Trade Marks Act (V of 1940)
To protect and safeguard the plaintiffs right, interests and title in Playing Cards which are extensively used by the plaintiff, the plaintiff have applied for registration of the Trade Marks "AMERICA", "USA", "DON" AND "VISA" in artistic style along with distinctive colour scheme, design, device and getup under the statutory provision of Trade Marks Act, 1940 in the office of the Directorate of Patents, Designs and Trade Marks, Dhaka being Trade Mark No. 99825, 99826, 99827 and 99828 in class 16 all dated 13.6.2006. Md. Ripon, Proprietor vs. Heze Wanda Playing Cards Co. Ltd. (Md. Abdul Aziz J) (Civil) 6 ADC 819
Section 6(1) (d), 46(2)
Application under section 46 of the Trade Marks Act, 1940 for rectification of the Register of Trade Marks by re- moving the registered Trade Marks. M/S Yellow Pages (Pvt.) Ltd vs. M/S Business Data Information Ltd. (M.M. Ruhul Amin CJ) (Civil) 6 ADC 6 ADC 305
Sections 8 and 10
In deciding the question of similarity between the two marks the test is whether a member of the public is at risk to be confused or deceived. Actual confusion or deception is not necessary, meré likelihood of confusion or deception will be enough, even if the product is in the market for some time. [ Abdul Haque vs Jamal Uddin Ahmed, 73 DLR (AD) 33]
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). (9 LM (AD) 87]
Section 15 and 17 of the Customs Act, 1969: On a bare reading of Section 15 of the Customs Act, 1969 it reveals that there is neither absolute bar in importing parallel goods nor said section gives any unfettered right to the importers to import parallel goods. Section 15 of the said Act is balanced legislation. Section 15(d)(e)(g) and (h) of the said Act authorized the importers to import parallel goods subject to compliance with the procedure/conditions as mentioned in the said provision. Nothing has been stated in said section regarding prior permission of the petitioner in importing parallel goods. Therefore the submission of the learned Advocate for the petitioner that without prior permission of the petitioner no one is legally entitled to import the parallel goods of Unilever Bangladesh is misconceived and fallacious. If any importer fails to satisfy the conditions laid down in Section 15(d)(e)(g) and (h) of said Act the customs authority is empowered under section 17 of the Customs Act, 1969 to detain and confiscate the imported goods. Therefore we are of the view that there is no wholesale restriction in section 15 of the said Act in importing parallel goods. (Para-19)
Section 96 of the Trademarks Act, 2009: The petitioner is the registered trademark holder of the goods in question. Section 96 of the said Act has given protection to the petitioner. Under Section 96 of the said Act, the petitioner company is legally entitled to file suit before civil court for violation of any provision of the Trademarks Act, 2009. (Para-24)
Article 102 of the Constitution is not meant to circumvent or bypass statutory procedures: The legislature made specific provisions in Section 17 of the Customs Act, 1969, Order 4 of the h¡wm¡cn Bjc¡¢e e£¢a Bcn, 2021-2024, and Section 96 of the Trademarks Act for alternative, effective and equally efficacious remedy to the petitioner for violation of any condition laid down in Section 15 of the Customs Act, 1969 regarding importation of parallel goods. Article 102 of the Constitution is not meant to circumvent or bypass statutory procedures as stated above. When a right is created by a statute, which prescribes a remedy or procedure for enforcing the right, resort must be had to that particular statutory remedy before seeking extraordinary and discretionary remedy under Article 102(2) of the Constitution. Judicial prudence demands that this Court should refrain from exercising its jurisdiction under the said constitutional provision. This is a self-restrained restriction of the High Court Division. (Para-25)
When a person is entitled to seek remedy in the form of mandamus: Mandamus is a Latin word which means “We command”. Mandamus is issued to keep public authorities within the limit of their jurisdiction while exercising public functions. It is called a ‘wakening call’ and it awakes the sleeping authorities to perform their duty. It is a judicial remedy in the form of an order of the Court to the government or public authority or Court below to do specific act which they are duty bound to do under the statutory provision of law. Any person who has an interest in the performance of the duty by the authority and they have refused to do the duty following law despite demand in writing are entitled to seek remedy in the form of mandamus. (Para-30)
Exercising jurisdiction under Article 102 of the Constitution this Court is not legally empowered to adjudicate any disputed or contentious matter: At the time of opening the Letter of credit, it is not practically possible for respondent Nos. 7 to 57 to identify the products which are parallel goods or counterfeit products of Unilever PLC. It is the customs authority that can examine the consignment and take the decision as to whether the particular imported consignment is parallel goods or counterfeit products of Unilever, PLC, London. Therefore if the petitioner has definite information that any respondent or anyone is importing parallel goods or counterfeit products of Unilever PLC, London in violation of the conditions imposed in Section 15 of the Customs Act, 1969 he is at liberty to file an application to customs authority regarding specific consignment. In the above backdrop of the matter, we are of the view that this writ petition has been filed relying on the highly contentious issue. A contentious issue is one that different people interpret the issue differently. Therefore, it is a controversial or disputed matter. Under Article 102 (2)(a)(i) of the Constitution on the application of any aggrieved person this court is empowered to pass an order directing a person performing any functions in connection with the affairs of the Republic or of a local authority, to refrain from doing that which he is not permitted by law to do or to do that which he is required by law to do. This power of the High Court Division is discretionary. Exercising jurisdiction under Article 102 of the Constitution this Court is not legally empowered to adjudicate any disputed or contentious matter and this Court is loath to embark upon an enquiry into the disputed question of fact. (Para-46, 47)
Section 15 of the Customs Act, 1969: No direction can be passed considering the anticipation of any person. It has already been held that in section 15 of the Customs Act, 1969 there is no wholesale restriction on importation of parallel goods. Therefore, there is no obligation on the part of the respondents to restrain any person from importing parallel goods or to restrain any person from opening letter of credit regarding importation of parallel goods of Unilever Bangladesh Ltd. Any person (s) is entitle to import parallel goods subject to compliance of the conditions imposed in Section 15(d)(e)(g) and (h) of the Customs Act, 1969. But on that score question of taking prior permission of the petitioner is irrelevant being bereft of any legal approval. (Para-48) [17 SCOB [2023] HCD 137]
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, [3 LM (AD) 5]
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, [5 LM (AD) 403]
Section 46, 10(1), 8(a)
Trade Mark Application No. 13 of 2002 filed by the respondent No.1 under Section 46 of the Trade Marks Act, 1940, allowing the application and making the Rule absolute and directing the registered Trade Mark No.21508 dated 18.12.1984 in Class-30 to be var- ied by way of deletion or omission of the words "NABICO/নেবিকো" both Eng- lish and Bangla. Baby Food Products Ltd. vs. Nabisco Biscuit & Bread Fac- tory (Md. Abdul Matin J) (Civil) 7 ADC 320