Criminal remedy for trademark infringement Introduction

A trademark is a symbol in the form of a word. It is a device or a label that is applied to articles of commerce with a view to stipulate to the customers that the particular article is a good manufactured or otherwise dealt in by a particular person as distinguished from similar goods manufactured or dealt by other persons. A trademark identifies the product of its origin and guarantees its unchanged quality. A trademark advertises the product and distinguishes it from others. A trademark is a word, phrase, symbol or design, or combination of words, phrases, symbols, or designs used in the course of trade that identifies and distinguishes the source of the goods or services of one enterprise from those of others. A trademark is different from a copyright or a patent or a geographical indication. A copyright protects an original artistic or literary work; a patent protects an invention whereas a geographical indication is used to identify goods having special characteristics originating from a definite territory.

Trademark requires statutory protection to ensure the exclusive right to the proprietors. It is also necessary for the smooth industrial and economical development of a country. In Bangladesh, the Trademark Act 2009 provides protection to trademark proprietors. The Trademark Rules 1963 is also operative here which is very poor statutory support in case of ensuring trademark protection with compliance with international treaties. Therefore, the present laws fail to fulfill the demands of the present digital-based society. This paper focuses on the present situation of trademark protection in Bangladesh; it also determines whether the existing trademark laws provide standard protection to the proprietor of trademarks or service marks; it also highlights the drawbacks of the existing laws and gives ways to remove them.

Trademark infringement is an infringement of exclusive rights attaching to a trademark without the authorization of the trademark owner or any licensee. Trademark infringement typically occurs when a person uses a trademark which may be either a symbol or a design, with resembles the products owned by the other party. The trademark owner may begin an officially permitted proceeding against a party, which infringes its registration. There are two types of remedies are available to the owner of a trademark for unauthorized use of its imitation by a third party. These remedies are an action for passing off in the case of an unregistered trademark and an action for infringement in the case of a registered trademark. An infringement action and an action for passing off are quite different from each other, an infringement action is a statutory remedy and an action for passing off is a common law remedy.

Definition of Trademark

The Trademarks Act 2009 sec2(b) says “Trademark means a mark used or proposed to be used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some person having the rights either as proprietor or as a registered user to use the mark whether with or without any indication of the identity of that person.” Sec 2(f) of the said Act provides that “mark’ includes a device, brand heading, label, ticket, name, signature, word, letter or numeral or any combination thereof. The Agreement on TRIPS article 15 goes_ “signs or combination of signs capable of distinguishing the goods and services of one undertaking from those of other undertakings can be registered as trademarks. These include names letters, numbers, figurative elements, or combinations of colors.”

A trademark is any symbol, word, number, phrase, design, or any combination thereof which is used to identify the source of goods or services. The Trademarks Act, of 2009 defines the term in Section 2(8). It provides for the following classification of marks:

• Registered Trademark
• Mark
• Certification Trademark

A trademark is:

• a?registered trademark? or a mark used in relation to goods so as to indicate a connection in the course of trade between the goods and the person having the right as proprietor to use the mark;
• a mark used in relation to a service so that it leads to the indication that the person has the right to use the mark in the course of trade as a proprietor;
• a mark used or proposed to be used (in the future) in relation to any service or goods indicating a connection, between the goods and the person having the right, either as proprietor or as a registered user (permitted user), to use the mark.

A trademark is generally used to identify the source of goods or services.?

Understanding Trademarks

Trademarks not only help distinguish products within the legal and business systems—but just as significantly—with consumers. They are used to identify and protect words and design elements that identify the?source, owner, or developer of a product or service. They can be corporate?logos , slogans, bands, or the brand name of a product. Similar to a trademark, a?service mark ?identifies and distinguishes the source of a service rather than a product, and the term trademark is often used to refer to both trademarks and service marks.

Using a trademark prevents others from using a company or individual's products or services without their permission. They also prohibit any marks that have a likelihood of confusion with an existing one. This means that a business cannot use a symbol or?brand ?name if it looks or sounds similar, or has a similar meaning to one that’s already on the books—especially if the products or services are related. For instance, a soft drink company can't legally use a symbol that looks like that of Coca-Cola and it can't use a name that sounds like Coke.

Definition of infringement

The?term?is?most?frequently?used?in?reference?to?the?invasion?of?rights?secured?by?Copyright ,?patent,?or?trademark.?The?unauthorized?manufacture,?sale,?or?distribution?of?an?item?protected?by?copyright,?patent,?or?trademark?constitutes?an?infringement.

1. a?trespassing?or?illegal?entering.
2. in?the?law?of?patents?(protected?inventions),?and?copyrights?(protected?writings?or?graphics),?the?improper?use?of?a?patent,?writing,?graphic,?or?trademark?without?permission,?without?notice,?and?especially?without?contracting?for?payment?of?a?royalty.?Even?though?the?infringement?may?be?accidental?(an?inventor?thinks?he?is?the?first?to?develop?the?widget?although?someone?else?has?a?patent),?the?party?infringing?is?responsible?to?pay?the?original?patent?or?copyright?owner?substantial?damages,?which?can?be?the?normal?royalty?or?as?much?as?the?infringers'?accumulated?gross?profits. (See: patent infringement ,??patent ,?copyright ,?trademark ,?plagiarism ,?royalty )

infringement is a violation, a?breach , or an unauthorized act. Infringement occurs in various situations. Harm to one’s right is an infringement. A violation of a statute is also an infringement. In a commercial contract, an infringement happens when one of the contracting parties?breaches ?the terms stated in the contract. In?intellectual property ?areas, an infringement refers to an unauthorized use of a copyrighted or patented invention. (see also:?trademark infringement ,?patent infringement , and?copyright infringement .)

When an infringement happens, the party being harmed usually will file a claim against the harming party. In this case, the infringing party is the defendant, and the harmed party is the plaintiff. If the court decides that the infringement does exist, the court will order remedies for the harmed party.?

Trademark Infringement

According to the Trademark Act, 2009 Infringement is the unauthorized use of a registered trademark. The Act gives the registered proprietor exclusive right to the use of a trademark in respect of the goods that the Trademark is registered.

Without the consent or authorization of the registered proprietor if anyone uses the registered mark commits infringement. Further use of a similar mark to the registered mark does also constitute an infringement of the registered mark.

Infringement is an unauthorized use of a registered trademark. Without the consent or authorization of the owner if anyone uses the registered mark commits infringement. Further use of a similar mark to the registered mark does also constitute an infringement of the registered mark. The 2009 Act gives the registered proprietor of a trademark in respect of any goods the exclusive right to the use of a trademark in relation to those goods. That right is deemed to be infringed by any person who, not being the registered proprietor of the trademark or a registered user thereof using by way of the permitted use.

Following are the circumstances under which a person is deemed to have infringed a registered trademark (the 2009 Act, sec.26):

1. Where a person uses a trademark that is identical or similar to the registered trademark used in the course of trade for similar goods or services not being a ?registered proprietor? or ?permitted user? and causing confusion on the part of the public.

2. Where the registered trademark is used in the course of trade for goods or services which are not similar but have a reputation in Bangladesh and the use of the mark by the person without due cause takes unfair advantage of or is detrimental to the distinctive character or repute of the registered trade mark.

3. Where a person who is not duly authorized by the registered proprietor or a registered user uses the trademark on a material intended to be used, for labeling or packaging goods, as business papers, or for advertising goods or services.

4. Where a person not being a ?registered proprietor? or ?permitted user? uses a registered well-known trademark for the identical or similar goods or services for which the mark has been registered.

5. Where a person not being a ?registered proprietor? or ?permitted user? uses a registered well-known trademark for the goods or services not being identical with or similar to those in respect of which the 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.

Section 26 deals with the Infringement of Trademarks. Usage by a person other than a registered proprietor of the identical or similar trademarks, the Trade Mark deemed to be infringed. On the other hand, Section 27 deals with acts that do not amount to infringement. Lawful users, permitted use, etc. are provided in the section.

Consumer confusion [edit ]

Where the respective marks or products or services are not identical, similarity will generally be assessed by reference to whether there is a?likelihood of confusion?that consumers will believe the products or services originated from the trademark owner.

1.?Strength of the mark

2.?Proximity of the goods

3.?Similarity of the marks

4.?Evidence of actual confusion

5.?Marketing channels used

6.?Type of goods and the degree of care likely to be exercised by the purchaser

7.?Defendant's intent in selecting the mark

8.?Likelihood of expansion of the product lines[3] [4]

There are 3 types of remedies Available

When the rights of a proprietor of a registered trademark are infringed in Bangladesh, the following actions can be taken the remedy them:

1.??Civil remedies

2.??Criminal remedies?

3.??Administrative Remedies?

CRIMINAL REMEDIES

As per Section 73 of the 2009 Act, the punishment for applying for a false trademark so as to mislead consumers about the origin of the goods is imprisonment for up to two years but not less than six months or a fine of up to take two lac but not less than fifty thousand, or both and for a second or subsequent conviction, imprisonment up to three years but not less than one year or fine up to take three lac but not less than one lac, or both. The courts also have the power to set the prison term and the amount of any fine. Such an offense shall be tried by the Metropolitan Magistrate or Magistrate of the first class.

Besides, the Penal Code, 1860 by several sections (e.g. S. 482, 483, 485, 486, 487, 488) provides that such an offender may be punished with imprisonment of either description (simple or rigorous) for a term which may extend to three years, or with fine, or with both.

The author concludes that though protection of unregistered trademarks is available under the Trademarks Act, 2009, it is better to nonetheless register well-known trademarks to avoid possible disputes.

• Using a false trademark so as to mislead consumers about the origin of the goods; and
• Counterfeiting a trademark used by another person. The punishment for using a false trademark is imprisonment for up to one year or a fine, or both. The punishment for counterfeiting is imprisonment for up to two years or a fine, or both. The courts also have the power to set the prison term and the amount of any fine. In addition, the Penal Code identifies a number of activities as criminal offenses and sets out various enforcement measures available to rights holders. Two such offenses and their punishments are as follows.
• Making or possessing any instrument for the purpose of counterfeiting a trademark – the punishment for this offense is imprisonment for up to three years or a fine, or both; and
• Selling, exposing, or possessing for sale or any purpose of trade or manufacture any goods bearing a counterfeit mark –the punishment for this offense is imprisonment for up to one year or a fine or both.

PRELIMINARY MEASURES

In cases of counterfeiting, a rights holder may file a criminal complaint with the police, which then investigate. If the complaint is proven, the case then goes to trial before a court. In addition, police officials may launch raids against counterfeit and pirated goods and may take legal action.

All criminal proceedings begin in the magistrate’s court. All criminal cases relating to false trademarks or counterfeiting are tried by a magistrates court (first or second class, or a metropolitan magistrate in an urban area). Any appeal against the magistrate’s order must be made to a district magistrate or session judge.

Remedies

Remedies available in criminal actions include the following:

• Raids on the premises where the counterfeit goods are stored;
• Seizure of the goods;
• Destruction of counterfeit goods; and/or
• The imposition of penalties on the infringer.
• The following are criminal offenses punishable under the Act, 2009:
• Applying for a false trademark so as to mislead consumers about the origin of the goods;
• counterfeiting a trademark without the assent of the proprietor of the trademark;
• making or possessing any instrument for the purpose of counterfeiting a trademark;
• applying any false trade description to goods or services
• applying false indication of the country to goods or services as regards the place of production or manufacture of them; and?
• selling, or exposing or possessing for sale or any purpose of trade or manufacture any goods bearing a false trademark or description.

The punishment for the above-mentioned is imprisonment for up to two years but not less than six months or a fine up to taka two lac but not less than fifty thousand, or both and for a second or subsequent conviction, imprisonment up to three years but not less than one year or fine up to taka three lac but not less than one lac, or both. The courts also have the power to set the prison term and the amount of any fine. All the above-mentioned offenses shall be triable by the Metropolitan Magistrate or Magistrate of the first class.

Offenses and Penalty:

Section 71 firstly discloses the meaning of applying trademarks and trade descriptions, and secondly, Section 72 mentions the circumstances when the Trade Marks are falsified or falsely applied. The penalties under the Act are as under:

• Section 73: Penalty for falsifying or falsely applying for Trademark: Imprisonment may extend to 2 years, but not less than 6 months, and/or fine which may extend to 2 lac taka, but not less than 50 thousand taka. For a second or subsequent conviction, the imprisonment would range from a minimum of 1 year to 3 years, and/or fine extendable up to 3 lac taka, but not less than 1 lac taka.
• Section 74: Penalty for selling goods to which a false trademark or trade description is applied: Imprisonment for a term up to 2 years, and/or fine. For a second or subsequent conviction, imprisonment for a term of up to 3 years, and/or fine.
• Section 76: Penalty for falsely representing a trademark as registered: Imprisonment for a term up to 1 year, but not less than 6 months, and/or fine up to 1 lac, but not less than 50 thousand taka.
• Section 77: Penalty of improperly describing a place of business as connected with the Trademarks office: Imprisonment for a term which may extend to 1 year but not less than 6 months, and/or with a fine which may extend to 1 lac taka but not less than 50 thousand taka.
• Section 78: Penalty for falsification of entries in the Register: Imprisonment for a term which may extend to 1 year but not less than 6 months, and/or fine, which may extend to taka 1 lac (84,600 INR approx.) but not less than 50 thousand taka.

Cases

Landmark Judgment

There have been several judgments passed by the courts that stand responsible for changing the destiny of remedies available for trademark infringement and clearly laying down the intention behind the judgments delivered by the court. One such case is?DM entertainment v Baby Gift House and ors . In this case, a question arose relating to publicity rights and character retailing. The plaintiff, a popular singer Daler Mehndi who owned a company with the same name possessing all associated rights, alleged that the defendant by creating miniature toys of the public figure was carrying out an unapproved activity and was in turn encouraging a detrimental effect on the reputation of the company and the singer. As there exists no provision specifying a description of passing off, the court relying on precedents declared a compensatory sum of Rs. 1 Lakh to the plaintiff by the defendant.

Further in the famous case of?The Coca-Cola Company Vs. Bisleri International Pvt. Ltd , the Delhi High Court was firm with the fact that if there exists any amount of infringement, then the court’s jurisdiction is likely to be present in order to entertain the concerned suit. The confusion of a brand-name MAAZA being passed off from the plaintiffs’ company to that of the defendant, brought in the solution to the case. The defendant used the trademark both in domestic as well as foreign countries. Further, it was the plaintiff who filed a permanent injunction, thereby claiming losses suffered by the company. The court inferred that the defendant is liable for infringement due to the usage of the trademark beyond the permissible extent and as a result, it issued an interim injunction against the defendant.

Delhi High Court in another famous case called?Makemytrip (India) Private Limited v. Orbit Corporate Leisure Travels ,?declared a judgment based on the law of acquiescence, thereby not restraining the defendant to carry on with its trademark. The facts of the case go as the plaintiff company filed a suit claiming that the defendant cannot carry on using a mark named GETMYTRIP, for the plaintiff claimed that the mark was deceptively similar to theirs. But knowing the same, the plaintiff carried on their activity till one fine day they filed the suit. On this ground, the court quashed the suit thereby allowing the defendant to carry on. This case was indeed remarkable for it made it clear that awareness and knowledge are important before proceeding with a suit. Hence, ignorance is not welcome when it comes to the infringement of trademarks.

What will happen if someone sues me for trademark infringement

A trademark owner who believes its mark is being infringed may file a civil action (i.e., lawsuit) in either state court or federal court for trademark infringement, depending on the circumstances. However, in most cases, trademark owners choose to sue for infringement in federal court. Even when a plaintiff chooses state court, it may be possible for the defendant to have the case "removed" to federal court.

If the trademark owner is able to prove infringement, available remedies may include the following:

• a court order (injunction) that the defendant stop using the accused mark;
• an order requiring the destruction or forfeiture of infringing articles;
• monetary relief, including the defendant's profits, any damages sustained by the plaintiff, and the costs of the action; and
• an order that the defendant, in certain cases, pays the plaintiffs' attorneys' fees.

Conversely, a court may find instead that (1) you are not infringing the trademark, (2) a defense bars the plaintiff's claim(s), or (3) other reasons exist why the trademark owner is not entitled to prevail.

How do I know whether I'm infringing?

To support a trademark infringement claim in court, a plaintiff must prove that it owns a valid mark, that it has priority (its rights in the mark(s) are "senior" to the defendant's), and that the defendant's mark is likely to cause confusion in the minds of consumers about the source or sponsorship of the goods or services offered under the parties' marks. When a plaintiff owns a federal trademark registration on Principal Register, there is a legal presumption of the validity and ownership of the mark as well as of the exclusive right to use the mark nationwide on or in connection with the goods or services listed in the registration. These presumptions may be rebutted in court proceedings.

Generally, the court will consider evidence addressing various factors to determine whether there is a likelihood of confusion among consumers. The key factors considered in most cases are the degree of similarity between the marks at issue and whether the parties' goods and/or services are sufficiently related that consumers are likely to assume (mistakenly) that they come from a common source. Other factors that courts typically consider include how and where the parties' goods or services are advertised, marketed, and sold; the purchasing conditions; the range of prospective purchasers of the goods or services; whether there is any evidence of actual confusion caused by the allegedly infringing mark; the defendant's intent in adopting its mark; and the strength of the plaintiff's mark.

The particular factors considered in a likelihood-of-confusion determination, as well as the weighing of those factors, vary from case to case. And the amount and quality of the evidence involved can have a significant impact on the outcome of an infringement lawsuit.

In addition to claiming the likelihood of confusion, a trademark owner may claim trademark "dilution," asserting that it owns a famous mark and the use of your mark diminishes the strength or value of the trademark owner's mark by "blurring" the mark's distinctiveness or "tarnishing" the mark's image by connecting it to something distasteful or objectionable-even if there is no likelihood of confusion.

An experienced trademark attorney, taking the particular circumstances of your case into consideration, should be able to provide you with an opinion as to the validity and strength of a trademark owner's claims.

Recommendations

Bangladesh always faces a lack of political stability from her birth. As a result, desirable industrial development does not occur here. For smooth industrial development, political stability is a must and needs better trademark protection. In order to strengthen trademark protection in Bangladesh, the Government has to take several steps which can make the Trademark Registry Office speedier and implement the present trademark laws more effectively. They are as follows:

• There must set up a trademark registry office in each Divisional City to scrutinize the trade mark related matters very swiftly and to assist the industrial development smoothly. Presently, in our country only two trademark registry offices; the Head office in Dhaka and the branch office in Chittagong. As a result, the citizens of other cities have to face problems.
• Online trademark application systems should be introduced due to a shortage of trademark registry offices.
• Trademark Journal must be published on the trademark registry office website.
• The number of Deputy Registrars, other officers, and employees must be increased; the number of applications for trademark registration increases every year but due to a shortage of staff it takes around 3-4 years to get trademark registration (where it should take only 12 months, as a result, the investors are becoming frustrated).
• Carrying out regular training for officials at the trademark registry office with a view to maintaining the?provisions of international agreements (Paris Convention and TRIPS Agreement) as regards trademark protection.
• Trade Mark Protection Court should be primarily introduced in the Divisional Cities in order to quickly dispose of suits for trademark infringements and passing off.
• Trademark Rules, 1963 should be replaced with a new one with a view to reflecting the changes that have?taken place since the enactment of the Trademarks Act, 2009. It is pertinent to mention that the 1963 Rules were passed to fulfill the lacunae and complementary to the provisions of the Trademark Act, of 1940. Now it is 2012, and the 1963 Rules are very old to fulfill the demand for present trademark protection. Besides, under the 2009 Act, a new provision of the collective mark has been inserted but the procedure of registration of it has not been mentioned in the Act, 2009. The procedure for publication of a trademark journal is not specified in the present law; it should be determined by the new rules. Different forms of trademarks, service marks, certification marks,s or collective marks should be updated to maintain the consistency of the digital-based society. So, the replacement of the 1963 Rules with a new one is a must.

Conclusion

there is a growing need for registration of trademarks day by day, clearly indicating the awareness developing among people to safeguard their own products. Trademark infringement is a common sight nowadays. Although there exist several remedies to cope with the same, not many are implemented the way they should be. Loopholes in every procedure are carried out to eliminate infringement ultimately hindering the law in hand. Violation of any kind of trademark leads to a negative impact on the individual or the entity thereby reducing the brand value. Along with direct infringement, there arises indirect infringement as well. Although there are no provisions related to indirect infringement, liabilities exist abiding by the principle of universal law. Hence, what is required is a little bit of awareness among individuals in order to avoid facing any kind of infringement on their own product and overcome the same swiftly with legal help and guidance.

l smooth development in a country. In Bangladesh, under the Trademarks Act, of 2009, provisions have been introduced for affording better protection to registered marks and well-known marks, whether registered or not. The law contains adequate standard provisions to deal with matters such as trademark protection of registered or unregistered marks, infringement, and falsifications of them, and proper remedies in compliance with TRIPS Agreement but due to administrative inefficiency, lack of awareness of the people and very old rules (Trademark Rules, 1963), it stands tough to implement the present law (Trademarks Act, 2009) and to ensure exclusive protection to the trade mark proprietors. By removing the present problems better trademark protection can be ensured which can draw the attention of entrepreneurs, at home and abroad, and one day, Bangladesh can turn into an industrially developed country.