyright and
their infringement is subject to the same civil and criminal remedies available for copyright
infringement (s. 37). Unlike in the UK, our law does ot explicitly grant moral rights to performers
or broadcasters. In the UK and India, it has been held that performers' right includes an
inalienable right to receive royalty.
Performers Right: Performance is live presentation of anything in visible or audible manner by
one or more performers.7 Performers include an actor, singer, musical instrument player, dancer,
acrobat, juggler, conjurer, snake charmer, a person delivering a lecture or any other person who
makes a performance.8 Rights of the performer last for 50 years from the first performance (s.
35). No one can perform, record, reproduce or broadcast the performance without the consent
of the performer within this time.
Broadcasters Rights: Examples of broadcasters are television channels, radio stations and
internet streaming without distributing copies. Rights of the broadcaster last for 25 years from
first broadcast to public (s. 33). During this time, the broadcast cannot be re-broadcasted,
reproduced, commercially exhibited, recorded or distributed without license from the
broadcaster.
However, the licence issued by the broadcasted shall not affect the copyright in any distinct work
used in the broadcast (s. 34). License to reproduce a broadcast shall not be valid without consent
of existing copyright holder and performers (s. 37).

7
S. 2(41).
8
S. 2(42).

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 Rights of performers or broadcasters are not violated by use which is personal, academic,
bonafide reporting or falls under any fair use (s. 36).

SCOPE OF COPYRIGHT
● Duration of Economic Right: at least 50 years under the Berne Convention 1886.
● Moral Rights: exists forever.
● Public domain: economic rights become public after the prescribed time has elapsed.
● Fair use: limited right to use copyrighted work without permission.
● Non voluntary license: licence granted by government authority.

Duration of Copyright in Bangladesh

● Under S. 24, copyright extends from the moment it is created to the life of all the authors
and 60 years after the year of the death of the last author.
● Under S. 25-31: Term of copyright in film, music, photograph, software, anonymous work
and works published posthumously is 60 years after the year of first publication.
● S. 33: Reproduction rights of a broadcaster subsists for 25 years after the year of first
broadcast.
● S. 35: Performer’s right subsists for 50 years after the year of first performance. During
this period, no one can perform or reproduce performance without consent of the
performer.

PUBLIC DOMAIN WORK

A work becomes a public domain work after the legal period of copyright protection ends.
However, a new adaptation or version of a public domain work will be copyright protected, even
though the original work is not protected any more. For example, works of Rabindranath Tagore
are in public domain, but a movie based on a story written by Tagore shall have its own copyright.

FAIR USE OF COPYRIGHTED WORKS

Some limited use of copyrighted material without authorization of the owner is allowed under
law. This is called fair use or free use. It must be a special case and not in conflict with normal
exploitation of the work, e.g. academic purpose, scientific research, reporting, in speech, official
proceedings. Examples of fair use are making quotations with proper citation, amateur
performance to a non-paying audience etc.
There are four factors of fair use:
1. The purpose and character of the use: Commercial use is less likely to be fair than non-
commercial use. Moreover, transformative use with a different meaning is preferred to
mere reproduction of the original.

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 2. The nature of the copyrighted work: using fact based works is more likely to be fair than
using fictional works. Use of unpublished or private material will get less protection under
fair use.
3. The amount and substantiality of use: using a relatively small portion of a copyrighted
work is likely to be fair. But use of a small but important portion of a copyrighted work
may constitute infringement.
4. Economic effect of use: the use must not economically prejudice the copyright owner. If
the use provides a substitute for the original and decreases its demand in the market,
then the use is not fair.
Only the first two factors are explicitly mentioned in Bangladeshi law. Under Section 72 of the
Copyright Act 2000, the following uses of copyrighted works are not a violation of copyrights even
when no permission of the owner is obtained:
● Academic or research purposes.
● Legal Proceeding
● Reporting.
● Taking photographs of works in public places.
● Amateur performance.
● Building a structure according to a copyrighted design.
● One backup copy of a licensed Software.
S. 36: The following acts do not violate the rights of performers and broadcasters:
● Recording the broadcast for personal, educational or research purposes.
● Using the performance for bona fide reporting, review, educational or research purposes.
● Any act which is allowed as fair use under section 72.

FIRST OWNER OF COPYRIGHT

Usually the author, composer, artist or producer is the first owner of a work who can use his
rights under the copyright or transfer/license his rights to any other person. Under S. 17 of the
Copyright Act, 2000, the author is the first owner of copyright except in the following cases:
● The person who recruits another person under a contract of employment to create any
work is the owner of any work created in the course of business unless otherwise agreed.
● The person who employs another person for money to create a photo, video, portrait,
etching, or software is the owner of that work unless otherwise agreed.
● Unless otherwise agreed, the owner of a newspaper or magazine is the owner of the right
to publish/reproduce the works made by persons recruited by him in the course of
business. Author is the owner of the rest of the rights relating to copyright of the work.
● Person who makes a public speech or on behalf of whom a speech is made is the owner
of copyright in the speech, not the person who arranges the speech.

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TRANSFER OF COPYRIGHT
Copyright can be transferred by assignment, bequest and license.

Assignment of Copyright
● An assignment is the voluntary transfer of ownership of a copyrighted work either wholly
or partially and either generally or subject to limitation and either for the whole term of
the copyright or any part thereof. An owner of any existing or future work can transfer
his copyright to any other person by a contract of assignment in writing under s. 18. The
person to whom a copyright is transferred is called an assignee.
● The assignment can be complete or partial, for a limited time or full term, conditional or
unconditional.
● Unless otherwise agreed, the term of assignment shall be five years and shall extend to
whole Bangladesh (s. 19).
● The contract of assignment shall mention the amount of royalty.
● If the original copy of a painting/sculpture/manuscript/design is sold by assignee, the
author will get upto 10% of the sale price if he was the first owner.
● If the assignee fails to use the work, the assigner may make an application to the copyright
board to cancel the assignment (s. 20).

Royalty
Registrar of Bangladesh Copyright Board, in a letter dated 05.09.2021 said, if old songs that were
previously only made for CDs or VCDs and cassettes are re-published in online platforms, the
lyricists, composers, vocalists and label companies will each get 25 percent of royalty. 9

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https://www.ajkerpatrika.com/30278

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Bequest of Manuscript
Unpublished manuscript can be transferred to any person by bequest under s. 21. Where under
a bequest a person is entitled to the manuscript of a literary, dramatic or musical work, or to an
artistic work, and the work was not published before the death of the testator, the bequest shall,
unless the contrary intention is indicated in the testator’s will or any codicil thereto, be construed
as including the copyright in the work in so far as the testator was the owner of the copyright
immediately before his death.

License
Licensing means the owner or creator of the copyright holds ownership but he can authorize a
third party to perform certain acts which are covered by his exclusive economic rights, usually
for a specific period of time and for a specific purpose. For example, the author of a novel may
grant a license to a publisher to make and distribute copies of the novel in the market. Owner of
a software can grant a license to install and use a number of copies of the software for a limited
time.
Under section 48, an owner of copyright can give license to anybody relating to any right in
existing or future works. The licence can be exclusive where no other licence can be issued to
anybody except with the authorization of the licensee.10

From Facebook Terms of Service

“...when you share, post or upload content that is covered by intellectual property rights on or
in connection with our Products, you grant us a non-exclusive, transferable, sub-licensable,
royalty-free and worldwide licence to host, use, distribute, modify, run, copy, publicly perform
or display, translate and create derivative works of your content (consistent with your privacy
and application settings). This means, for example, that if you share a photo on Facebook, you
give us permission to store, copy and share it with others (again, consistent with your settings)
such as service providers that support our service or other Facebook Products you use. This
licence will end when your content is deleted from our systems.”
- https://www.facebook.com/terms.php

COMPULSORY LICENSE
● S. 50: The Copyright Board may grant compulsory license for Bangladeshi works upon
application by any person. The application may be granted on the ground that the owner
barred public access to the work by refusing to allow reproduction unreasonably or
against public interest. The owner shall be entitled to specified royalty.

10
s. 2(5).

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 ● S. 52: The Copyright Board may grant compulsory license to translate or adapt a work
after 5/3 years of publication. The license shall be non-exclusive and royalty shall be
payable to the owner.
● S. 52: The Copyright Board may grant compulsory license to reproduce a fictional work
after 7 years, scientific works after 3 years and other works after 3 years of publication if
copies of the work are not available to Bangladeshi public at a reasonable price. The
license shall be non-exclusive and royalty shall be payable to the owner.

REGISTRATION
● Registration of copyrights can be done online or manually.
● According to s. 56, any Bangladeshi owner, author, publisher or person having interest
can apply for registration of a work to the Copyright Registrar. The application will be
made in the prescribed form under rule 4.11
● S. 57: Assignment of copyright may be registered by filing an application along with the
deed of transfer.
● S. 60: Registration shall act as prima facie evidence as to the ownership of a copyrighted
work.

COPYRIGHT REMEDIES
● There are three types of copyright remedies: administrative, civil and criminal.
● Disputes relating to assignment, time of publication, period of protection etc can be
resolved by the Copyright Board under s. 20 and 6.
● Injunction against import of infringing copies can be sought to the Registrar of Copyright
Office under s. 74 if the foreign work is registered in Bangladesh.
● Civil Remedies may be availed by the owner or exclusive license holder of a work. Under
s. 76, the remedies available under civil suits include damages, account of profit,
injunction etc. Section 81 provides that civil suits under the Copyright Act shall be filed in
the court of the District Judge having jurisdiction. Copyright registration certificate is
usually required in order to avail civil remedies.
● Criminal Punishment: Criminal case shall be filed in Sessions Court (s. 92). Under s. 82,
Punishment for copyright infringement are 6 months to 4 years imprisonment with a fine
of 50000 to 200000 taka fine. For film piracy, the punishment is 1 to 5 years
imprisonment. According to s. 83, if a person commits a second offence under the Act, he
will be punished with 6 month to 3 years imprisonment.
● S. 93: A police officer above the rank of Sub Inspector can seize pirated copies without
warrant.

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http://copyrightoffice.portal.gov.bd/sites/default/files/files/copyrightoffice.portal.gov.bd/forms/ec822a4f_a512_4
0eb_9ed3_02b545fe9b1e/Editable_copyright%20registration%20form.pdf

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BERNE CONVENTION FOR THE PROTECTION OF LITERARY AND ARTISTIC WORKS 1886, 1979
● This Convention incorporated four principles relating to copyright: national treatment,
automatic protection, independence of protection, and minimum standards.
● National treatment: work originating in another contracting state must be given the same
protection.
● Automatic protection: no registration or formality is required for protection of copyright.
Most countries nonetheless have a system in place to allow for the voluntary registration
of works. Such voluntary registration systems can help solve disputes over ownership or
creation.
● Independence of protection: Protection is independent of the existence of protection in
the country of origin. But there is no obligation to protect a work beyond the minimum
standard period when the original country doesn’t protect.
● Minimum standards:
1. Every copyrightable work must be protected.
2. Protection must include reproduction, translation, adaptation, related rights,
moral rights etc.
3. Period of protection must be at least until 50th year after the author's death or,
as the case may be, publication. Photography is protected for at least 25 years
from creation.
4. Certain free uses are allowed.
5. Developing countries are allowed to issue compulsory licenses for educational
purposes.
● There are 176 parties including Bangladesh which signed it in 1999.
● Art. 1-3 of its Appendix gives special rights to developing countries. Bangladesh availed it
till 2024.
o Art. 2 of Appendix: In addition to exclusive right of owner for translation provided
in Article 8, non-exclusive and non-transferable licenses may be granted by the
competent authority after expiration of three years of publication.
o Art. 3 of Appendix: Instead of exclusive right of owner for reproduction provided
in Article 9, non-exclusive and non-transferable licenses may be granted by the
competent authority after expiration of a certain period (5 years for non-fiction &
7 years for fiction) from publication for use in connection with systematic
instructional activities.

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TRADEMARK
Trademark is a right which the owner enjoys in respect of the identity of their products and
services.
Trademark is the name or other symbol used to identify the goods produced by a particular
manufacturer or distributed by a particular dealer and to distinguish them from products
associated with competing manufacturers or dealers.
Rights under a Trademark are distinct from the tort of passing off. Trademark prevents
unauthorized use of registered marks. Tort of passing off prevents one trader from
misrepresenting goods or services as being the goods and services of another. Passing off can be
committed by using false/confusing descriptions, marks, get-up etc. Trademark protects marks
while passing off protects goodwill.
Legal Name vs. Trade Name vs. Trademark: Legal name is the official name of an entity, trade
name is the name under which the entity does business, and trademarks are brands used by the
entity to identify its products. For example, Unilever Bangladesh Limited is a legal name, Unilever
is its trade name. Lux, Closeup, Vaseline etc are trademarks. Trade names are protected even
without registration but trademarks must be registered in order to get legal protection.

HISTORY OF TRADEMARK
● Craftsmen applied their names, unique drawings, or simple inscriptions to identify goods
they created. Potters' marks appeared in relics left from the Greek and Roman periods.
● The Terra Sigillata in 500 B.C. is regarded as the first "trademarked" drug.
● Around the 10th century, symbols called "merchants mark" were used to prove
ownership rights of goods. Britain adopted trademark laws in the 13th century to avoid
any replication of products from a certain company to another.
● In Bangladesh, the Penal Code 1860 punished unauthorised use of trademarks. The
Merchandise Marks Act, 1889 provided additional protection of trademarks. Formal
registration of trademarks were introduced in the Trade Marks Act of 1940.

DEFINITION OF TRADEMARK
Article 15(1) of the TRIPS Agreement provides that:
“Any sign, or any combination of signs, capable of distinguishing the goods or services of one
undertaking from those of other undertakings, shall be capable of constituting a trademark. Such
signs, in particular words including personal names, letters, numerals, figurative elements and
combinations of colours as well as any combination of such signs, shall be eligible for registration
as trademarks”.

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Section 478 of The Penal Code 1860 defines trademark as: a mark used for denoting that goods
are the manufacture or merchandise of a particular person is called a trademark, and for the
purposes of this Code the expression "trademark" includes any trade mark which is registered in
the register of trademarks.
Section 2(8)(b) of the Trademark Act 2009 defines trademark as “a mark used or proposed to be
used in relation to any service or goods indicating a connection in the course of trade between
the goods and the person having the right, either as proprietor or as registered user, to use the
mark”.

FORMS OF TRADEMARK
Almost any mark can be a trademark so long as it is used to distinctly indicate the origin of the
product or service.
● Name: Example- Macdonald’s, Rahimafrooz etc.
● Words and Numbers: Example- Apple, WD-40
● Logo or device: Example- Mercedes Benz logo
● Abbreviations: Example- KFC, BRAC.
● Invented word: Example- Google.
● Marketing slogan: Example- Just Do It, The World’s Local Bank.

TYPES OF TRADEMARK
There are two general categories:
Marks that identify goods or products known as trademarks. E.g. Samsung.
Marks that identify services known as service marks. E.g. Pathao, Grameenphone.
Trademark law protects two other types of marks—
Certification marks: It is used to certify that products and services that are manufactured or
provided by others have certain qualities. Example: ISO 9001, BSTI, Bureau Veritas, CE, AACSB
etc. Certification marks are marks adapted in relation to any goods or services which
distinguishes, in the course of trade, the goods certified by any person in respect of origin,
material, mode of manufacture, quality, accuracy or other characteristic from the goods not so
certified.
Collective marks: It is used to signify membership in an organization. Example VISA, REHAB.
Collective mark means any visible sign which is used by different enterprises under the control
of the registered owner of the mark and is used in respect of goods or services by a group of
individuals collectively engaged in the same business as one legal entity.
Associated Trademark: Where a registered trademark is identical or very similar with another
trademark in the name of the same proprietor in respect of the same goods or description of

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goods or in respect of the same services or description of services, the trademark can be
registered as an associated trademark.

CHARACTERISTICS OF TRADEMARK
There are three characteristics which must be present in a trademark:
1. Distinctive: A trademark should be distinctive, i.e. not identical or similar to trademarks of any
other competitors. Distinct mark means a mark which distinguishes the goods or services of the
proprietor from the goods or services of the same kind in such trade. “Pizza Hut” has one
distinctive word namely “Hut” which distinguishes it from other pizza makers.
In Nabisco Biscuit and Bread Factory vs. Baby Food Products, 2005,12 it was held that the word
NABICO is similar to the already registered trademark NABISCO, and therefore the word NABICO
was directed to be deleted from the registry. However, in Major General Amjad Khan Chowdhury
vs. Parle Agro Products Ltd, 2012,13 it was held that the Trade Name “PRAN FROOTO” is a
completely dissimilar and distinctive mark from the registered Trademark “FROOTI” because
there is no likelihood of confusion between the two.
Non-distinctive portions of a trademark need to be mentioned in trademark disclaimer. A
disclaimer is a statement made in a trademark application or registration to indicate that the
owner does not claim any exclusive rights to the disclaimed portion of the mark. For example, in
the trademark application of Chaka (a soap brand) both the word Chaka (wheel) and image of a
wheel are there but only the word Chaka is claimed under trademark. In the application of
SUPERMOM, individual use of the words Super and Mom are disclaimed. Section 14 allows
trademark disclaimer.
A mark which is not inherently distinctive may be protected if it acquires distinctiveness or
secondary meaning through prolonged use.14
Vulgarization of Trademarks: By way of 'vulgarization', a trademark may lose its
distinctive character when it becomes the common name for the products or services
which it is intended to identify. Example: Honda, Vaseline. If vulgarization has already
occurred as at the date of the application for registration of the mark, this constitutes
grounds for refusal.
2. Non-descriptive: A merely descriptive trademark or generic terms used to refer to the product
or service itself cannot be used as trademarks. A non-descriptive trademark is a word that does
not identify the characteristics of the product or service to which the mark pertains. For example,
“Apple” is a very non-descriptive trademark for computers or phones, because it has absolutely

12
58 DLR (2006) 287
13
17 BLC (HCD) (2012) 730
14
Article 15(1), TRIPS Agreement, 1994.

23
nothing to do with computer/phone. So a trademark should consist of fanciful or arbitrary words.
Even use of suggestive words are allowed but not descriptive words.
3. Not deceptive: Risk of confusion: the mark “Real Leather” for goods that are not made of
genuine leather is deceptive. Likelihood of association: e.g. Robi Fashions.
In Sunil Kumar Das Vs. Canon Kabushiki Kaisha,15 application to register the popular brand name
'CANON' for hosiery goods manufactured locally was denied as the selection of the mark was
made with the intention to deceive and cause confusion.
Registration of a trademark can be refused if the trademark is not actually used by the owner.16
However, the owner of a registered trademark or well-known mark can register defensive
trademarks with no intention to use but for the purpose of preventing infringement of the
existing mark under s. 43 and Rule 26.

PROTECTION OF TRADEMARK
Trademarks must be registered in order to get protection. Regarding priority of granting
registration, there are two systems: "first to use" and "first to file" systems. First to use is followed
in common law countries such as the UK, USA, Bangladesh while the first to file system is followed
mainly in civil law countries such as Germany, France and China.
However, under Article 6bis of the Paris Convention, 1967, a well-known mark gets protection
as a good trademark even without registration. But a well-known mark may lose its distinctive
character by Dilution, i.e. an unauthorized use of another's trademark on products that do not
compete with, and have little connection with, those of the trademark owner. E.g. Nokia Shoes.
Diluted well-known marks are generally not protected unless registered.

BANGLADESHI LAW ON TRADEMARK

In Bangladesh, the right under a trademark is recognized under the Trademark Act 2009,
Trademark Rules 2015, The Penal Code 1860 and the tort of passing off.
For the purpose of registration of trademarks, the Trademarks Registry is established with the
Registrar of Trademarks as its head under section 3 of the Trademark Act 2009.

Prohibited Marks
Under sections 8-9, no mark or part of a mark shall be registered as a trademark ⎯
1. which comprises or consists of any scandalous or obscene matter; or
2. the use of which would be contrary to any law for the time being in force; or
3. the use of which would be likely to deceive or cause confusion; or

15
57 DLR 93
16
Article 15(3), TRIPS Agreement, 1994.

24
 4. which contains any matter likely to hurt the religious susceptibilities of any class of the
citizens of Bangladesh;
5. which is identical with, or is an imitation of, or contains as an element, an armorial
bearing, flag or other emblem, a name or abbreviation or initials of the name of, or official
sign or hallmark adopted by, any state or international organization created by an
international convention, charter or other instruments, unless authorized by the
competent authority of that state or organization; or
6. which would otherwise be disentitled to protection in a court;
7. the application is made with bad intention and faith.
8. word which is the commonly used and accepted name of any single chemical element or
single chemical compound without sufficient cause.

Registration of Trademark
A trademark may be registered in respect of a certain class of goods or services by complying
with the requirements determined by law for the respective class or classes.
Application to register a trademark can be made by any person who is the owner of the mark to
the Registrar of Trademarks in prescribed form.17 Separate applications shall be made for
separate types of goods or services for which a trademark is sought (s. 15).
The application shall be advertised in trademark journal (s. 17). Any person may file an objection
within two months of the advertisement (s. 18). After hearing and disposal, the trademark will
be registered with effect from the date of application (s. 20).
Priority can be claimed if the same trademark is registered in a WTO/Paris Convention member
state within six months prior to application in Bangladesh. In such case, Bangladeshi trademark
shall be effective from the date of the original registration (s. 120).

Duration of Trademark: S. 22
The registration of a trademark shall be valid for a period of 7 (seven) years, but may be renewed
from time to time indefinitely. The Registrar shall, on application made by the registered
proprietor of a trademark within the prescribed period, renew the registration of the trademark
for a period of 10 (ten) years from the date of expiration of the original registration or as the case
may be, of the last renewal of registration.

Rights under Trademark

Under Article 16 of the TRIPS Agreement, 1994 The owner of a registered trademark shall have
the following rights:

17

http://dpdt.portal.gov.bd/sites/default/files/files/dpdt.portal.gov.bd/forms/97171107_57ff_4bb3_82d4_2ebd596
661fb/Editable_FORM%20TM-1_Application%20for%20registration%20of%20trade%20mark.pdf,
http://dpdt.portal.gov.bd/sites/default/files/files/dpdt.portal.gov.bd/forms/43a56dc7_9d54_4bca_82d5_528f9f48
f0d7/Editable_FORM%20TM-3_Application%20for%20Registration%20of%20an%20Invented%20Word.pdf

25
 ● Exclusive right to prevent all third parties not having the owner’s consent from using
identical or similar signs for goods or services in respect of similar goods or services 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.
● Right to prevent all third parties not having the owner’s consent from using identical or
similar signs for goods or services in respect of goods or services not similar to trademark
owner’s goods if the use indicates a connection between those goods or services and the owner of
the registered trademark

Transfer of Trademark
Trademark rights can be transferred by assignment and transmission with or without goodwill
associated with it (s. 34). Assignment is done by act of the parties. Transmission can happen by
inheritance or by operation of law.
If an unregistered mark is transferred, associated goodwill of the concerned business must also
be transferred as well (s. 35). A Trademark transferred without goodwill means the right to use
trademark associated with only the specific products or services is transferred. Right to
manufacture goods is independent, separate and distinct right from right to market, distribute
and sell goods under the transferred brand name.
A trademark can be assigned by submitting a written proposal to the registrar for approval (s. 36,
38). Certification mark can be assigned with approval of the government (s. 39). After approval,
transferee has to apply for registration of the transfer to the registrar (s. 40). No deed of transfer
relating to transfer of any unregistered mark can be registered under the Registration Act, 1908
(s. 114).

INFRINGEMENT OF TRADEMARK
Under s. 26 of the Trademark Act 2009, trademark is infringed when any person who is not
owner/authorized user of a registered trademark uses for his business:
1. any mark which is confusingly similar to the trademark.
2. any mark identical or similar to the trademark in respect of the same or similar type of
products of the registered trademark
a. causing confusion or likelihood of association among people; Or
b. for taking undue advantage or causing injury to goodwill of the trademark.
A well-known mark can be infringed by unauthorized use of any mark which causes likelihood of
association injuring goodwill of the owner (s. 26).
Bona fide use of the following is not infringement (s. 31):
1. Own name or predecessor’s name, e. g. Pran Sweets, if the owner’s name is Pran Gopal!
2. Name of the place of business.
3. Description or feature of own product or service.

26
REMEDIES FOR TRADEMARK INFRINGEMENT
Remedies for enforcing trademark rights are available under the following laws:
1. The Trademark Act, 2009.
2. The Penal Code, 1860.
3. Law of Tort: Passing Off.
Only owners of a registered trademark or well-known mark have civil and criminal remedies
against infringement of the trademark under the Trademark Act, 2009. However, remedy under
tort of passing off is available for unregistered marks as well (s. 24-25). The Penal Code, 1860 also
does not require registration of a trademark in order to constitute an offence.
In the case of Dominous Pizza vs. Domino's Pizza Inc., 2007,18 a civil suit for enforcing unregistered
trademark Domino’s Pizza was filed under the Trademark Act in the Court of District Judge. The
suit failed because the trademark was not registered in Bangladesh. The remedy under passing
off was also refused because it had to be filed in the lowest ordinary competent civil court.
If an infringement creates both Civil and Criminal liabilities, it is for the trademark holder to
choose any or both of the forums to redress his grievances.19

CRIMINAL REMEDIES
Under the Trademark Act
The following Criminal remedies are available for trademark infringement under the Trademark
Act, 2009:
1. Imprisonment
2. Fine
3. Forfeiture
4. Cost of prosecution.
The following acts are punishable with imprisonment and/or fine:
1. Using false trademarks.
2. selling products with false trademarks.
3. Falsely representing any trademark as registered.
4. Registering false entry in the trademark registry.
Imprisonment can be imposed from 6 months to 3 years. Fine can be imposed from 50,000 to
300,000 taka (s. 73)

18
61 DLR (HCD) (2009) 780
19
37 BLD HCD (2017) 164.

27
Any product which has a false trademark can be forfeited by the court after conviction (s. 79).
Criminal remedies against trademark infringements shall be sought in the court of Metropolitan
Magistrate or a Magistrate of the first class (s. 83).
Trademark Offences under Penal Code 1860
Using False trademark is an offense under section 480 of the Penal Code, 1860 which is defined
as: marking or using any goods or package in a manner reasonably calculated to cause it to be
believed that the goods or so marked or packaged are the manufacture or merchandise of a
person whose manufacture or merchandise they are not.
1. Using false trademark is punishable with imprisonment of either description for a term
which may extend to one year (s. 482).
2. Counterfeiting a trademark is punishable with two years (s. 484).
3. Making or possession of any instrument for counterfeiting a trademark is punishable with
three years (s. 485).
4. Selling goods marked with a counterfeit trademark is punishable within one year unless
taking reasonable precautions is proved (s. 486).
5. Making or using a false mark upon any receptacle containing goods is punishable with
three years imprisonment (s. 487-488).
To get criminal remedies under the Penal Code, complaints must be filed before any Judicial
Magistrate. The offences are non-cognizable, bailable and compoundable with the permission of
the court.

CIVIL REMEDIES
Under the Trademark Act 2009
S. 51, 96-97: Civil remedies available for enforcing trademark rights are as follows:
1. Cancellation or modification of trademark.
2. Injunction
3. Damages
4. Account of Profits
5. Delivery-up of infringing goods.
Application for cancellation or modification of a trademark shall be made to the High Court
Division or the Registrar (s. 51). Such application can be made on the following grounds :
1. Any entry made in trademark registry without proper justification. (s. 51)
2. Failure to comply with any condition stipulated at the time of registration. (s. 51)
3. The trademark was not registered by the owner in good faith and was not used by him in
good faith until one month before submitting an application for registration. (s. 42)

28
 4. The trademark has not been used by the owner in good faith in five years after registration
is granted. (s. 42).
In New Zealand Milk Brands vs. Sanowara Dairy & Industries, 2008,20 the trademark “Red Cow”
registered in favour of the Sanowara Dairy was cancelled because there was no agency
agreement with Unilac Australia Ltd, the original owner of the Trademark.
In Haque and Company Limited Vs. M/s. Western Soap Factory, 1990,21 the petitioner’s
application to cancel the registration of trademark “Capri” for toilet soap was allowed because
the registered owner never used the trademark in good faith with the specified product.
Remedies of injunction, damages, account of profit or delivery-up resulting from trademark
infringement can be obtained by bringing suit before the court of District Judge (s. 96).

Passing Off
Suit for passing off can be filed in any civil court having jurisdiction under the law of torts.
Passing off is a common law tort which protects the goodwill of a trader from misrepresentation.
If a trader misrepresents his goods as those of another trader, which has a good reputation in
the market, it is called the tort of passing off. In a passing off suit, the plaintiff must prove that
there is a similarity in the trade names or marks and that the defendant is passing off his goods
as those of the plaintiff’s.

20
30 BLD (HCD) (2010) 24
21
43 DLR (1991) 304

29