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Enforcement of Intellectual Property Rights: Bangladesh Context Naimuddin Ahmed Description: Development of intellectual property largely depends on the body of laws Introductor y Although a developing country and having almost a century-old legal framework relating to intellectual property1, intellectual property rights are gaining increasing recognition and acceptance among various stake-holders and members of the public in Bangladesh. These rights, apart from individual assets of the respective creators of intellectual property, are now regarded as corporate assets of business concerns and more and more commercial concerns are taking interest in transacting business in this area. The development of intellectual property largely depends on the body of laws which clearly define the rights of users, inventors, creators and authors, their enforcement mechanisms and effectiveness of the enforcement agencies and the courts. Having realised the neces-sity of updating the existing laws on intellectual property, the stake-holders have been demanding enactment of new laws in this area in conformity with the guidelines laid down in various international instruments, particularly, the Paris Convention for the Protection of Industrial Property (1967), the Berne Convention for the Protection of Literary and Artistic Works (1971), the International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organisations known as the Rome Convention (1971) and the Agreement on Trade Related Aspects of Intellectual Property Rights known as the TRIPS Agreement (1994). Accordingly, the Bangladesh Law Commission worked on the law of trade marks, copyright, patents and designs. On the basis of its report the law on copyright has already been enacted.2 The proposals of the Law Commission on trade marks are under active

consideration of the Government. The report on patents and designs is at the final stage of preparation. It will not be out of place to mention that with the development of information technology, the world has become "borderless" and the advent of computers, internet, web-site etc. has given birth to a completely new type of intellectual property right. In this paper, therefore, along with the enforcement procedures of the conventional intellectual property rights, this aspect in the law of information technology will also be very briefly touched. 1. Merchandise Marks Act, 1889 2. The Copyright Act, 2000 (Act 28 of 2000). II Enforcement Provisions in the TRIPS Agreement and Constitutional Position "The protection and enforcement of intellectual property rights should contribute to the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technical knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations."3 The enforcement provisions of intellectual property rights in the TRIPS Agreement are in Part III thereof consisting of five sections containing twenty-one articles being articles 41 to 61. Article 41 of the TRIPS Agreement specifically enjoins "effective action against any act of infringement of intellectual property rights."4 It also prescribes such remedies as may act as a deterent to further infringements. There are also other guidelines, such as, fair and equitable enforcement, expeditions trial for offences, etc. International instruments are not ipso facto enforceable by domestic courts in any country unless the provisions thereof are integrated in its municipal law by domestic legislation- only the United States stands as an exception in certain circumstances in view - of the second paragraph of Article VI of the United States Constitution which proclaims "all Treatise made, or which shall be made, under the Authority of the United States" to be the "supreme Law of the Land" along with the Constitution.5 In a state where international treaties do not automatically become

part of domestic law as soon as they are ratified, as in Bangladesh, several options are open to it. Among others, it may adopt any of the following positions: first, it may decline to accede to and ratify the instrument thereby refusing to implement it secondly, it may ratify the instrument but pass no legislation expressly incorporating the instrument into domestic law thirdly, it may ratify the instrument but pass no legislation to incorporate the instrument into domestic law but may proceed to pass specific legislation amending particular aspects of domestic law which conflict with the provisions of the instrument 3 Article 7, TRIPS Agreement. 4 Article 41, TRIPS Agreement. 5 The second paragraph of Article VI of the U.S. Constitution provides: "The Constitution, and the Laws of the United States which shall be made in Pursuance thereof fourthly, it may ratify the instrument and instead of passing incorporating legislation simply direct the administrative authorities to abide by the instrument and in this way, render the instrument domestically operative and effective without, of course, becoming judicially enforceable fifthly, it may ratify the instrument and pass legislation to incorporate its provisions into domestic law and thereby make it fully effective sixthly, it may ratify the instrument and then fail to implement its provisions. The first and the sixth options are the worst for any state in the modern world of 1 inter-dependence and co-operation. It is suicidal for developing states, because, a state having chosen any of these two alternatives is likely to be viewed as a pariah state by the international community. So far as the instruments relating to intellectual property rights are concerned, most of the countries of the world, Bangladesh included, have adopted the fifth option. A detailed discussion of the enforcement provisions contained in articles 41 to 61 of the TRIPS Agreement is not possible for space constraint, nor is it necessary. So, reference to them will be made only when such reference is relevant in the context of the laws of

Bangladesh. III The Laws of Trade Marks, Copyright, Patents and Designs and Implementation of Enforcement Provisions of the TRIPS Agreement Trade Marks The current law on trade marks in Bangladesh is the Trade Marks Act, 1940 and also the Merchandise Marks Act, 1889 but, as has already been stated, a bill for updating the provisions of the law of trade marks is under active consideration of the Government and is likely to be passed soon. It will, therefore, be appropriate to discuss the relevant provisions of the impending enactment. In the Act what constitutes infringement of trade marks has been specifically defined.6 The proprietor or a registered user (under certain conditions) may bring an action for infringement of a trade mark relating to any right in a registered trade mark or for passing off and obtain relief in the form of damages, accounts of profits, delivery up of the infringing labels and marks for destruction or erasure, injunction, etc. Such actions are required to be brought as a suit before the District Court. Apart from such civil actions, certain acts and infringements have been defined as offences punishable by criminal courts.7 In short, falsifying and falsely applying trade marks, making, possessing or disposing of any die, block, machine, plate etc. for falsifying a trade mark, application of any false trade description to goods or services, tampering with an indication of origin of goods or services, selling of goods with a false trade mark or false trade description, representing a trade mark as registered, falsification of entries in the register, and some other 6 Section 27 read with section 28 of the Act. 7 Chapter X of the Act. acts have been defined as punishable offences. The offences are triable by ordinary criminal courts in accordance with the ordinary procedures followed by such courts.8 The offences are punishable with imprisonment and fine. Higher punishments have been prescribed for second and subsequent offences. 8 The offences are punishable with imprisonment and fine. Higher punishments have been prescribed for second and subsequent offences.

Provisions for appeal against a judgment in a civil action as well as a criminal case have been made. In addition to the above, customs officers are empowered to take certain actions on imported goods with false trade marks.9 Copyrigh t The law of copyright has been recently updated incorporating therein the provisions of the TRIPS Agreement with reference to the provisions of the Berne Convention and the Rome Convention. The law of copyright is embodied in the Copyright Act, 2000. In the Copyright Act, 2000, full protection has been granted for all works which are original literary, dramatic, musical or artistic works. The term of protection for such works is "sixty years from the beginning of the calendar year next following the year in which the author dies."10 Copyright protection has also been provided to films, recordings, and broadcasts. The term of protection of cinematograph films and sound recordings is sixty years from the beginning of the calendar year next following the year in which they are published.11 The term of protection of broadcast reproduction is twenty-five years from the beginning of the calendar year next following the year in which the broadcast is made12 Rights of performers are also protected.13 Provisions have also been made for protection of typography including calligraphy.14 According to the provisions in the Act, the copyright owner enjoys exclusive rights of controlling (a) reproduction in any material form, (b) communication to the public, (c) performance, showing or playing to the public, (d) the distribution of copies to the public by sale, (e) transfer of ownership and (f) commercial rental to the public.15 Provisions have been made for establishment of copyright societies for looking after certain rights of copyright owners and enforcement of those rights.16 Provisions have also been made for extending the applicability of the Copyright Act, 2000 to works first published in a foreign country. Thus, protection may be extended to foreign works.17 8 Code of Criminal Procedure, 1898. 9 Section 112 of the Act. 10 Section 24, Copyright Act,

2000. 11 Sections 26 and 27, Copyright Act, 2000. 12 Section 34, Copyright Act, 2000. 13 Section 36, Copyright Act, 2000. 14 Section 39, Copyright Act, 2000. 15 Sections 17 18 21 22 23 Copyright Act 2000 ' 16 Sections 42,43,45 Copyright act 7000 17 Sections 70, 71, Copyright Act, 2000. So far as enforcement provisions of the rights of owners of copyright detailed above are concerned, two types of remedies have been provided in the Act: civil remedies and offences. Where copyright in any work has been infringed, the owner of the copyright including an exclusive licensee and the publisher in case of an anonymous or a pseudonymous work may seek civil remedies in the form of "injunction, damage, accounts and otherwise" by bringing an action in a civil court against the infringer. In appropriate cases the court can also resort to Anton Filler order and Mareva injunction.18 In addition, certain types of infringements have been made penal offences triable by criminal courts. Infringement of copyright in any work is an offence punishable with imprisonment which may extend to three years but shall not be less than six months and with fine which may extend to Taka two lakhs but shall not be less than Taka fifty thousand. Enhanced punishment has been prescribed for second and subsequent offences. Besides, under the Act, use of infringing copy of computer programme, possession of plates for the purpose of making infringing copies, making false entries in the Register of Copyrights and false attribution of authorship have also been made punishable offences. The police is empowered to investigate the offences and has power of search for, and seizure of, infringing copies. The trial is held in ordinary criminal courts according to the normal

procedures.19 Provisions for appeal against the decision of the civil court as well as the criminal court have been made. Patents and Designs The existing law relating to patents and designs is in the Patents and Designs Act, 1911. This Act is in the way of being replaced by another enactment the draft of which has been prepared in conformity with the TRIPS Agreement and which is under consideration by the Law Commission. So, my discussion will be confined to the proposed Act. Under the Act, an invention is patentable if it is new, involves an inventive step, is capable of industrial application and is not excluded by the exclusion clauses of the Act. An invention may be a product or a process.20 The rights of patentees have been defined.21 The term of patent is twenty years from the date of patent.22 Apart from enjoying exclusive rights to exploit the invention, the patent owner can also assign, transmit and conclude licence contracts.23 Infringements of patents have been defined in the Act.24 For infringements civil remedies in the forms of injunction, delivering up of infringed 18 Sections 77, 78, 79, 80, Copyright Act, 2000. For details reg. Anton Piller order and Mareva injunction see: Anton Filler KG v. Manufacturing Processes Ltd., (1976) Ch 55 19 Code of Criminal Procedure, 1898. 20 Sections 3,4,5,6 and 7 of the proposed Patents and Designs Act. 21 Section 56 of the proposed Act. 22 Section 61 of the proposed Act. 23 Section 56 of the proposed Act. 24 Section 113 of the proposed Act. patented product, damages, for an account of the profits and for declaration are available.25 In addition to these civil remedies, certain acts of infringement have been made punishable offences triable by criminal courts.26 The procedures for investigation and trial

of these offences are governed by the normal law of the land.27 Information Technology After the invention of computers and improvement in digital technology and communication systems dramatic changes have taken place, and are also likely to take place in our lives in future. Original literary and artistic works may be created by means of computers and electronic means. Provisions have been made in the Copyright Act, 2000, for the protection of computer programme and electronic works. In addition, as we in Bangladesh presently do not have any law relating to information technology and electronic transactions in the sense in which these are understood in the modern world, i.e., computerized information system and computerized electronic transactions, the Law Commission has proposed a law in this respect embodying, among others, certain infringements and offences relating thereto including procedural laws for trial of such infringements and offences, such as, hacking, unauthorized access to computer system, tampering with computer source documents, etc.28 IV Conclusion The development of intellectual property is to a large extent dependant on effective enforcement mechanisms for protection of the monopolistic aspects of intellectual property rights. An efficient, incorruptible and effective machinery for enforcement of these rights is, therefore, an integral part of the whole system of intellectual property rights. Laws are there providing for administrative remedies as well as judicial remedies, both civil and criminal, but even the best law without enforcement is the worst lawlessness. In Bangladesh, the administrative enforcement is entirely left to the police and the customs authorities in addition to what little is dealt with by the officials of the various departments dealing with intellectual property. The police is overworked, lacks logistics and the technical know-how of intellectual property rights. So is the case with the customs department. There is no separate agency for enforcement of intellectual property rights. As such, prevention of, and punishment for, violations of intellectual property rights in Bangladesh is shockingly low in proportion to their infringements.

In Malaysia, in addition to the police, other agencies have been empowered to enforce the laws relating to intellectual property rights.29 In addition, the Malaysian Government has constituted a Special Copyright Taskforce which is a joint effort by 25 Section 117 of the proposed Act. 26 Sections 129 to 135 of the proposed Act. 27 Code of Criminal Procedure, 1908. 28 Proposed Information Technology (Electronic Transaction) Act. 29 Such agencies are the Enforcement Division of the Ministry of Domestic Trade and Consumer Affairs and the Department of Customs. Various departments of the Government, and this taskforce works in collaboration with various private enforcement agencies, such as, the Recording Industry of Malaysia, the Motion Pictures Association, the Business Software Alliance, the Music Authors' Copyright Protection, the Phonographic Performance (Malaysia) Sdn. Bhd. and the International Federation of Phonographic Industry. The least developed countries may learn from the experience of Malaysia. Judicial enforcement also requires a judiciary and a legal profession well conversant with the latest development in laws on intellectual property rights. In this connection, they must also be conversant with the latest decisions on intellectual property rights of the superior courts of all countries which have adopted the principles of the TRIPS Agreement. The judiciary can also play a critical role by adopting a pro-active attitude while interpreting the laws on intellectual property keeping in mind the objectives of the TRIPS Agreement as enshrined in Article 7 thereof. V Idle Reflections One word before concluding. The key issue between the developed countries on the one hand and the developing countries and the least developed countries on the other, is the issue of the monopolistic rights of the developed countries in intellectual property versus the access of the poor men

of the developing and the least developed countries to these rights. For example, the monopolistic patent rights of big companies in the developed countries induce these companies to keep the prices of essentially life-saving drugs and medicines very high thereby depriving the poor people of access to these drugs and medicines. This issue was a major concern of the developing countries in the United Nations World Conference on Social Development held in Geneva in June, 2000. In this Conference, the Group of 77 which was representing the developing countries proposed "to exclude the patentability of essential and life-saving medicines in order to advance access to such medicines at affordable prices". The developed countries including the European Union, the United States and Canada strongly objected to the proposal arguing that the drug companies required patent rights for providing incentive for innovation and research. So, high profitability was tagged as a condition precedent to natural human impulse for invention. In the aforesaid conference, a weak compromise was sought to be effected. Acknowledging the contribution of intellectual property rights to promoting research and development, it also affirmed human rights to the "highest attainable standards of physical and mental health" and the "critical importance of access to essential medicines at affordable prices." At the same time, it reaffirmed faith in Article 7 of the TRIPS Agreement by declaring that intellectual property rights should contribute to the mutual advantage of producers and users of technology and in a manner conducive to social and economic welfare. The ultimate question, however, remains unanswered: whether intellectual property rights should take precedence over the fundamental human right to life and health?

The development of the IP system depends on the effective enforceability of IP rights. Bangladesh present IP enforcement mechanisms are well organized and the agencies are now well coordinated and their effective measures can limit the number of violations. Infringement is a common problem in the developing countries like Bangladesh but the law enforcing agencies are showing significant developments in enforcing and protecting the Intellectual Property (IP) Rights in Bangladesh. Acquiring and or securing IP rights is of little economic value if

these rights cannot be enforced effectively. The development of the IP system depends on the effective enforceability of IP rights. Bangladesh present IP enforcement mechanisms are well organized and the agencies are now well coordinated and their effective measures can limit the number of violations. The Government has enacted the new law, The Trademarks Act, 2009 giving 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).

To enforce the IP Rights or to limit the violations of IP Rights in Bangladesh the different agencies of the Bangladesh Government are empowered to take effective action under different provisions of the law. The present functional agencies are - Mobile Courts, Rapid Action Battalion (RAB) and the local Police. The agencies are working under different teams in different areas. The IP Right holders can take necessary assistance and co-operation from the aforesaid agencies.

It is possible to minimize the risk of violations by routine monitor and investigation of the markets in different fields and in different parts of the country. The necessary legal action depends on the nature of violation. However, remedies are available under the following provisions:-

1. 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 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 sentence of two years and Tk. 300,000 and three years sentence for the second offense. The other sections are also open depending on the nature of violations.

2. 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.

Recent Action: Munmuns Leather Pvt. Ltd. is the dealer for Bangladesh for American Samsonite brand. They are informed throughly reliable source that a trader has opened Letter of Credit to import items including counterfeit Samsonite suitcases. They lodged a formal General Diary with the local Police Station on October 7, 2010 informing the importation, and the details of importer and also made a representation to the Authorities, The Joint Commissioner of Customs in Dhaka and Chittagong. They immediately contacted with the Authority for necessary action for not delivering the goods. The Authority being satisfied locked the assignment in Dhaka on October 10 and in Chittagong on October 11, 2010. The same procedure is applicable for all unlawful importation with counterfeit trademark.

Bangladesh Penal Code 1860.

There are various sections that deal with trademarks infringement and other violations. The relevant provisions are Section 78 to 489.

Recent Action: Samsonite Corporation vs- Moon Light Travels.

The local agent of Samsonite Corporation initiated a criminal proceeding under the Penal Provision against a trader who imported counterfeit Samsonite product in the year 2008 for marketing in Bangladesh. The Agent investigated markets through their own investigator and found counterfeit product in a famous market, Shahbagh Biponi Bitan. Accordingly the Agent informed the same to Rapid Action Battalion (RAB-3). The Commanding Officer of RAB-3 entrusted the operation to one of its team leaders, Assistant Superintendent of Police. The team leader investigated the place and found the allegation true. The RAB Team conducted raid on February 27, 2008 and arrested three people with huge counterfeit Samsonite product. The local police lodged criminal action under the penal provision. The infringers found no other alternative but to surrender with the local Agent and accordingly disclaimed entire seized items of 310 big suitcases in quantity in favor of the local agent and given adequate compensation including undertaking for not trading anymore with counterfeit Samsonite product. The matter disposed of in February 2010 on the basis of out of court settlement. The Code of Civil Procedure 1908.

Kraft Foods Globe Brands LLC. vs- IBN Sina Food Products Pvt. Ltd.

The brand, Tang is a popular name in concentrated form for preparing soft drinks product. Kraft has secured the IP rights in Bangladesh in the year 1987 and has business since long through its agent, Sajeeb Corporation. A Bangladeshi small entity, Ibnsina Food marketed preparations for soft drink under brand, Ibnsina Orange Tang. On an application with the local police station the enforcing agencies seized the items and put the people under trial. The District Court has also issued an and-interim order restraining the Ibnsina for not trading with the mark Tang.

Ibnsina tried to obtain registration for the mark with suffix Tang but the Trademark Department has rejected all their applications.

Its daylight robbery in Murder, screamed a cult Bangladeshi rock band, and its plea has been heard, writes the Telegraph of Calcutta in its front-page story on tune-lift in the Hindi movie Murder (Telegraph, 20 May 2004). Miles, a very popular Bangladeshi music band (see box) has accused music director Anu Malik, a music-mogul of the Mumbai movie world, of committing pure piracy of one of its original compositions. On receiving messages from fans in the United States, the United Kingdom, Australia and India that their song Phiriye Dao Amar Prem (Give me back my love) had been copied in the soundtrack of Murder, Manam, Hamin and other members of Miles collected a copy of the movie and sat down to watch it themselves. When the song Jana Jane Jana was being played, the band members could hardly believe their ears. Only the language was different Hindi. Otherwise, the lyrics are a shadow of ours, the tune is the same. Even the beat break-ups, the use of guitar and filler notes are the same. How could Anu do such thing? wondered Hamin, one of the guitarists and vocalists of Miles. Even when a musician is inspired by a song, he can only copy eight measures. But this is a complete copy of Phiriye Dao, added Hamin (Bombay Times, 18 July 2004). The Bengali song Phiriye Dao was composed by Miles for its music album Prathasa (Hope) in 1993. It was released in Bangladesh and Pakistan. In 1997 this same song was included in a music album named Best of Miles, Vol. 1 released by the Asha Audio Co. of Calcutta, and it became very popular in both Bangladesh and West Bengal, India. Now the song has been used in the soundtrack of the Hindi block-buster movie Murder without, of course, the permission of its original composers. The Mumbai (previously Bombay) movie world known as Bollywood, in imitation of the United States Hollywood, earns millions of dollars by producing and exporting its films, typically including music and dance, romance and comedy, all over the world, including Bangladesh. Compared with Indias, Bangladeshs movie/music production is just a dwarf. Bangladesh runs a huge trade deficit with India, and the import of movies/music from India contributes significantly to it.

Under such circumstances, copying and reproducing a Bangladeshi song without any payment of royalties is not only unethical but also a blatant violation of the intellectual property rights recognized by the World Trade Organization. It hurts, in this particular case, the business interests of the Bangladeshi rock band Miles. Just as Santana cannot leave a concert without performing Black Magic Woman, we cannot conclude a concert without performing Phiriye Dao. Our songs have a huge potential for the non-Bengali audience. We had planned to release their Hindi versions. Our plans to go Hindi are in jeopardy. We are open to singing for Hindi films too. The offer should have come to us, said Hamin in a description of how the copying of their song had hampered Miles prospects, including, of course, business prospects (Bombay Times, 18 July 2004). And it goes without saying that since Bangladesh is the home of Miles, so when its business interests are hurt, Bangladeshs business interests also are hurt.