Assessment of Current National IP System and Enforcing Laws in Bangladesh; General Introduction
National Laws on IP:
I. Patent: The Patents and Designs Act, 1911- According to this act the rights of the patent provides 16 years of protections.
WIPO has expressed their opinion about the English draft of the new Patent Act, 2011 for Bangladesh. The Law Consultants of the IPR project tested the draft to see whether it fulfills the conditions of TRIPS and whether it is applicable in our country. In the Inter-Ministry Meeting, the Bangla and the English version will be finalized after taking the opinions from the stakeholders.
II. Trade Marks: The Trade Marks Act, 2009- Registration provides 7 years of protection. But after every 10 years, it can be renewed on payment the renewal fees. The Ministry of Law has launched the new Trade Marks Rules, 2015.
III. Copyright: The Copyrights Act, 2000 (amended in 2005) – Copyrights exists 60 years after the death of the copyright owner.
IV. Industrial Design: The Patents and Designs Act, 1911- protection is provided for 5 years. The right can be renewed after every 5 years for twice.
A project is going on to modernize the Design Act. Now the Law Consultants employed by the Intellectual Property Rights Project (IPR Project) are checking the Draft Design Act 2011 to see whether the new act will be favorable for our country and if the new act will be compliant with TRIPS.
V. Integrated Circuit: The Law Consultants are trying to make a draft for the Layout Design (Topographies) Integrated Circuit Law, 2011.
VI. Geographical Indication: The draft of the Geographical Indication Law was uploaded in the website to get the response from the stakeholders. After their response, the draft will be sent to Ministry of Law for vetting.
VII. Utility Model: The Law Consultants of the IPR project are trying to make a Draft Utility Model Law, 2011 according to the conditions of TRIPS and the interest of our country.
VIII. Trade Secret or Undisclosed Information: the law consultants are working to prepare a draft for Protection of Undisclosed Information Law. IP Tribunal: The Registrar of the DPDT acts as a tribunal. One or two Assistant Registrar can be appointed by the registrar in the tribunal. If an IP right is opposed in the tribunal the Registrar or the Assistant Registrar, whoever acting as the judge, will pronounce the judgment based on the hearing between both the parties. Any appeal against the decision of the tribunal lies to the High Court having jurisdiction. Compliance with TRIPS and other International Agreements, Treaties and Protocols: IP laws are in compliance with TRIPS.
Bangladesh is currently party to the following agreements, bodies, treaties and protocols –
- Convention establishing the World Intellectual Property Organization (WIPO) – May 11, 1985
- The Paris Convention for the Protection of Industrial Property – March 03, 1991
III. Berne Convention for Protection of Literarily and Artistic Works – May 04, 1999
- Universal Copyright Convention – May 05, 1975
- The GATT & TRIPs (WTO Agreement) – April 15, 1994. Our country is also a signatory of several WTO treaties and agreements.
Bangladesh is not a party to the Patent Cooperation Treaty (PCT). DPDT has sent a proposal to the government to seek permission to join PCT. That proposal is awaiting the approval of the Foreign Ministry right now. As soon as foreign ministry approves the proposal Bangladesh will apply to join this treaty.
Copyright Office –
Organizational Framework: Copyright Office is a quasi-judicial organization. The activities of the office are being governed by the Copyright Act, 2000 (amended in 2005). The Registrar of Copyright is head of the office.
The copyright board consists of a chairman and not less than two or more than six members. The chairman of the board is either a present or former judge or a civil servant having the status of Additional Secretary or a lawyer having the qualification to become a judge of the High Court Division. Key Functions: Registration of copyright under the Copyright Act is voluntary and not obligatory. The certificate issued by the registrar of copyright constitutes prima-facie evidence of ownership of copyright. The registration process in the office is manual, not automated.
The copyright board acts as an appellate authority and is deemed to be civil court. The Board hears the appeal submitted before it by an affected person for infringement of copyright. The judgment of the board is appeal able to higher courts. Staffing and Human Resources Development Plan: At present 27 employees are working at the Copyright Office against a total of 49 sanctioned positions. To improve the overall situation recently 14 new staffs were recruited through a process of written examination and viva voce. In addition, 29 new positions were created including the post of civil servant i.e. Deputy Registrar and Assistant Registrar.
No extensive skill or training program on copyright is available at any government training institutions. Seniors offices of the Copyright Office i.e. Registrar, Deputy Registrar provide some internal training for the staffs. Seminars regarding IP, copyright, copyright law are organized and participated in raising the awareness level.
National cultural policy: Natural Cultural Policy, 2006 was declared to promote and protect the national culture and the cultural heritage.
Objectives of the National Cultural Policy are as following –
- By following the traditional cultures, to maintain the existence of all the communities in Bangladesh along with having their religious beliefs.
- To combine the cultural works with the entire financial development.
III. To maintain the cultural development of the ethnic communities, & keep a good relation between them.
- Accept the good things in the culture & stop the bad things.
The Ministry of Cultural Affairs (MOCA) and the organizations under the ministry are responsible for the implementation.
The list of the organizations under the MOCA is –
- Bangla Academy
- Bangladesh Shilpakala Academy
III. Bangladesh National Museum
- Bangladesh Folk Arts and Crafts Foundation, Sonargaon
- Copyright Office
- Department of Archaeology
VII. Nazrul Institute
VIII. Department of Public Libraries
- National Book Center
- Cox’s Bazar Cultural Center Promoting the creative industry: On May 2012 Bangladesh adopted ‘Dhaka Declaration on the Diversity of Cultural Expressions’ that includes the policy objective of promoting cultural and creative industries by recognizing the importance of intellectual property rights in sustaining those involved in cultural creativity. Collective management organizations: The formation of Collective Management Organizations
is included in the Action Plan that is submitted to the Ministry of Cultural Affairs for implementation. Economic impact of copyright and related industries: No study was found assessing the economic impact of copyright and related industries at the time of writing this report.
Traditional Knowledge (TK) and folklore: Bangladesh is yet to have any legal framework or administrative mechanism for the protection of TK and folklore and to obtain benefit from their commercialization. The Ministry of Cultural Affairs and its affiliated organizations have limited operations to preserve and promote TK and folklore.
IP and Information and Communication Technology (ICT): The ICT sector of Bangladesh has started growing after 2000 due to some favorable policies of the government. In December 2011, a separate Ministry, Ministry of Information & Communication Technology has been created to ‘give more thrust for the ICT sector’. ICT has been included in the Allocation of Business of the Ministry, and Bangladesh High-Tech Park Authority Act- 2010 has been approved. In addition, the Information and Communication Technology Act and ICT Policy-2009 were formulated and Copyright Act-2000 was amended to protect copyrights of locally designed software. High-Tech Park Authority and Controller of Certifying Authority have been established under the law. But Bangladesh has a long way to go establishing a strong ICT sector with effective utilization of IP in the development of ICT sector.
Bangladesh has great potential in the market of computer software. Software is protected by copyright as literary work specified in section 2(46) of the Copyright Act, 2000. The software market is hugely hampered by piracy due to lack of effective optical disc regulation and enforcement of existing copyright regulation.
The current state of Intellectual Property Enforcement as per existing laws:
Trademarks – The Trademarks Act, 2009 gives the scope to protect the services under International Classes 34-45. The said Act has a clause (109) authorizing the customs officials to call for records and disclose the source of importing items prohibited under the Customs Act, 1969, Section 15(d)(e) & (f). Remedies are available under the following provisions:
The Trademarks Act, 2009
Chapter X: Offenses, Penalties and Procedure
Sections 73 – 91 of the Trademarks Act, 2009 are the relevant provisions for criminal proceeding for trademarks right violation in Bangladesh. If anybody commits the offense as described in items (a) to (g) in Section 73 shall be liable for the first offense to pay penalty of Tk. 200,000 with the sentence of two years and Tk. 3,00,000 and three years sentence for the second offense. The other sections are also open depending on the nature of violations.
The Customs Act [IV of 1969],
Chapter IV. Prohibition and Restriction of Importation and Exportation.
Section- 15 Prohibitions. No goods specified in the following clauses shall be brought, whether by air or land or sea, in to Bangladesh:
(d) Goods having applied thereto a counterfeit trademark within the meaning of Bangladesh Penal Code or a false trade description within the meaning of the Merchandise Marks Act.
Section 17 – Detention and confiscation of goods imported in breach of Section 15 or Section 16. Where any goods are imported into or attempted to be exported out of Bangladesh in violation of the provisions of Section 15 – such goods shall, without prejudice to any other penalty to which the offender may be liable under this Act, or any other law, but subject to rules, be liable to seizure and confiscation.
Copyrights – Copyrights are protected for original intellectual work of literature, art, music, software, etc. under the Copyrights Act – 2000 (Amended in 2005). Copyright exist up to 60 years after the death of copyright owner.
There are three kinds of remedies against infringement of copyright, namely:
- Civil remedies – Civil suits provide the remedy for claiming compensation for infringement of copyright and loss of profits as well. The owner of the copyright can bring a civil action in which reliefs such as Anton Pillar Order (Search Order) injunction, accounts and damages can be sought. A suit or other civil proceedings relating to infringement of copyright is to be filed in the Court of District Judge, within whose jurisdiction the plaintiff resides or carries on business or where the cause of action arose irrespective of the place of residence or place of business of the defendant.
- Criminal remedies – Criminal remedies provides for the imprisonment of the accused or imposition of fine or both, seizure of infringing copies etc. Criminal proceedings are available in order to punish the persons who have violated the copyright law. The infringement of copyright is a cognizable offense and is punishable with imprisonment for a period extending from six months to four years and a fine ranging from Tk. 50,000/- to Tk. 2,00,000/. The Act also provides for seizure of infringing copies and confiscation of all duplicating types of equipment used for manufacturing counterfeit copies. However, if the court is satisfied that infringement is committed without having an intention for profit or noncommercial purpose, the court may give lesser punishment, which may be imprisonment for less than six months and fine for less than 50, 000 taka.
However, in a case of piracy of computer programs, the amount of fine is extended by an amendment to the Copyright Act on May 18, 2005, which is now minimum Tk 1,00,000.00 and maximum Tk. 4,00,000.00, if it is committed for commercial purpose. However, in the case of mere use of infringing copy or if the court is satisfied that it is committed for a non-commercial purpose; the court may impose lesser punishment and lesser fine as well.
- Administrative remedies – Administrative remedies consist of moving to the Registrar of Copyrights to ban the import of infringing copies into Bangladesh when the infringement is by way of such importation and the delivery of the confiscated infringing copies to the owner of the copyright.
Patents- under the Patents and Designs Act, 1911 the remedy is available in form of injunction, delivering up of infringed patented product, damages for an account of the profits. Besides, certain acts of infringement have been made punishable offences to be judged by criminal courts.
Designs- the Patents and Designs Act, 1911 provides civil remedies for the infringement of the copyright of a registered design. The scope of IP enforcement laws: Irrespective of the format, the following judicial and administrative procedures/remedies are included in various IP enforcement laws:
- Jurisdiction courts to handle cases of IP infringement;
- IP right holders have to stand, can be legally represented in court, have a mandatory the obligation to appear in court in order to claim their civil rights;
- Judicial authority to order relevant parties to produce evidence;
- Means to identify and protect confidential information brought forward as evidence;
- Remedies (e.g., injunctions and any compensation for damages that may be ordered); IP enforcement agency: There are several law agencies that deal with the enforcement of IP laws.
Different Government agencies are empowered to take effective action under different provisions of the law. The present functional agencies are –the DPDT, the Copyright Office, Mobile Courts, Rapid Action Battalion (RAB) and the local Police. The agencies are working on different teams in different areas. Border measures: Customs officers normally deal with the tax receiving part. If the tax of the goods are not illegal according to the law of Bangladesh and the tax is paid perfectly, then the customs officers cannot seize goods generally because they do not have adequate knowledge about trade mark or such things. They do not have much to do with the matter whether the goods are real or pirated. If the good is a tax-paid legal good in Bangladesh, then the customs officers actually cannot help much.
The authorities that deal with this problem do not get information about the pirated or counterfeit goods till the goods come into the market. When these goods come into the market and somehow doubted to violate IP laws, then police and other concerned authorities become aware. It has to be informed to the police station. Then the police will investigate the case. If the allegation is proved, then the goods will be seized and a regular case will be filed.
In Bangladesh, a small number of products are being seized. 80% of them are food items.
Generally, food items have expired date. So these items are kept in a place after being seized and after the expired date they got rotten or become of no use. Other items are gathered in a place and they are just kept there for years and years. These items can be used as evidence. They are not generally destroyed.
The right holder himself can take initiative and file a case at the police station if any of his trade marks, patent or copyright is violated. This case can be civil or criminal depending on the kind of violation.
Customs officers can take action if they are informed by the police after filing a case. IP enforcement courts: There is actually no specialized IP enforcement court. But Tribunal Court is formed consisting of the higher officials of the Department of Patent, Design & Trade Mark. Primarily these IP violation cases are handled by them. These cases are called opposition cases.
Journals are published on the trade mark or other IP related things. These journals are open for concerned people for 2 months. If any IP violation matter is seen in these journals then the concerned person or organizations have to file a case in the tribunal court. Then this court primarily watches out the matters regarding the goods to be seized and all that. Usually, the tribunal court at first and the regular court deals with prosecutions related to goods seizures.
According to the law during a case 3 dates can be taken from the court. There is also the time limit for completing the legal proceedings depending upon the type of case. But this timescale or limit cannot be applied most of the time.
In IP laws it has been said that if any product or thing sounds like infringement, looks like infringement, taste or feel like infringement, then that product or thing itself is an evidence of IP violation. Rules of the imposition of fines depend upon various cases as the law is not strictly maintained.
If the goods are seized within the borders of the country the right holder has to report it at the police station and then the police will take care of the case according to the repot of the right holder. IP enforcement officers (lawyers, judges and police): There is no specific training program for the lawyers and judges dealing with IP-related matters. They have to improve their skills by practicing. Various institutions that work on IP laws sometimes arrange short training program for them.
To deal with the IP cases, at first some high officials of Department of Patent, Design & Trade Mark are appointed as the judges of special tribunal court. When these cases go to the regular courts, regular judges deal with them. There is no specific difference between judges dealing with IP cases and those dealing with competition cases. Civil disputes: Both the tribunal court and the regular courts dealing with civil or criminal cases hear cases related to the challenging decisions made by the national IP office. Usually, cases in which a person’s IP violation act can cause loss to another person’s business, that means the cases that affect people’s business or such matter, are heard in the civil courts. Regular professionals who have knowledge of IP laws can act on behalf of clients in court. Government agencies notify the defendant(s) that legal action is being taken by sending a legal notice. Generally, Ministry of Industry and Ministry of Cultural Affairs are responsible for ordering the disclosure of third party involvement in infringement. According to law there is some applicable timescales depending upon the kinds of the cases. But generally it takes a lot of time for legal proceedings.
Different levels of damages/costs are there in the law. But very few of them are maintained in Bangladesh. Many IP violated things are used by the people not only because they are willing to use them but also for their non-affordability. People cannot buy things by their actual price as the prices are really high. So the laws are a little relaxed. Again estimating the cost of the damage is really tough. People buy pirated things despite knowing the truth because the real goods are so expensive that those are unreachable to them. Appeals can be made to the same authority as regular cases.
Counterfeiting and piracy cases are dealt with the other civil or criminal cases unless the case is very sensitive. Educating the public/consumers, and creating awareness: Very few attempts are seen educating the public/consumers and creating awareness of the dangers/the impact of counterfeit and pirated goods – On the IP day, “Nokol ponyo borjon korun” (Discard the counterfeited products) slogan is seen to be said to make people aware. Sometimes concert or other social programs are organized to make the public/consumers aware. Renowned cultural personalities take part in these actions. These types of programs are not organized in an adequate number. So, most of the times, these have little effect on the public. Although no particular statistics are available, the counterfeit and pirated goods have a real negative effect on the economy because the country is deprived of the tax of those types of goods.
(This article is a segment of author’s research on “INTELLECTUAL PROPERTY LAWS IN BANGLADESH: CURRENT STATUS WITH PROBLEMS AND FUTURE DEVELOPMENT” for the degree of MASTER OF PHILOSOPHY, Under International Culture University. This article is published for educational purpose only, plagiarism is strictly prohibited)