Trademarks Act 2009 (Bangladesh) and International Framework

Flashcards covering the definition, classifications, protectability, registration, infringement, and international framework of trademark law based on the Trademarks Act 2009 (Bangladesh).

Trademark

A form of intellectual property consisting of a recognizable sign, design, or trade name that distinguishes products or services of a specific source from those of others.

Mark (Section 2)

A non-exhaustive category including words, letters, numerals, devices, brands, tickets, headings, signatures, names, surnames, or combinations of colors.

WIPO Definition of Trademark

Any sign that individualizes the goods of a given enterprise and distinguishes them from competitors.

TM

Letters in superscript used for an unregistered mark associated with goods.

SM

Letters in superscript used for an unregistered service mark.

®

The letter "R" in a circle designating a registered trademark.

Quality Function

A trademark's role in symbolizing qualities that deserve protection and acting as an advertisement for investment.

Qualitex Co v Jacobson Products Co Inc

A legal case justifying trademark protection as a means to ensure producers reap financial and reputational rewards for their creativity and investment.

Search Costs

Information costs lowered for consumers by trademarks serving as a shorthand to help them make informed choices quickly.

Service Marks

Marks used for services such as airlines or insurance rather than physical commodities, subject to the same registration procedures as trademarks.

Collective Marks (Section 2.25)

Any visible sign designated to distinguish origin or common characteristics of goods/services of different enterprises, owned by an association or group.

Article 7bis of the Paris Convention

The international provision that guarantees protection for collective marks.

Certification Marks (Section 2.28)

A mark adapted to distinguish goods and services certified by a competent person in respect of origin, material, quality, or accuracy.

Distinctiveness (Sections 6-7)

The criterion requiring that a mark must be capable of distinguishing goods or services to be protectable.

Abercrombie Classification

A spectrum categorizing marks as Fanciful/Arbitrary, Suggestive, Descriptive, or Generic based on their level of distinctiveness.

Fanciful/Arbitrary Marks

The strongest category of marks, including wholly invented words like "Kodak" or common words used in unrelated contexts like "Apple" for computers.

Suggestive Marks

Marks that imply qualities of a product without describing them directly, such as "Airbus" or "Blu-ray".

Descriptive Marks

Marks directly relating to a product's nature or origin, generally unregistrable unless they acquire Secondary Meaning.

Generic Terms

Common names for products, such as "Salt" for sodium chloride, which are incapable of trademark protection.

Nice Agreement

An international agreement for the classification of goods and services into $45$ classes for trademark registration.

Duration of Registration (Section 22)

An initial period of $7$ years, renewable indefinitely for $10$-year periods.

Restoration Period

The $1$-year window following expiration during which a mark removed for non-payment of fees may be restored.

Non-Use (Section 42)

Grounds for removing a mark if it was registered without bona-fide intention to use or has seen no use for a continuous period of $5$ years.

Trademark Infringement (Section 26)

The statutory remedy for taking essential features of a mark for use in the course of trade as a printed or visual representation.

Unwary Purchaser Test

Established in M/S A B Biscuit Co Ltd v Haque Brothers Ltd, it determines if a mark is confusingly similar to a buyer with an "imperfect recollection".

Passing Off (Section 96)

A common law remedy for misrepresentation where a party leads the public to believe their goods are those of the plaintiff.

Classical Trinity

The three requirements for a passing off claim: Goodwill, Misrepresentation, and Damage.

Anton Pillar Injunction

A civil remedy involving the search and seizure of infringing goods and labels.

Mareva Injunction

A civil remedy consisting of an asset freeze to prevent the removal of assets from the court's jurisdiction.

Criminal Penalties for False Trademarks

Imprisonment for $6$ months to $2$ years and fines between $50,000$ and $200,000$ BDT.

Article 4 of the Paris Convention

Establishes a right of priority for application filings lasting for a period of $6$ months.

Article 6bis of the Paris Convention

Provides protection for well-known marks even if they are unregistered in the specific country.

Article 6ter of the Paris Convention

Prohibits the unauthorized use of State emblems or international organization logos like WIPO.

Cadila Health Care v Cadila Pharmaceutical

A case holding that higher standards of similarity apply to medicinal trademarks to prevent health risks.

Asian Consumer Care v Marico

Established that a similar "get-up" involving colors and layout creates a prima-facie case for passing off.