Bangladesh: Intellectual Property – Country Comparative Guides

What different types of intellectual property rights exist to protect: (a) Inventions (e.g. patents, supplementary protection certificates, rights in trade secrets, confidential information and/or know-how); (b) Brands (e.g. trade marks, cause of action in passing off, rights to prevent unfair competition, association marks, certification marks, hallmarks, designations of origin, geographical indications, traditional speciality guarantees); (c) Other creations, technology and proprietary interests (e.g. copyright, design rights, semiconductor topography rights, plant varieties, database rights, rights in trade secrets, confidential information and/or know-how).
Bangladesh is a common law country and majority of its statutes and rules relating to intellectual property rights are deriving from the British Indian legislations. However, in recent times new legislations are being introduced to facilitate and meet the requirements of present day trade. The Trade Marks Act 1940 was abolished by Trademarks Act 2009. Bangladesh Patent Act 2022 has repealed the previous Patents and Designs Act 1911. Copy Right Act 2000 has repealed the Copyright Ordinance 1962. Design Act 2023 replaced the earlier Patents and Designs Act 1911. Bangladesh also enacted Geographical Indication of Goods (Registration and Protection) Act, 2013 The Courts and Tribunals are also setting judicial precedence in the light of verdicts of the superior courts of Sub Continent and the UK.
1. For Patents the governing law is the Bangladesh Patents Act 2022. It is a very recent law which has been incorporated to ensure more compatibility with international standards. New Rules will also be implemented and till such period the previous Rules e. Patents and Designs Rules 1933 will remain effective. Apart from that there is no specific statutory provision regarding rights in trade secrets, confidential information and/or know-how in Bangladesh. It is further mentioned that the Government has enacted the Patents Act 2023 however did not give the new Act the effectiveness as of yet.
2. The Trademarks Act 2009 and Trademark Rules 2015 are the governing laws for protection against registration, passing of and infringement of the trademarks rights. The Act also recognizes the Paris Convention. The Courts and Tribunals are taking strict position to ensure protection of well known international trademarks. The authorities also inclined to recognize concepts like trans-border reputation, the deceptive similarity of trade dress of different trademarks etc. In many cases, the Courts grant ad-interim injunction restraining the unauthorized use. However, civil courts in Bangladesh seldom grant orders like cost, seizure or confiscation. Bangladesh also enacted Geographical Indication of Goods (Registration and Protection) Act, 2013.
3. The Copyright Act 2000 ensures protections against infringement of copyright. The Design Act 2023 is also guarding the rights of the registered Designs.

What is the duration of each of these intellectual property rights? What procedures exist to extend the life of registered rights in appropriate circumstances?

Who is the first owner of each of these intellectual property rights and is this different for rights created in the course of employment or under a commission?

Which of the intellectual property rights described above are registered rights?

Except the Trademark, all other intellectual property rights can be termed as registered rights. For the trademark, the paramount important factor is ‘earlier use’. An earlier user can get appropriate relief even against a registered trademark owner.
Who can apply for registration of these intellectual property rights and, briefly, what is the procedure for registration?

Except certain types of Copyright, any natural person or artificial person [company/corporation] can apply for registration of the aforesaid intellectual property rights. In case of Copyright, only the author [a natural person] of certain types of works can apply for registration.

How long does the registration procedure usually take?

Do third parties have the right to take part in or comment on the registration process?

What (if any) steps can the applicant take if registration is refused?

What are the current application and renewal fees for each of these intellectual property rights?

What are the consequences of a failure to pay any renewal fees and what (if any) steps can be taken to remedy a failure to pay renewal fees?

What are the requirements to assign ownership of each of the intellectual property rights described above?

Is there a requirement to register an assignment of any of these intellectual property rights and, if so, what is the consequence of failing to register?

Yes, for Trade Marks, Patents there is a requirement to register the assignment with the respective concerned authority. Without having such assignment being recorded with concerned Registry the same cannot be effective. There is no mandatory requirement to register assignment in case of Design and Copyright.
What are the requirements to licence a third party to use each of the intellectual property rights described above?
Licensing is permissible under all the respective intellectual property rights. However, these special acts do not line out all the requirements for a valid license categorically. However, certain general conditions are produced below:
- The instrument of license must be in writing and signed by the authorized representative of the IP right holder.
- The instrument must explicitly identify/describe the intellectual property right.
- The instrument of license must clearly mention all terms and conditions governing the rights and obligations of the parties.
Is there a requirement to register a licence of any of these intellectual property rights and, if so, what is the consequence of failing to register?

In case of Patents, the copies of License Agreement and related Application need to be lodged with the concerned registry. Apart from that there is no obligation for recording a license with regard to Trademarks, Design and Copyright.
Are exclusive and non-exclusive licensees given different rights in respect of the enforcement of the licensed IP, and if so, how do those rights differ?

No. None of the Acts explicitly provided difference of rights between exclusive and non-exclusive licensees.
Are there criminal sanctions for infringement of any intellectual property rights, and if so, what are they and how are they invoked?

Criminal Sanction is available only under the Trademarks Act 2009, Copyright Act 2000 and Geographical Indication of Goods (Registration and Protection) Act, 2013.

Trade Marks Act 2009

As per Section 74 of the Trade Marks Act 2009, if a person sells, or expose for sale, pr has in his possession for sale or for any purpose of trade or manufacturer any goods or things to which a false trade mark or a trade description is applied be punished with imprisonment of either description for a term which may extend to 2 (two) years, or with fine or with both. In case of second conviction, the punishment is imprisonment of either description for a term which may extend to 3 (three) years, or with fine or with both.

No Court other than the Metropolitan Magistrate or Magistrate of the First Class shall try an offence under Trade Marks Act 2009. The cases under this Act are to be lodged in the form of a Complaint Petition.

Copyright Act 2000

As per Section 82 of the Act 2000, if a person, other than a film, wilfully infringes or assists in the infringement of any copyright in any work or any right other than the right conferred under section 23 of this Act, shall be punished with imprisonment for a term which may not exceed (four) years but more than 6 (six) months and shall be punishable with a fine not exceeding Tk. 2,00,000 but exceeding Tk. 50,000.

In case of being convicted under section 82 for every second and subsequent offence, one shall be liable to imprisonment for a term not exceeding 3 (three) years but not less than 6 (six) months and to a fine not exceeding Tk. 3,00,000 but not exceeding Tk. 1,00,000 [Section 83].

No Court other than the Session Judge shall try an offence under Copyright Act 2000. The cases under this Act are to be lodged in the form of a Complaint Petition.

Geographical Indication of Goods (Registration and Protection) Act, 2013

As per Section 29 of the Geographical Indication of Goods (Registration and Protection) Act, 2013, any person who falsifies any geographical indication or falsely applies to goods any geographical indication, such act of the person shall be deemed to be an offence, and he shall be liable to be prosecuted and, if convicted, be punished with imprisonment for a term which may extend to 3 (three) years, but not less than 6 (six) months, or with a fine which may extend to taka 2 (two) lac, but not less than taka 50,000 (fifty thousand), or with both.
What other enforcement options are available for each of the intellectual property rights described above? For example, civil court proceedings, intellectual property office proceedings, administrative proceedings, alternative dispute resolution.

For infringement or violation of all intellectual property rights (Trade Marks, Patent, Designs, Copyright and Geographical Indication) civil action for injunction and compensation is available. Apart from that Opposition/Rectification/Cancellation Applications can be initiated with concerned intellectual property authorities.
What is the length and cost of such procedures?

Length and cost of such procedures varies from case to case depending on the complexities of the matter. Usually it may take several years time for completion of any proceedings. The cost also varies from case to case basis.
Where court action is available, please provide details of which court(s) have jurisdiction, how to start proceedings, the basics of the procedure, the time to trial, the format of the trial, the time to judgment and award of relief and whether any appeal is available.

The Court of District Judge is the Court of first instance for seeking relief against infringement of all the intellectual property rights. The proceedings are to be initiated by filing a Plaint [Statement of Claim] along with list of documents. After filing of the suit the District Judge will fix a date for admission hearing. After admission, the plaintiff can file application for interim injunction. The notice of summons will be issued. The defendant has to appear before the Court within prescribed time and file Written Statement [Defense]. Accordingly, the case will reach to trial stage. It may take 6-12 months time. After filing of Written Statement, the court will frame issues in dispute and fix the case for peremptory hearing [Trial/Evidence]. The plaintiff witness will be required to give deposition first supporting the Plaint case. The Witness will be allowed to Exhibit all original copies of the supporting documents. After that defendant counsel may cross examine the plaintiff witness. Subsequently the defendant witness is to depose supporting defense case. The defendant witness will be allowed to file original copies of the supporting documents. After that plaintiff counsel may cross examine the defendant witness. After conclusion of the trial the case may be fixed for hearing of the argument. Finally, the court will fix a date for passing judgment. It may take 8-16 months time from filing of Written Statement.
What customs procedures are available to stop the import and/or export of infringing goods?

As per Intellectual Property Rights Enforcement (import and export) Rules 2019 any right holder of an IPR can apply to the Customs Authority for registering their application/notice in order to restrain unauthorized export or import in violation of their IP rights.

The Import Policy Order of Bangladesh provides that in case of branded goods, registered under any law related to intellectual property in Bangladesh, copy of intellectual property certificate attested by the intellectual property right holder of the concerned branded goods shall be submitted to the customs.
Are any non-court enforcement options or dispute resolution mechanisms mandatory in respect of intellectual property disputes in any circumstances? If so, please provide details.

No.
What options are available to settle intellectual property disputes in your jurisdiction?

The intellectual property disputes can only be settled either amicably out of court or through the court of law. There is no other alternative forum or option.
What is required to establish infringement of each of the intellectual property rights described above? What evidence is necessary in this context?

The right holder needs to prove that the acts done by the delinquent constitute violation of their exclusive right conferred under local statute and common law.
How does the court acquire any necessary information (fact or technical) and in what circumstances does it do so? In particular a) Is there a technical judge, a judge with technical experience, a court appointed expert, an expert agreed by the parties, and/or parties’ expert witness evidence? b) What mechanisms are available for compelling the obtaining and protecting of evidence? Is disclosure or discovery available?

a)

No. The intellectual property matters are being dealt by the District Judge, who also deals with other civil matters. However, The District Judge or any Additional District Judges are the senior most Judges in the lower judiciary.

In litigation relating to Patent matter, the Court can appoint a scientific advisor to assist the court.

b)

The plaintiff can file Application under order XI Rule 1 & 2 of the Code of Civil Procedure for delivery of interrogatories.
How is information and evidence submitted to the court scrutinised? For example, is cross-examination available and if so, how frequently is it employed in practice?

The Court scrutinises documentary evidences in the individual capacity of the learned Judge. Cross examination is the legal right of the other side and in most cases the parties exercise this write and cross examine the witness of the other side.

What defences to infringement are available?

Who can challenge each of the intellectual property rights described above?

Any aggrieved person whether natural or artificial or any other legal entity can challenge the intellectual property rights described in section A.
When may a challenge to these intellectual property rights be made (e.g. during any registration process or at any time during the subsistence of the right)?

After publication in the relevant journal of the intellectual property right, any third party can bring Opposition Proceedings. Alternatively, any aggrieved person can bring cancellation proceedings for removal of the registered intellectual property right from the Registry.

Briefly, what is the forum and the procedure for challenging each of these intellectual property rights and what are the grounds for a finding of invalidity of each of these intellectual property rights?

Are there any other methods to remove or limit the effect of any of the intellectual property rights described above, for example, declaratory relief or licences of right?

Yes. Declaratory relief can be sought, and parties can execute license agreement to limit the effect of the intellectual property rights described in section A.
What remedies (both interim and final) are available for infringement of each of the intellectual property rights described above?

The most sought and granted relief for infringement of the intellectual property rights is injunction. The Court grants both interim and final decree of injunction from case-to-case basis. Apart from that there is scope to grant decree of damages, but Courts of Bangladesh seldom grant such a decree for damages.
What are the costs of enforcement proceedings and is any kind of costs recovery available for successful parties? Is there a procedural mechanism enabling or requiring security for costs?

The amount of court fee depends on the valuation of the dispute and the maximum court fee is BDT 67,500 (including VAT). However, in case suit for permanent injunction the plaintiff can fix the case value at nominal figure and pay negligible amount of court fees. Such fees paid are not practically recoverable.

Governing Law	Duration of each of these intellectual property rights and procedures exist to extend the life of registered rights
Trade Marks Act 2009	10 years from the date of application and may be renewed every ten years for perpetuity.
Copyright Act 2000	For literary, dramatic, musical and artistic work, protection subsists for the lifetime of the author and until 60 years.
Bangladesh Patent Act 2022	20 years from the date of application.
Designs Act 2023	5 years from date of application, and may be renewed for further period of 5 years for two times.
Geographical Indication of Goods (Registration and Protection) Act, 2013	The registration of the geographical indication of goods shall remain valid until the registration of geographical indication of goods is cancelled or otherwise invalidated. The registration of a registered authorized user of the geographical indication of goods shall have effect for 5 (five) years.

Type of Intellectual property rights	First Owner
Trademark	The first adopter and/or earlier user of the trademark.
Patent	The applicant who applied as inventor of the patent.
Copyright	The author of the copyrighted work is the first owner.
Design	The applicant who applied as proprietor of the design.
Geographical Indication	The applicant who is producing geographical indication of goods.

Type of IP Rights	Approximate Duration
Trade marks	In a smooth case around 2 years
Patents	Around 36 months
Designs	Around 6 months
Copyright	Around 3 months
Geographical Indication	Around 6 months

Sl. No.	Type of IP Rights	Third-parties right to take part	Stage
1.	Trade marks	YES	The Trademark Application gets published in Trademark Journal. From the date of publication a third party may file an Opposition Case before expiry of two months from the date of publication.
2.	Patents	YES	Published in Journal before approval and third party can file Opposition within 90 days from the date of publication.
3.	Designs	NO	Only cancellation proceedings can be initiated if registration is granted.
4.	Copyright	YES	At any stage, objection against registration of a copyright may be filed before the Registrar.
5.	Geographical Indication	YES.	Any person, institution, or authority concerned may, in the prescribed manner, give notice to the Registrar by objecting the registration of the geographical indication of goods within 2 (two) months from the date of notification.

Type of Intellectual property rights	Forum against the decision of refusal to register
Trademark	Appeal before the High Court Division of the Supreme Court of Bangladesh.
Patent	Appeal with the Government.
Copyright	Appeal before the Copyright Board.
Design	Appeal with the Government.
Geographical Indication	Appeal to the Government

Trademark	Late fee is applicable if the renewal fee is not deposited within time. A mark can be renewed with late fee.
Patent	If a patent renewal fee is not deposited in a timely manner, the patent is lapsed and restoration is required.  6 months extension (3 months each) can be sought to deposit annuity.
Copyright	Copyright is given for 60 years. Hence, frequent renewal is not required.
Design	A design is required to be renewed in each 5 years. In case of failure to deposit renewal fee a design is lapsed. 6 moths extension is allowed for depositing renewal fee.
Geographical Indication	Where any authorized user fails to renew the registration after expiry of the above mentioned period, it may be renewed on payment of such fine as may be prescribed by rules.

Trademark	To Assign a mark, a Deed of Assignment is required. The deed is to be legalized.
Patent	Assignment of a patent can be done with the Deed of Assignment or Deed of Transfer between the parties. It is to be notarized.
Copyright	Assignment in copyright can be done by Agreement between the parties. The agreement should specify the rights assigned and the duration. It should also mention the royalty, if any.
Design	Design can be assigned by an agreement between the parties. It is to be notarised. The application is to be filed to the Director General.
Geographical Indication	Any right to a registered geographical indication of goods shall not be assigned, transferred, licensed pledged or mortgaged, or no agreement shall be entered into on any such matter.

Intellectual Property Rights	Available Defences
Trade Marks	Dissimilarity Concurrent bonafide user Prior use Estoppel
Copyright	Dissimilarity Lack of originality Prior publication Estoppel
Patent	Dissimilarity Lack of novelty Prior user Experimental use Compulsory license Estoppel
Designs	Invalidity of the design right Prior publication Distinguishable Estoppel
Geographical Indication	Dissimilarity Act of competition not being contrary to honest practices. Further dealings by a Registered owner except where the condition of goods is impaired after putting into market.

What is the duration of each of these intellectual property rights? What procedures exist to extend the life of registered rights in appropriate circumstances?

Who is the first owner of each of these intellectual property rights and is this different for rights created in the course of employment or under a commission?

Which of the intellectual property rights described above are registered rights?

Who can apply for registration of these intellectual property rights and, briefly, what is the procedure for registration?

How long does the registration procedure usually take?

Do third parties have the right to take part in or comment on the registration process?

What (if any) steps can the applicant take if registration is refused?

What are the current application and renewal fees for each of these intellectual property rights?

What are the consequences of a failure to pay any renewal fees and what (if any) steps can be taken to remedy a failure to pay renewal fees?

What are the requirements to assign ownership of each of the intellectual property rights described above?

Is there a requirement to register an assignment of any of these intellectual property rights and, if so, what is the consequence of failing to register?

What are the requirements to licence a third party to use each of the intellectual property rights described above?

Is there a requirement to register a licence of any of these intellectual property rights and, if so, what is the consequence of failing to register?

Are exclusive and non-exclusive licensees given different rights in respect of the enforcement of the licensed IP, and if so, how do those rights differ?

Are there criminal sanctions for infringement of any intellectual property rights, and if so, what are they and how are they invoked?

What other enforcement options are available for each of the intellectual property rights described above? For example, civil court proceedings, intellectual property office proceedings, administrative proceedings, alternative dispute resolution.

What is the length and cost of such procedures?

Where court action is available, please provide details of which court(s) have jurisdiction, how to start proceedings, the basics of the procedure, the time to trial, the format of the trial, the time to judgment and award of relief and whether any appeal is available.

What customs procedures are available to stop the import and/or export of infringing goods?

Are any non-court enforcement options or dispute resolution mechanisms mandatory in respect of intellectual property disputes in any circumstances? If so, please provide details.

What options are available to settle intellectual property disputes in your jurisdiction?

What is required to establish infringement of each of the intellectual property rights described above? What evidence is necessary in this context?

How is information and evidence submitted to the court scrutinised? For example, is cross-examination available and if so, how frequently is it employed in practice?

What defences to infringement are available?

Who can challenge each of the intellectual property rights described above?

When may a challenge to these intellectual property rights be made (e.g. during any registration process or at any time during the subsistence of the right)?

Briefly, what is the forum and the procedure for challenging each of these intellectual property rights and what are the grounds for a finding of invalidity of each of these intellectual property rights?

Are there any other methods to remove or limit the effect of any of the intellectual property rights described above, for example, declaratory relief or licences of right?

What remedies (both interim and final) are available for infringement of each of the intellectual property rights described above?

What are the costs of enforcement proceedings and is any kind of costs recovery available for successful parties? Is there a procedural mechanism enabling or requiring security for costs?

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