Act/Law wise: Judgment of Supreme Court of Bangladesh

ALL A B C D E F G H I J K L M N O P Q R S T U V W X Y Z



Trade Marks Act, 1940
Section/Order/Article/Rule/Regulation Head Note
Section 2(1)(2)

Trade mark for use in respect of a limited area—perfectly valid.
The words within the ‘Provinces and the Capital of the Federation” mean any place within the Provinces and the Capital of the Federation.
It is possible under the Act V of 1940 for a person to apply for the registration of a trade mark to be effective within a limited area if he is not interested in the trade in any other area.
M/S Crescent Pak Soap and Oil Mills Vs. Deputy Registrar of Trade Marks, Chittagong (1965)17 DLR (SC)163. ....View Full Judgment

Section 2(1)(e)

Use of ‘Camel’ mark or design in one kind of product does not deprive another of its use as a mark or design unless it is proved that such will cause confusion in relation to a particular kind. of goods of long standing—By registration of a design of camel it cannot be said that none else can use it as a design.
Merely because the picture of a camel is incorporated as a part of a trade mark registered for other kinds of products, it cannot be said that thereby a person had acquired any proprietary right in the design of device of a camel even when used without any qualifying words or other embellishments.
Unless one can establish a proprietary right as to the mark or design of a camel by a sufficiently long user it cannot be said that it had become associated with the products manufactured by such a person and that if anyone else uses it with other qualifying features there would still be a chance of the customer or user being confused.
Simply because the design of a camel formed part of a mark registered earlier, it cannot be said that no one else can use that design or device as a part of its own trade mark coupled with other totally different words or designs in respect of goods of different nature.
M/S Crescent Pak Soap and Oil Mills Vs. Deputy Registrar of Trade Marks, Chittagong (1965 17 DLR (SC) 163. ....View Full Judgment

Section 6(1)(d)

The word ‘popular” in the present case though refers to quality of the goods yet not hit by section 6(1)(d), being registered as a trade mark with its surrounding settings along with the name of the company. Trade Marks, Chittagong Vs. Popular Polish house (1969)21 DLR (SC) 114. ....View Full Judgment

Section 6(1) (d) and (e)

The Trade Mark of "Bangladesh Yellow Pages" and the same having given in due course with due notice to all in accordance with law, the same cannot be removed from the register and the application has not been filed bonafide and that there is no allegation the said Trade Mark is not being used regularly by the opposite party No.2 and in the rectification application the petitioner Company has not asserted any special circumstances for which the registered Trade Mark may not be removed from the register. The allegation as made is not bonafide and is harassing in nature and the opposite party No.2 is continuously using the Trade Mark for the last 13 years. "A review is by no means rehearing of the original matter.
M/S Yellow Pages (Pvt.) Ltd. -Vs.- M/S Business Data Information Ltd. and another. 4 ALR (AD) 2014 (2) 123 ....View Full Judgment

Section 10 (1)

Executive Committee—Expiry of term-Appointment of Administrator—
On the expiry of the term the Executive Committee became non-existent and as such no notice under section 10(1) was necessary while appointing Administrator and thus the order impugned was not violative of natural justice. Bangladesh Mudran Shilpa Samity Vs. Bangladesh represented by the Secretary, Ministry of Commerce and others. 2, MLR (1997) (AD) 383. ....View Full Judgment

Sections 10 & 46

Registration of identical or similar trade mark—Such registration in favour of two persons—About the propriety of such registration the Register has to satisfy himself and he may put conditions and limitations as he may think fit to impose. In permitting identical trademarks he has to provide for some ways and devices for protecting the interest of competing proprietors and the interest of the public in general to save them from possible deception and confusion. In the absence of fraud, there could be no direction under section 46 of the Act with regard to registration of trade mark. BCIC vs Sattar Match Works 44 DLR (AD) 208. ....View Full Judgment

Section 10(2)

During the pendency of the appeal the mark has been registered in class-25 in favour of the respondent No. 1 and because of that the appeal has become infructuous as there is no scope for registering the mark under section 10(2) of the Act as the appellant could not make out any case of concurrent user of the mark as has been found by the High Court Division and, that there is no infirmity calling for interference. Sunil Kumar Das vs CANON Kabushiki Kaisha and another 10 BLC (AD) 92. ....View Full Judgment

Section 10

A buyer would be deceived by the similarity in the trade mark– The findings of the High Court Division in respect of similarly of trademark applies equally although the appellant has now changed his trademark to ‘Lucky Star’ in place of “Lucky” which was cancelled earlier. He is manufacturing the very same goods under a slightly different but similar sounding name.
We are of the opinion that the appellant cannot be precluded from manufacturing metallic goods even for sanitary purposes. However, marketing those goods under the trademark ‘Lucky Star’ would impinge upon the duly registered trademark of respondent No.1.
We are inclined to allow the appeal in part inasmuch as the appellant may continue to manufacture his products, as long as he does not market the same with the trademark ‘Lucky Star’. The opposition case No.1888 of 2001 is allowed and the registration of trademark ‘Lucky Star’ in Class-6 is cancelled and is directed to be removed from the Register of Trademarks.
The appeal is allowed in part without, however, any order as to costs. The judgement and order of the High Court Division is hereby modified. (Per Muhammad Imman Ali, J, majority) ...Abdul Haque(Md.) =VS= Jamal Uddin Ahmed(Al-haj), (Civil), 2020 [9 LM (AD) 87] ....View Full Judgment

Sections 14 and 15(1)

Application for registration of trade marks if on the face of it satisfies the authority—should not be refused without objection from any quarter.
The proviso to section 15 lays down that in a case of the present nature if it appears to him that it is expedient by reason of any exceptional circumstances, he may cause the application to be advertised before acceptance.
In the present case the application has been refused without any objection from any quarter. The power of refusal on an application before advertisement can be exercised only when the trade mark mark sought to be registered does not, on the face of it, satisfy any of the the conditions laid down in section 6 of the Act. The discretion vested under section 14 cannot be exercised arbitrarily.
Trade Marks, Chittagong Vs. M/s. Popular Polish House (1969) 21 DLR (SC) 114. ....View Full Judgment

Section 15

Rules framed by the Government prescribing time limit, are enforceable.
Section 84 of the Trade Marks Act authorizes the Central Government to make rules for prescribing the times or periods required by the Act and section 15 merely says that the notice of objection must be filed within the time prescribed, which means prescribed by the Rules. Rules 30 to 35 prescribe the times within which the steps therein specified should be taken. M/s. Crescent Pak Soap and Oil Mills Vs. Deputy Registrar of Trade Marks. Chittagong (1965) 17 DLR (SC) 163. ....View Full Judgment

Section 16(1)

Objection as to the bar of limitation by lapse of time not being raised, the inference is that it is waived.
It was contended that since no objection was filed or evidence produced either within the time prescribed by the rules or in the prescribed manner the inference is there was no objection at all in the eye of the law to the application of the appellant and the same should, therefore, under section 16(1) have been accepted as a matter of course.
Held: This contention does not take into account the fact that the appellant not only did not protest before the Registrar of Trade Marks against the filing of the belated objection, but in fact waived this delay by filing his counter-statement. This amounted to submission to jurisdiction for, the provisions as to notice of opposition and filing of evidence are for the benefit of a party who may well choose to waive the irregularity and join issue on merits. M/s. Crescent Pak Soap and Oil Mills Vs. Deputy Registrar of Trade Marks. Chittagong (1965) 17 DLR (SC) 163. ....View Full Judgment

Section 21

Praying for a decree for permanent injunction. We are of the view justice would be best served if the order of stay passed by this Court is continued till disposal of the suit with direction upon the trial Court to dispose the suit within a time frame. The appeal is disposed of in the following terms:
The impugned judgment and order of the High Court Division stands modified to the effect that the order of stay passed by this Court shall continue till disposal of. the suit. The trial Court is directed to dispose the suit within 3(three) months from the date of receipt of this judgment positively. .....Alam Soap Factory Ltd. =VS= Kazi Abu Hena Shamim Ahsan, (Civil), 2017 (2)– [3 LM (AD) 5] ....View Full Judgment

Section 30

Appellate Divisions observed that it is true that question raised before the Appellate Division was not raised either before the Assistant Registrar or before the High Court Division, but it being a question of law of substantial importance, Appellate Division cannot just ignore it on the ground of non-raising the same before the statutory authority and the High Court Division. Since the question would need determination of fact as indicated hereinbefore, it should be thrashed out right before the statutory authority. In that view of the matter, Appellate Division finds no other alternative but to send the matter back to the Registrar Trade Mark for hearing the opposition case filed by the petitioner afresh and dispose of the same in the light of the observations made in the judgment keeping in mind the provision of clause (a) of the proviso to section 30 of the Act, 1940.
Sohan Kumar Agarwala -Vs.- Department of Patents Designs and Trade Marks (Md. Abdul Wahhab Miah J) 6 ALR (AD) 2015 (2)116 ....View Full Judgment

Section 37 & 46

The petitioners’ case is that they only intended to manufacture OLYMPIC BALPEN at the time of incorporation of the company. Thus it appears that the commodity of respondent No. 2 was already in the market and naturally became popular among the people and they also obtained registration of the trade mark on 15.08.1990 and subsequently the same was renewed for another period for 15 years as per law. hence it is clear that the petitioners’ commodity was not in the market when the respondent’s commodity namely OLYMPIC BALPEN was in the market since 1988 and its registration was obtained —Held; The High Court Davison, therefore rightly held that the petitioners were not entitled to file applications for rectification of the trade mark registry as prayed for. Tripti Industries Ltd & Ors Vs. Govt. of Bangladesh. 15 BLT (AD)163 ....View Full Judgment

Section 46

The High Court Division, considering the above position, allowed the application of the respondent No.1 and expunged the trade mark of the appellant, being No.38902 in class 29, from the Registry of Trade Marks and directed the Registrar to rectify the Registry accordingly. We are of the view that the High Court Division, on consideration of the materials on record and upon correct assessment of the provisions of law, allowed the application filed by the respondent No.1 under Section 46 of the Trade Marks Act 1940 in accordance with law and accordingly no interference is called for. .....Samir Kumar Ghosh =VS= Anil Kumar Ghosh, (Civil), 2018 (2) [5 LM (AD) 403] ....View Full Judgment

Section 46(4)

Cancellation of registration of trade mark obtained by practice of fraud—
In the agreement it was clearly mentioned that the agent shall have no right to the ownership of the trade mark "Diploma". Inspire of that the appellant obtained registration of the trade mark "Diploma" by misrepresentation and practice of fraud which the High Court Division cancelled. The apex court held the impugned judgment and order passed by High Court Division perfectly justified. Unilac Sanowara (BD) Lid. Vs. Bonlnc Foods Ltd. and another 14 MLR (2009) (AD) 91. ....View Full Judgment

Sections 46 & 10

Registration of identical or similar trademark—Such registration in favour of two persons—About the propriety of such registration the Registrar has to satisfy himself and he may put conditions and limitations as he may think fit to impose. In permitting identical trademarks he has to provide for some ways and devices for protecting the interest of competing proprietors and the interest of the public in general to save them .from possible deception and confusion. In the absence of fraud, there could be no direction under section 46 of the Act with regard to registration of trade mark. BCIC vs Sattar Match Works 44 DLR (AD) 208. ....View Full Judgment

Section 46

The point on maintainability of the proceeding pending before the High Court Division cannot be decided on interlocutory matter. The impugned order of stay appears to have been passed on sound ground which call for no interference. Abul Hussain (Md) vs Md Solaiman AH & another 6 BLC (AD) 109. ....View Full Judgment

Section 73

Infringiment of trade marks or Copy Rights—
Suit for infringiment of Trade Marks or Copy Rights lies in the court of the District Judge. No other court inferior to that of the District Judge has jurisdiction to entertain any such suit. Court of the District Judge includes the court of Additional District Judge. Subordinate Judge has no jurisdiction to try any such suit for infringment of Trade Marks or Copy Rights and as such any order passed by the court of Subordinate Judge cannot be protected. Even in a suit for compensation for infringment of Trade Marks or Copy Rights temporary injunction can well be granted in order to prevent the recurrence of infringment. Universal Phamaceuticals Ltd. and another Vs. Social Marketing Company. 2, MLR (1997) (AD) 200. ....View Full Judgment