This article is written by Akhi Akter Nishi, University of Information Technology and Sciences (UITS), LLB (4th Year), during her internship at LeDroit India.
KEYWORDS: Well-known trademarks, Bangladesh, Trademarks Act 2009, TRIPS Agreement, Trademark infringement.
ABSTRACT:
The protection of well-known trademarks is an important part of Bangladesh’s intellectual property system. It shows the country’s commitment to international responsibilities and its effort to protect its commercial brand. This article examines how well-known marks are recognized and protected under the Trademarks Act of 2009. It focuses on recent designations by the Department of Patents, Designs, and Trademarks (DPDT). Using laws, court decisions, and key international agreements like the TRIPS Agreement and the Paris Convention, the discussion situates Bangladesh’s approach in a wider global context. The review points out significant strengths, such as alignment with global standards, along with ongoing issues like procedural delays, limited public access to designation information, and gaps in enforcement. By combining legal research and real-world observations, this study explains how to strengthen well-known trademark protection to support fair competition, attract foreign investment, and protect consumers from fraud. The paper ends with policy suggestions aimed at increasing transparency, improving efficiency, and encouraging international cooperation in trademark enforcement.
INTRODUCTION:
In today’s connected global market, brand identity is a valuable economic asset that reflects years of investment, reputation, and consumer loyalty. Well-known trademarks stand out among various types of intellectual property because they are recognized across different regions, regardless of whether they are registered or used in a specific market. Protecting these trademarks goes beyond safeguarding private interests; it also relates to public policy. The aim is to reduce consumer confusion, prevent unfair competition, and uphold the integrity of the marketplace.
Bangladesh, as a member of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) and the Paris Convention for the Protection of Industrial Property, has integrated international obligations into its domestic laws. The Trademarks Act of 2009 protects well-known brands, aligning national legislation with global standards. Sections 10(4) and 10(5) stop the registration of marks that are identical or similar to well-known trademarks, even if they apply to unrelated goods or services, if their use suggests a connection or undermines the mark’s distinctiveness. Section 26(7) expands protection by acknowledging infringement even if a well-known mark is not registered in Bangladesh, provided its reputation is established.
Despite this legal alignment, the practical application of well-known trademark protection varies. The Department of Patents, Designs, and Trademarks (DPDT) has the authority to recognize well-known marks, but the absence of a publicly accessible and regularly updated database limits transparency. Delays in processing, low awareness among small businesses, and differing interpretations by courts all hinder effective protection. The rising instances of cross-border infringement, especially in the digital space, complicate enforcement, highlighting the need for better administrative and judicial systems.
In this context, the current paper examines the legal recognition and protection of well-known trademarks in Bangladesh, focusing on recent designations. It looks at statutory provisions, court decisions, and administrative procedures to identify the strengths and weaknesses of the current framework. It also places Bangladesh’s approach in a global comparative perspective, pointing out differences and opportunities for reform.
This discussion is informed by three main questions:
- How are well-known trademarks defined and designated under Bangladeshi law?
- What legal and administrative processes are in place for their protection, and how effective are they in practice?
- What steps could improve the system to address both local needs and international expectations?
The article aims to contribute to academic discussion by blending doctrinal analysis with practical insights, along with offering specific policy recommendations. Strengthening the protection of well-known trademarks is not just about meeting international obligations; it is also a key strategy for promoting fair competition, attracting foreign investment, and building consumer trust in Bangladesh’s growing market economy.
CONCEPTUAL & LEGAL FRAMEWORK:
The Trademarks Act of 2009 incorporates international requirements into domestic law. It establishes a foundation for protecting well-known trademarks in Bangladesh. This framework relies on two main components: definition and criteria, and legal scope and enforcement.
- Definition and Criteria
Section 10 of the Act addresses the idea of well-known marks. Subsection 10(4) prohibits the registration of trademarks that are “identical or confusingly similar to a mark or trade description that is well-known in Bangladesh,” even if the goods or services differ. Subsection 10(5) broadens this protection. It bars registration even if the goods or services are not identical, if the use could falsely suggest a connection with the well-known brand or harm its interests. The Act defines reputation—especially as understood by the relevant segment of the Bangladeshi public—as a key factor in determining well-known status under section 10(6).
The Act aligns with international standards by including these protections, particularly the TRIPS Agreement and the Paris Convention. These agreements require member states to protect unregistered well-known marks from confusing or unfair usage.
- Legal Scope and Enforcement
The Act provides solid legal backing for enforcement beyond just definitions. Section 26(7), part of the broader infringement laws, implicitly supports well-known marks. It acknowledges harm caused by unauthorized use, regardless of registration status, as discussed in other sections on statutory enforcement.
However, practical realities question the effectiveness of this framework. The Registrar of Trademarks decides if a mark is “well-known” based on public reputation. Yet, the Department of Patents, Designs, and Trademarks (DPDT) does not have a publicly accessible, updated designation register. This situation undermines administrative transparency and predictability.
Additionally, the statute gives the Registrar considerable discretion, with exceptions under Section 10(2) for “honest concurrent use” or other special circumstances. While this flexibility can address unique situations, it also raises the risk of inconsistency in applying rules to similar cases. Evaluative criteria like “confusing similarity” or “connection” can be subject to different interpretations.
In summary, Bangladesh’s legal framework for well-known marks is sound, with clear prohibitions and recognition methods that meet international standards. However, issues like administrative opacity and varied interpretations limit its practical effectiveness. These inconsistencies highlight the urgent need for clearer rules, transparent practices, and stronger institutional tools to ensure consistent application of the law.
RECENT DESIGNATIONS IN BANGLADESH:
The Department of Patents, Designs, and Trademarks (DPDT) does not provide public, official lists of well-known mark designations online. Practitioners often point this out. A recent Chambers Global Practice Guide (2025) mentions that the Ministry of Industry/DPDT issued a booklet stating that well-known marks receive strong protection, even if they are not registered. This includes protection across multiple classes, which highlights the policy stance despite the absence of a central database.
In this context, courts have become the main venue for establishing reputation and resolving disputes. In the BBC Trade Mark Appeal (High Court Division), the court examined the BBC mark’s reputation and recognized it as a well-known trade mark under Article 6bis of the Paris Convention. This served as the basis for the argument about its registrability.
When conflicts arose with established brands, Bangladeshi courts prioritized earlier use and market reputation. Chambers (2025) notes the High Court Division’s approach, emphasizing the importance of who was the first user in disputes. This analysis typically benefits owners of well-known marks with a long history.
Regarding legal precedents before the 2009 Act, New Zealand Milk Brands Ltd v Sanowara Dairy & Industries Ltd (30 BLD (HCD) 2010) is frequently cited in Bangladeshi scholarship and case digests. It addresses deceptive similarity and identity in conflict evaluation, showing how reputation and prior use relate to registrability and remedies for corrections. This case is referenced by reputable sources (Cambridge journal article; Chancery Law Chronicles index), and practitioners continue to rely on it in legal pleadings and advisory work.
On the post-2009 landscape, a Supreme Court judgment from 2022 (F.M.A. No. 76 of 2021, judgment dated 14 March 2022) refers specifically to a plaintiff’s “registered well-known trademark in Bangladesh” when evaluating confusing similarity and market dominance. This indicates that Bangladeshi courts recognize well-known status during interim and appellate reviews, as long as the evidentiary record supports that status.
While DPDT continues to handle routine registrations and class-specific lists, there is no searchable, official list of well-known designations currently available online. This situation leads to a trend where recognition arises more from court rulings and case narratives than from an administrative database.
In contrast, using the regional context often mentioned by Bangladeshi courts and counsel, Indian courts maintain a published list of well-known marks. This list serves as a persuasive (though not binding) context for Bangladeshi rulings, especially when reputation crosses borders through media and trade.
The practical reality is that (i) well-known status is often debated and validated in court rather than confirmed by a public DPDT registry; (ii) tests for earlier use and confusion continue to be essential; and (iii) courts frequently cite Article 6bis and the TRIPS guidelines when assessing protection across classes and against dissimilar goods that might mislead consumers or dilute reputation.
LEGAL PROTECTION MECHANISMS:
Bangladesh’s legal framework for protecting well-known trademarks consists of three main parts: statutory protections, judicial enforcement, and additional administrative mechanisms. Each part is based on the Trademarks Act of 2009 and backed by examples showing how it works in practice.
- Statutory Protection
Well-known trademarks receive both preventive and corrective protections under the Trademarks Act of 2009:
- Even for different goods or services, Sections 10(4) and (5) ban the registration of marks that are confusingly similar or identical to well-known trademarks if their use would suggest a relationship or harm the mark’s reputation.
- Section 30 allows earlier users, often the owners of well-known marks, to challenge later registrations regardless of who got the registration first, as it acknowledges that prior use is more important than simple registration.
These clauses offer more protection than standard registration systems and align closely with international agreements under the Paris Convention and the TRIPS Agreement.
- Administrative & Border Enforcement
Bangladeshi courts have actively enforced these laws to maintain the uniqueness and priority of well-known marks.
- In BBC v. DPDT (HCD, 2015), the court emphasized prior usage over registration, noting that the BBC mark was well known in Bangladesh long before conflicting marks were registered. A later registration was largely denied due to the priority-of-use principle in Section 30.
- In the Diploma/Red Cow cases, Bonlac/Fonterra faced off against Sanowara Corp. The Appellate Division upheld Bonlac Foods Ltd.’s (now Fonterra) rights in this significant case, ruling that Sanowara’s use of the “Diploma” trademark was illegal and misleading. The decision highlighted the importance of user agreements and past reputation in establishing trademark rights
These cases show how courts defend user reputation and registration integrity, reinforcing legal rights with real-world consequences.
- Administrative & Border Enforcement
Even if statutory and judicial safeguards are strong, the administrative framework that underpins them is still developing:
- During opposition proceedings, the Registrar and DPDT can deny registration or claim well-known status. However, the absence of a public register for well-known trademarks remains a major transparency issue.
- Bangladesh’s trade rules give customs and law enforcement officers the power to seize potentially illegal imports, though their actual effectiveness varies by region and remains underreported.
CHALLENGES & LIMITATIONS
In many ways, Bangladesh’s trademark protection laws, primarily based on the Trademarks Act of 2009, follow international standards. However, businesses and rights holders still face several challenges before these laws can be effectively applied. These challenges affect brand value, customer trust, and investment potential; they are more than just legal formalities.
- No Central Public Registry of Well-Known Marks
Section 11(6) of the Trade Marks Act, 1999, keeps an official public list of recognized, well-known trademarks in countries like India. There is no similar registry in Bangladesh. Without that list:
- Companies struggle to determine whether their intended mark might clash with an existing well-known one.
- Even when a matter has already been resolved, courts and the Department of Patents, Designs and Trademarks (DPDT) must assess “well-known” status from scratch for each case.
For example, despite its widespread fame, the broadcaster had to provide significant proof of notoriety and recognition in the case of BBC v. DPDT (HCD, 2015).
- Slow Dispute Resolution and High Costs
In Bangladesh, lengthy appeals and procedural delays can cause trademark issues to drag on for years. During the ten-year lawsuit in the well-known Diploma (Red Cow) case, infringers were allowed to stay in the market. This not only increases legal costs for brand owners but may also make a brand less distinctive.
- Weak Monitoring and Border Control
Even though Section 10(4) of the Trademarks Act prohibits conflicting mark registration, the DPDT lacks a proactive monitoring system to catch infringement applications early. Customs officials often lack the tools and training needed to verify the legitimacy of brands at the borders. Despite Bangladesh’s obligations under Article 51 of the TRIPS Agreement, this allows counterfeit goods to enter the market.
- Low Public and Business Awareness
In Bangladesh, many small and medium-sized businesses (SMEs) are unaware of the legal consequences of using marks that resemble well-known trademarks. Similarly, many consumers do not understand their role in identifying and avoiding counterfeit products. This lack of knowledge fuels the desire for imitation products.
- No Mutual Recognition with Other Countries
Although TRIPS sets the standard for global protection, Bangladesh lacks bilateral or regional agreements that explicitly recognize internationally acknowledged trademarks. As a result, a brand that is well-protected in Dhaka can still face risks in cities like Kolkata, Kuala Lumpur, and elsewhere.
In conclusion, institutional weaknesses, slow enforcement, and low awareness make Bangladesh’s protection of well-known trademarks appear solid on paper but flawed in practice. Brand owners will continue to struggle with protecting their intellectual property until there are reforms in efficiency, transparency, and cross-border cooperation.
COMPARATIVE ANALYSIS:
Bangladesh’s Trademarks Act of 2009 protects well-known trademarks and shows its responsibilities under the TRIPS Agreement and the Paris Convention. However, its enforcement procedures are not as strong as those in countries with more organized recognition systems. For instance, Section 11(6) of India’s Trade Marks Act creates an official, publicly accessible list of well-known marks. This list provides clarity and reduces ongoing litigation. Similarly, the European Union Intellectual Property Office (EUIPO) combines well-known trademark protection into a centralized, searchable database. This helps ensure consistent recognition across member states. In contrast, Bangladesh evaluates well-known status on a case-by-case basis, with no proactive register or official declaration process. The WIPO Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks calls for transparency, clear criteria, and international cooperation. Unfortunately, these aspects are missing from Bangladesh’s system. Without similar measures, the government faces unpredictable legal decisions, higher enforcement costs, and a weaker deterrent against infringement in both local and global markets.
RECOMMENDATIONS & REFORM PROPOSALS:
To improve the protection of well-known trademarks in Bangladesh, several targeted reforms are necessary:
- Establish a Public Registry- The Department of Patents, Designs, and Trademarks (DPDT) should publish and regularly update an official list of recognized well-known marks, similar to India’s model, to reduce repetitive litigation.
- Clear Administrative Criteria- Adopt transparent evaluation guidelines in line with WIPO’s Joint Recommendation to ensure predictable outcomes.
- Border Enforcement Strengthening- Modify customs procedures to align with TRIPS Article 51 to intercept counterfeit goods effectively.
- Judicial and Administrative Training- Build the capacity of judges, lawyers, and DPDT examiners to handle complex IP disputes.
- Public Awareness Campaigns- Educate SMEs and consumers about the importance of trademark rights to encourage proactive reporting of infringement.
- Cross-Border Cooperation- Negotiate bilateral or regional agreements for mutual recognition to streamline international protection.
Implementing these reforms would bring Bangladesh’s IP system in line with global best practices, boost brand owner confidence, and create a market that welcomes investment.
CONCLUSION:
The protection of well-known trademarks is not merely a matter of commercial interest; it is a cornerstone of consumer trust, market integrity, and compliance with international obligations. While Bangladesh’s Trademarks Act, 2009, formally recognizes such marks, the absence of a public registry, inconsistent judicial recognition, and weak enforcement mechanisms undermine its effectiveness. Comparative insights from jurisdictions like India and the EU demonstrate that transparency, administrative efficiency, and proactive border control can significantly strengthen trademark protection. Bangladesh stands at a critical juncture. By adopting reforms that incorporate WIPO-recommended best practices, enhancing inter-agency cooperation, and fostering public awareness, the country can bridge the gap between legislative intent and practical enforcement. In doing so, it would not only safeguard brand owners’ rights but also strengthen its position in the global trading system, signaling to investors and trading partners that intellectual property rights are respected, enforced, and valued.
REFERENCES
- https://legalsteps.com.bd/ip/law/
- http://bdlaws.minlaw.gov.bd/act-1010.html
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- https://supremecourt.gov.bd/resources/bulletin/4_SCOB_HCD_10.pdf
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