Name: Nurnahar Akther

ID: 20-42828-1
Section: A
Course: Intellectual Property Law
Faculty: Riasat Azmi
 1. Sunil Kumar Das Vs. CANON Kabushiki Kaisha and another

Fact: This petition for leave to appeal is directed against the judgment. The petitioner
filed the Application in respect of the hosiery goods for registration of Trade Mark
'CANON'. The Respondent No. 1 opposed the prayer of the petitioner stating, inter alia,
that they are one of the leading manufacturers of electrical and electronic goods and all
goods falling in Class 25 and the accessories of the above mentioned goods for a very
long time and since the inception of their business they have adopted the word 'CANON'
and the 'LOGO' being the first word of their trading style as a Trade Mark for the
aforesaid goods manufactured and sold by them and they are using the said Trade Mark
throughout world including Bangladesh, that their application for registration of the said
Trade Mark for all goods in Class-25, accessories of the aforementioned goods has also
been ordered to be advertised in Trade Marks Journal (ultimately has been registered in
their name), that the said Trade Mark 'CANON' has become associated with their trading
style and at the present any goods or commodities bearing the said Trade Mark 'CANON'
at once denotes and connotes to the Traders and also to the purchasing public as their
goods and nobody else in any part of the world, that adoption of the said Trade Mark
consisting of the word 'CANON' including the 'LOGO' thereof by the petitioner is
absolutely dishonest and the petitioner has adopted the said Trade Mark with mala fide
intention to induce the purchasing public to believe that in purchasing the petitioner's
goods they are actually purchasing the goods of the Respondent No. 1 and thereby pass
off his goods as their goods, that the petitioner was not the user of the said Trade Mark at
the time of filing his application, nor has he any use of the same at present. The High
Court Division dismissed the appeal on the observation that the appellant (petitioner
herein) has miserably failed to substantiate his claim by sufficient evidence that he is
manufacturing and marketing hosiery goods in Bangladesh since 1980.

Issue: Whether the decision was error in holding?

Judgement: It has been clearly established that adoption of the mark by the appellant
is dishonest and mala fide, that appellant's application for registration of the Trade Mark
'CANON' with 'LOGO' "is caught by the mischief of section 8(a) of the Act", that having
regard to the scheme of the Act and the maintenance of the purity of the Registrar a
person cannot obtain registration of a Mark unless he alleges and also proves that he is
the proprietor of the Trade Mark and in the instant case the appellant has miserably failed
to prove that he is the proprietor of the Trade Mark applied for, that it is incumbent upon
the appellant to establish that he is a proprietor of the mark and that if questioned is to
substantiate the same, that on perusal of the records it appears that the mark 'CANON'
with its 'LOGO' is registered in favor of the Respondent No. 1 in number of classes in
Bangladesh and the mark is in use throughout the world for the same products and from
the materials and evidence on record it appears that the mark 'CANON' is a world known
 mark which is associated with the products of the Respondent No. 1, that in the instant
Case there are sufficient evidence to show that the mark 'CANON' with its 'LOGO' is
well-known and are in wide use throughout the world and as such Assistant Registrar did
not commit any illegality in relying on Article 6 of the Paris Convention which is
applicable to the present case, that the use of the mark 'CANON' by the appellant is not
bona fide, that during the pendency of the appeal the mark has been registered in Class-
25 in favor of the Respondent No. 1 and because of that the appeal has become
infructuous in as much as there is no scope for registering the mark under.
In that petitioner's goods is hosiery goods and the Respondent No. 1's goods is camera
and other things, that High Court Division was in error in holding that the Respondent
No. 1 is known all over the world as manufacturer of hosiery goods though Respondent
No 1 is manufacturing the camera and its accessories. The Division upon assigning
reason had rejected the same and thereupon dismissed the appeal. On our perusal of the
judgment of the High Court Division we do not find any infirmity therein calling for
interference by this Division. Accordingly this petition is dismissed.

2. Wellcome Foundation Limited Vs. Incepta Pharmaceuticals Limited

Fact: The case of the plaintiff is that the plaintiff is a foreign company incorporated in the
United Kingdom represented in Bangladesh, through their authorized representative and the
plaintiff is a research based producer and merchants of Pharmaceutical, Veterinary and Sanitary
substances and have been carrying on their business since long in the United Kingdom and also
in all the countries of the world including Bangladesh and one of the Popular Trade Marks
registered in Bangladesh in respect of Pharmaceutical, Medical and Veterinary preparations and
substances falling under Class-5 containing the word mark 'SEPTRIM' is used in relation to
Trimethoprim Sulfamethoxazole antibacterial agent and that the said trade mark is used by the
plaintiff on strips, containers, packets, cartons etc. and the plaintiff's Trade Mark 'SEPTRIM' has
a distinctive color scheme, design, device and get-up and the said trade mark "SEPTRIM" has
been registered in favor of The Wellcome Foundation Limited & Trade Mark has been renewed
by the authority concerned from time to time and the registration is still valid. The further case of
the plaintiff is that the defendant started using a deceptively similar Trade Mark "SUPTRIM"
together with the device, colour scheme, design and get-up in the similar type of products in
inferior quality of goods with a view of marketing their inferior products and is creating
confusion and deception in the markets amongst the innocent, unwary medical persons and
public who while purchasing the inferior quality of medicine of the defendant are misled into
thinking that they are in fact purchasing the genuine product of the plaintiff and the defendant is
marketing their products in the market and thereby causing wrongful loss to the plaintiff. The
trade mark, design, get-up, colour scheme of the defendants under the word mark "SUPTRIM" in
respect of pharmaceutical and medical preparations and substances is visually and phonetically
similar to the trade mark "SEPTRIM" in respect of pharmaceutical and medical preparations of
the plaintiff and the defendants have adopted the device including the design, get-up colour
scheme of the plaintiff's superior product in the same design get-up, colour scheme as adopted by
the plaintiff which is objectionable under section 10(1) and 8(a) of the Trade Marks Act, 1940.

Issue: Whether the appellant is liable to get temporary injunction?

Judgement: Section 8 of the Trade Mark Act 1940 imposes prohibition of registration of
certain matters and provides that no "Trade Mark nor part of a trade mark shall be registered
which consists of or contains, any scandalous as designed, or any matter the use of which would
by reason of its being likely to deceive or to cause confusion or otherwise, be disentitled to
protection in a Court of justice. Section 10 of the Trade Mark Act 1940 enjoins prohibition of
registration of identical or similar trade mark. If there is a similarity between the two names
which is likely to create confusion in the minds of the public that while they are doing business
with the plaintiff, they are in fact doing the business with the other, then this comes within the
ambit of passing off. Under such circumstances, the plaintiff is entitled to get an order of
temporary injunction. The plaintiff being prima-facie owner and earlier user of the trade mark is
entitled to an order of temporary injunction restraining the defendant. Plaintiff has a prima facie
case and the balance of convenience and inconvenience is in favor of the plaintiff appellant the
appellant will suffer irreparable loss and injury if temporary injunction is not granted in his favor
till disposal of the suit. Plaintiff’s petition for temporary injunction under order XXXIX Rule 1
and 2 read with section 151 of the Code of Civil Procedure is allowed. Defendant respondent is
restrained by an order of temporary injunction from directly or indirectly manufacturing,
marketing using and selling the pharmaceutical medical and veterinary preparations and
substances and all other products under the Trade Mark "Suptrim" till disposal of the suit.

3. UNILAC SANOWARA (BD) LTD. VS. BONLAC FOODS

LIMITED AND ANOTHER

Fact: The appellant having entered into the User Agreement with the Respondents having full
knowledge of the ownership of trademark of the respondents, committed fraud upon the
Registrar of Trademarks in obtaining the registration. The respondent No.1 filed the Trade Mark
Application before the High Court Division under section 46 Of the Trade Marks Act, 1940
stating, inter alia, that the petitioner Bonlac Foods Limited has been engaged in the business of
manufacturing and marketing of dairy products including powdered milk, butter, cheese, ghee,
edible oils and fats and blends of edible oils and fats With dairy products in Class 29 throughout
the world with reputation for its unrivalled quality for about three decades. With a view to giving
a distinct identity and nomenclature to the products manufactured and marketed by the
respondent they adopted a trade mark consisting of the word 'Diploma'. Due to superior quality
of goods offered under the trade mark 'Diploma' and due to various promotional measures
undertaken the trade mark 'Diploma’ has become very popular throughout the world as a product
of quality bearing confidence and the trade mark has attained distinctiveness and has become
distinctive of the products manufactured and marketed by the respondent No.1 under the
aforesaid trade mark 'Diploma'. It was stated that Unilac Australia Pty Ltd formed a joint venture
company with Sanowara Corporation under the name and style 'Unilac Sanowara (Bangladesh)
Limited' Sanowara Corporation holds major shares in the appellant's company. The respondent
No.1 Bonlac Foods Ltd. with a view to sell its dairy products under the trade mark 'Diploma'
came to Bangladesh and entered into an User Agreement with the appellant. As per the terms and
conditions of the said User Agreement, the respondent is only entitled to use the impugned trade
mark for the purpose of marketing dairy products with the trade mark 'Diploma'. In the said
Users Agreement, Bonlac Foods Ltd. was clearly mentioned as the 'Owner’ of the trade mark
'Diploma' and the appellant was clearly mentioned as the 'User' of the said mark. Therefore, the
appellant Unilac Sanowara (Bangladesh) Limited was not the owner of the trade mark 'Diploma'.
Rather Bonlac Foods Limited is the owner of the impugned trade mark.

Issue: Whether, the registration of the appellant was valid?

Judgement: The definite case of the respondent before the High Court Division in their
application under section 46 of the Trade Marks Act, 1940 is that the registration of the Trade
Mark No. 33243 in Class 29 consisting of the word 'Diploma' was obtained by the appellant by
practicing fraud upon the Trade Marks Registry as the appellant was never the owner of the
impugned trade mark and the trade mark was obtained by the appellant by gross violation of the
stipulation as contained in the User Agreement. So, the High Court Division rightly cancelled the
registration in exercise of its power under section 46(4) of the Trademark Act 39 and 40.

4.Hamza Rubber Industries vs. Golam Dastagir Gazi 53 DLR 430

Fact: The plaintiff applied for registration of a device consisting of elephants as Trade Mark
and got registration. On the prayer of the plaintiff, that registration was renewed for a further
period of fifteen years. As the proprietor of the Trade Mark, the plaintiff has been manufacturing
and marketing cycle and rickshaw tyres and tubes using said device of elephant, and achieved
popularity and goodwill and has thus become the leading tyre manufacturer and seller in the
country. Tempted by the success of the plaintiff, the defendants adopted a device of two
elephants embossed in cycle and rickshaw tyres in a manner identical to that of the plaintiff. Use
of two elephants by the defendants has caused confusion in the market and thereby, the
defendants are passing off their tyres as those of the plaintiff. Customers and the public in
general are being deceived. The defendants have been manufacturing and selling rickshaw tyres
using a device of two double elephants similar to the Trademark of the plaintiff.
Issue: Whether the Trademark being used by the defendants at least nearly resembles the
registered Trade Mark of the plaintiff.

Decision: Learned Additional District Judge has not given any decision on the moot issue of
infringement. The defendants have been producing and selling their tyres for long, and having
come to know that the plaintiff instituted the suit. He also submits showing the latest search
report obtained from the office of the Registrar that six companies are producing and selling
rickshaw tyres using Trademark of Elephant, double or single and of them, the Trade Mark of the
plaintiff only is registered and applications of others including that of the defendant for
registration is pending. If the parties are now left free of any opinion of this Division to fight out
their cases within a few months on the issue of infringement before the Additional District Judge,
none of them appears to be prejudiced. In such circumstances, the impugned order of learned
District Judge refusing temporary injunction does not call for any interference. This appeal
therefore fails. In the result, the appeal is dismissed.

5. Nabisco Biscuit and Bread Factory Ltd. Vs. Baby Food

Products Ltd and another
Fact: This Rule was issued upon an application filed by the petitioner, Nabisco Biscuit & Bread
Factory Ltd (hereinafter referred to as "Nabisco") under section 46 of the Trade Marks Act, 1940
(hereinafter referred to as "the Act") calling upon the opposite parties to show cause as to why
the registered trade mark No. 21508 in Class 30 should not be removed from the Register of
Trade Marks and the Register be rectified accordingly. It is stated in the petition that the
petitioner has been engaged in the business of manufacturing and marketing biscuits of various
types for the last five decades and for the purpose of distinguishing its products adopted a
trademark consisting of the word "NABISCO" on a label with a distinctive colour scheme,
design and get up in erstwhile Pakistan. In the year 1973 the petitioner applied for registration of
the trade mark "NABISCO" with the Trade Marks Registry, Dhaka .The applications were duly
advertised and there being no opposition, the marks were registered. In addition the petitioner
registered associated trademarks of various types of biscuits. It is contended that the trademark
"NABISCO" attained distinctiveness in the market. It is alleged that the opposite party No. 1
Baby Food Products Limited secretly filed an application for registration of the impugned
trademark "NABISCO” which is a deceptively similar trademark to that of the petitioner. It is
contended by the petitioner that the registration of its trade marks being already in existence on
the record, the Registrar of Trade Marks, opposite party No. 2, ought not to have registered the
impugned trademark of opposite party No. 1 The petitioner claims that the Registrar of Trade
Marks, in violation of the statutory prohibition under section 10(1) and 8(a) of the Act allowed
the registration of almost identical trademarks in applications & the petitioner also claims that
such registration, in gross violation of the provisions of law, of deceptively similar trademarks,
has resulted in irreparable loss and suffering to the petitioner's goodwill in its business and also
has resulted in fall in sales of its products. It is alleged by the petitioner that opposite party No. 1
has dishonestly obtained registration of the trade mark "NABISCO" in order to benefit from the
good will of the business of the petitioner who had registered the trademark "NABISCO."

Issue: Whether the Trademark being used by the defendants affects the trademark of the
petitioner?

Judgement : Thus, it would appear that the existence of registration will be taken to be
conclusive of the validity of the trade mark after the expiry of 7 years unless such registration
was obtained by fraud, or unless the trade mark offends against the provision of section 8.
Having found that the provisions of section 8(a) have been infringed, the provisions of section 24
will not be of any avail to opposite party No. 1. Moreover, it is my view that from the use of the
trade mark "NABISCO" by the petitioner, it has become a household item and, as such, any
attempt to imitate as nearly as possible, without infringing the Trade Marks Act, will be an
attempt to register the mark by fraud. However, it cannot be said that the registered trade mark of
the opposite party No. 1 is as a whole deceptive or impinges upon the trade mark of the
petitioner. it is only the words "NABICO" and used in the impugned trade mark, which may be
said to bear similarity to the trade mark of the petitioner. To that extent I feel that ends of justice
will be met if the registration of the opposite party No. 1 is varied and the word "NABISCO" and
are deleted from the trademark of the opposite party No. 1. The remaining part of the trade mark,
not impinging upon the trade mark of the petitioner, is not affected. In the result, the application
is allowed and the Rule is made absolute.