The expression, ‘intellectual property’ has come to be internationally recognized as covering mainly two branches, namely; ‘industrial property’ and ‘copyright’. Patents, industrial designs and trade marks used to be considered as different kinds of industrial property. In Bangladesh (during the time of the then British regime), the first legislation of its kind, on copyright was introduced in 1914, which was mainly based on the British Copyright law of 1911. After the independence from Britain new law on copyright was promulgated in 1962. The Copyright Ordinance 1962 has been replaced by the new copyright act of 2000. Now in our country, Copyright law is regulated by the Copyright Act 2000. This is done because of the prevailing situation in Bangladesh and around the world.
In case of patent and designs we have law which we inherited from our Colonial ruler. Patent rights are created by statute and governed by the Patent and Designs Act 1911. We have also law related to trademarks and it is regulated by the Trademarks Act 1940.
Intellectual property has acquired an internationally recognized character. Now it is regarded as “one of the most important sectors” of international law, having its source in various international conventions. At present, each and every country is trying to shape or reshape their legislature, relating to intellectual property; in the light of those international conventions.
The convention establishing the World Intellectual Property Organization (WIPO), concluded in Stockholm on July 14th, 1967, provides that, ‘intellectual property’ shall include rights relating to:
1. literary, artistic and scientific works,
2. performances of performing artists, phonograms and broadcasts,
3. inventions in all fields of human endeavor,
4. scientific discoveries,
5. industrial designs,
6. trade marks, service marks and commercial names and designations,
7. protection against unfair competition,
And all other rights resulting from intellectual activity in the industrial, scientific, literary or artistic fields. (Article 2/VIII) 1
Intellectual property protects application of ideas and information that are of commercial value.2
By virtue of a number of international conventions such as the, Berne Convention and the Universal Copyright Convention, copyright acquired in one country extends to other countries which are member of these conventions. Other intellectual properties are beginning to acquire the same nature as well.
The principles of intellectual property law are substantially the same in all countries with little variation to meet the national requirements of each of the countries.
Bangladesh, as a least developed country, has also enacted intellectual property law in its national legislature.
The Trade Related aspects of Intellectual Property rights (TRIPs) were included as integral part of World Trade Organization (WTO) due to pressure and interest of basically transnational companies and developed countries to ensure maximum profit or interest out of intellectual property in international trade.3 The TRIPs Agreement has been called the most ambitious international intellectual property convention ever attempted. TRIPs agreement has established the protection of intellectual property as a major part of the multinational trading system embodied in the WTO. As one commentator observer, intellectual property is now a key component of this trading system, “the protection of intellectual property is one of the three pillars of the WTO”.4
Bangladesh is now enjoying the transitional period that has been fixed by WTO under the light of TRIPs. So, we do not have a clear idea about the relation between intellectual property rights and economical development. But, it is certain that after the expiration of transitional period, Bangladesh will have to face a serious and severe situation because of the weak legal framework relating to intellectual property.
Now, in brief, the main features of intellectual property laws are given below:
1. The Patents and Designs Acts, 1911:-
(Act no. 11 of 1911)
The salient features of our existing Act are as follows;
Part-1; of the Patents and Designs Act, 1911; is about of patent. This part starts from section-1 and extends to section-42.
Section 2(8) contains the definition of invention; it proceeds as – invention means any manner of new manufacture and includes an improvement and all alleged invention. In sub-section (10) of the same section, provides the explanation of manufacture, “manufacture includes any art, process or manner or producing, preparing or making any article and also any article prepared or produced by manufacturer.”
Section-3 of the Act provides about the manner and mode of an application for patent. According to section-3(1); a patent application can be made by any person, whether he is a citizen of Bangladesh or not. An application can be made, alone or jointly with any other person.
According to section-4 of the Act; there are some provisions about specification. Wection-4(2) states that, a complete specification must particularly describe and ascertain the nature of the invention and the manner in which the invention is to be performed.
Section-10 of the Act, discusses about the topic, “grant and sealing of patent”. According to section-10(1); if there is no opposition of the patent application or, in case of opposition, if the determination is in favor of the grant of a patent, a patent shall, on payment of the prescribed fee, be granted, subject to such conditions if any as the Government thinks expedient, to the applicant, or in the case of a joint application to the applicants jointly, and the Controller shall cause the patent to be sealed with the seal of the Patent Office.
Term of patent, is laid down in section-14(1) of the Act. The duration of patent is sixteen years from its date. Section 15 of the Act; also provides rules regarding extension of the term of patent.
If any patent has been ceased, owing to the failure of patentee to pay any prescribed fee within the prescribed time, the patentee may apply to the controller in the prescribed manner for an order for the restoration of the patent. Section-16 of the Act deals with the matter, restoration of lapsed patent.
Section-22 of the Act contains provisions of “Compulsory Licenses and Revocation”. Both the Govt. and High Court Division are empowered to grant compulsory license or revocation of patent. Any person interested may present a petition to the Govt., alleging that the demand for a patented article in Bangladesh is not being met to an adequate extent and on reasonable terms and praying for the grant of a compulsory license, or in the alternative, for the revocation of the patent.
According to section-25 of the Act, if any patented invention or the mode which it is exercised; is mischievous to the state or prejudicial to the public; Govt. can declare the patent, revoked, by notification in the official Gazette.
Section-26 of the Act; provides the grounds, on which; a patent can be revoked by the High Court Division. Section-26(2) also provides, who can present a petition for revocation of a patent.
Section-30 of the Act; declares that; an innocent infringer of a patent; is exempted from liability or damages for infringement.
Part-II of the Act; describes all about ‘Designs’ or industrial designs. According to section-43(1); any person claiming to be the proprietor of any new or original design not previously published in Bangladesh, can apply to the Controller for the registration of that particular design.
According to section-47(1); the proprietor of a registered design, shall subject to the provisions of this Act, have copyright in the design during five years from the date of registration.
Section-51(A) of the Act; narrates that, any person interested may present a petition for the cancellation of the registration of a design. Such petition should be presented to the High Court Division.
Part-III of the Act; is about, Patent Office and proceedings there at.
According to section-59 of the Act; every register kept under this Act shall at any convenient times be open to the inspection of the public, subject to provisions of this Act.
Section-65 of the Act; states that, in any proceeding under this Act, the Controller shall have the powers of a Civil Court for the purpose of receiving evidence, administrating oaths, enforcing the attendance of witness compelling the discovery and production of documents, issuing commissions, for the examining of witnesses and awarding costs and such award shall be executable in any Court having jurisdiction as if it were a decree of that Court.5
2. The Trade Marks Act; 1940:
(Act No. V of 1940)
The basic principles of the Trade marks Act are described below:
Section-2 of the Trade marks Act contains definitions that are related to this Act. As to, section-2(k); trade mark means a mark used or proposed to be used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some person having the right, either as proprietor or as registered user, to use the mark whether with or without any indication of that identity of that person.
The establishment of Trade marks Registry at Dhaka, appointment of the Registrar and Deputy Registrar are laid down in section-4 of the Act.
According to section-5 of the Act; the registration of a trade mark, requires distinctiveness. Purpose of such distinctiveness is to distinguish those particular goods from the others, which have similarity in nature.
Any mark, containing scandalous design; or be likely to hurt the religious susceptibilities of any class of the citizens, or to be contrary to any law for the time being in force or morality is prohibited for registration of that mark. Section-8 of the Act, say so.
Section-16 of the Act; provides that; when an application for registration of a trade mark has been accepted and either has not been opposed or having been opposed, has been decided in favor of the applicant, the Registrar shall, registers the said trade mark.
Section-18 of the Act, says that; the registration of a trade mark shall be a period of seven years, and may be renewed from time to time in accordance with the provisions of this section.
According to section-20 of the Act; no person shall be entitled to institute any proceedings to prevent, or recover damages for the infringement of an unregistered trade mark.
According to section-46 of the Act; any person aggrieved can apply to the High Court Division or the Registrar, for the cancellation or verification of the registration of a trade mark on the ground of any contravention of, or failure to observe a condition entered on the register in relation there to.
Chapter-IX of the Act; is specially written down for textile goods.
Chapter-X of the Act, states the provisions regarding offences and restriction of use of Royal Arms and state emblems.
According to section-73 of the Act, any suit for the infringement of a trade mark or otherwise relating to any right in the trade mark; shall be instituted to a District Court having jurisdiction to try the suit.6
3. THE COPYRIGHT ACT; 2000:
(Act No. 28 of 2000)
A short overview:-
Section-2 of the Copyright Act; provides all the definitions related to copyright and so on.
According to Chapter II; section -9, 10 and 11; Copyright Board will consist and the post of Register has made. The board is a quasi-judicial body; while working, it would be deemed as a Civil Court.
Definition of copyright is laid down in Chapter III; section 14 of the Act. Section 14(2) includes, ‘computer programs’ as a subject to this Act.
Chapter IV; deals with the ownership of copyright and the rights of the copyright owner. This Chapter starts from section-17; ends to section-23.
Chapter V of the Act; describes all about the term of different types of copyright. Generally the term extends from the lifetime of the author until sixty years from the beginning of the calendar year next following the year in which the author dies; is at section-22. The section also provides that, copyright shall subsist in any literary, dramatic, musical or artistic work (other than a photograph). Section-25 to section-32 of the Act narrates the duration of copyright for different types. For instance, posthumous work, cinematograph films, sound recordings, photograph, anonymous and pseudonymous works, Govt. works, work of any local body, work of international organizations.
Section-50 of the Act; deals with compulsory licenses in works withheld from public.
Chapter X of the Act is about, registration of copyright.
Chapter XII; section-71, describes about infringement of copyright and section-72 of the Act; provides acts not to be infringement of copyright.
Chapter XIV; is about Civil remedies, that are available against infringement of copyright. Exclusively, section-76 of the Act; provides, remedies against such infringement. According to section-81 if the Act; the Court of District Judge, is the Court of first instance of such proceedings.
Chapter XV of this Act; describes offences and punishment. According to section-82 of the Act; any person who knowingly infringes or abets the infringement of copyright; shall be punishable with imprisonment for a term which shall not be less than six months. But, which may extend to four years and fine which shall not be less than fifty thousand taka but which may extend to Taka two lacks. But; where the infringement has not been made for gain in the course of trade or business; the Court may, adequate and special reasons to be mentioned in the judgment, impose a sentence of imprisonment for a term of less than six months or a fine of less than fifty thousand taka.
According to section-95 of the Act; an order made by the Registrar is a subject to appeal to Copyright Board. According to section-96; against any order; made by the Board; any aggrieved person, within thirty days of such order can file a petition of appeal to the High Court Division.7
PROBLEMES AND INSUFFICIENCY OF THE EXISTING INTELLECTUAL PROPERTY LAWS:
PATENTS AND DESIGNS ACT:-
The defects are;-
Like any other national patent system, novelty is an essential requirement of an invention to be patentable under the existing law of our country. But it is clear from the definition of ‘invention’ in section-2(8) of the 1911 Act; the invention to be patentable need not have a commercial pecuniary success. In other words, utility of an invention is not required by this definition. Although lack of utility is a ground for revocation of a patent under section-26(f) of the Act, till now this has not been included in the definition of invention. The 1911 Act makes no difference between patentable and non patentable inventions. Considering the public interest certain items should be kept outside the domain of patent protection. Since under the existing law no item has been excluded from the domain of patent protection, any type of new invention may obtain patent protection although it should not be patentable for the greater interest of the public at large. Under the existing law, the application for a patent must contain a declaration that the applicant is the true and first inventor or the assignor or legal representative of such inventor. But the term, “true and first inventor” is left undefined. Thus any person importing an invention for the first time into Bangladesh or any person to whom an invention is first communicated from outside Bangladesh can claim to be the “true and first inventor” of that invention and thus, can take the advantage of the vagueness of the term. Here; a fact should be added that, such practice already has begun. Some pharmaceutical companies don’t having any research and develop cell, importing some drugs, and by claiming patent, under the ambiguity of the Act, getting patent. A statistic says that, at the 1st and 2nd week of March, 2006; on an average, 40 patents were granted by the patent office, in each week. Thus, the local producers are forced to remain non productive on that particular patented items. The standard of examination varies from country to country. In some countries like Netherlands, Germany, U.S.A. and Japan it is rigorously involving an extensive search for both novelty and obviousness among documents published in many countries, over a period of many years. But according to our existing patent law; examination is less rigorous involving for novelty only, and the extent of search is restricted. Term of patent protection shall, as laid down in section-14, be sixteen years from its date. But the term is not sufficient enough for the exploitation of the patent right. What constitutes infringement of patent isn’t defined in the Patents and Designs Act, 1911. Section-29(1) of the Act only says that, the patentee has a right to sue against the infringer during the continuance of the patent acquired by him. Section-30 of the Act says that, a patentee shall not be entitled to damages against an innocent infringer. But, ignorance of law is no defense. The infringer should pay for the project as compensation of damages. Under the existing law any process or manner of producing, preparing or making an article in patentable as appears from section-2 (8) read with section-2(16). But, the 1911 Act does not confer upon the patentee the exclusive right to exercise the process. The 1911 Act contains provisions regarding compulsory licenses of patent rights but the terms and conditions of conditions of compulsory licenses are not detailed in the Act.
TRADE MARKS ACT:-
1. Section-22(3) of Trade Marks Act defined infringement in a very narrow sense though the act has provisions against infringement.
2. Although Chapter X of the Act, describes about offences and restrictions of use of Royal Arms and state emblems but this chapter does not extends to the infringement of any registered trademark. Any deceptive use of any registered trademark; is not also included in this chapter.
3. There is no provision for protection of internationally recognized trademark in our existing Trademark Act 1940.
Our existing copyright law has been enacted in line with the copyright law of India. It has been enacted to cope with the prevailing international set up of copyright system. So, preventive measures have been adopted to tackle the future complications in copyright sector.
NECESSARY PROPOSAL FOR REFORMATIONS: The term ‘intellectual property’ is still at its nascent stage in our country and people are not aware of the concept and importance of intellectual property. But, in international arena, the concept and coverage of intellectual property is growing so fast than any other brunches of law. We have intellectual property laws but these laws are not sufficient to tackle the challenges that are imminent and threatening us. Keeping in mind the Trade Related Aspects of Intellectual Property Rights (TRIPs) agreement and other relevant conventions the following reformation proposals can be made:
Reformations of the Patents and Designs act:
ü The Patent and Designs Act, 1911 should be revised thoroughly.
ü Essential requirements of patentable invention should be described clearly and there must be a clear distinction between patentable and non patentable inventions.
ü The standard of examining a patent application should be made more effective.
ü Term of patent protection shall, as laid down in section 14, be 16 years from its date. But the term should be extended to 20 years for patent and the term of a design, according to sec – 47(1) is 5 years from the date of registration, should be extended to 10 years.
ü Existing Act does not have any definition of infringement, it should be included.
ü The part of “designs;” have some confusing words, as in that part the term, “copyright” has frequently used. But it may create confusion. Such confusion should be effaced.
ü The Act does not have anything to do about the protection “Geographical indication” which could result a huge loss of losing our culture & heritage. So, it should be included.
ü Provisions relevant to PARIS convention should be incorporated.
ü The administrative provisions and complications should be avoided. The complications should be made more subject to judicial decision.
ü The provisions of offences and penalties should be revised and reformed with the need of the time.
Proposal for reformations of The Trademarks Act:
After studying present Trademark Act and different conventions, it is clear that our existing Trademarks Act 1940 should be amended as well. The following suggestions can be made:
ü The reformed trademark law should have a wide view about the marks which can be registerable and which marks cannot be.
ü Infringement of trademark should be defined more accurately. Besides, punishment for infringement should be made stricter.
ü How will we protect our renowned trademarks in international market and reciprocally how other countries trade marks can enjoy protection in our local market, should be defined in our trademarks act, with an assertive view.
ü Offences and penalties, in respect of violation of any provisions of this act, should be made more effective and harder.
ü If any complication or confusion arises in practicing of the act, the judicial body should be involved with more vigilance.
Proposed reformations to the copyright law:
The Copyright Act 2000 has been enacted to cover the rules and to cope with the international copyright system. Our existing copyright law has been enacted in line with the copyright law of India. It has been enacted to cope with the prevailing international set up of copyright system. So, preventive measures have been adopted to tackle the future complications in copyright sector. From the face of the Copyright Act 2000, it seems that our copyright law has fulfilled the need of the time.
Though computer programs, tables complications including data base are recognized to have the copyright protection, there is no legal recognition for transaction carried out by means of electronic data or other means ‘e-commerce’ which involves the use of alternativeness to paper based method of communication and storage of information to facilitate filing of documents with government agencies .
The growing global importance of the cyber law is posing new challenges and in view of the peculiarity involved in the fields, the understanding between the nations of the world by treaties or covenants, may be of considerable importance in the absence of which the implementation of the legislation would be near to impossibility. Our present act should be amended to fulfill the shortage.
Finally we can hope that a stronger protection system of the intellectual property rights, a qualified commission to observe the protection and thus policy making options to bring civil remedies for the violation of the rights and finally a complete law regulation in all sectors of intellectual property rights will surely lead us to a better future.
Notes and References:
Background reading materials on intellectual property: WIPO (Pp-3, 4).
P.Narayanan.(pp-1). TRIPs agreement. John Madely hungry for trudeyzed books UK (2000) pp-96-97. The Patents and Designs Act 1911 The Trade Marks Act 1940 The Copyright Act 2000