Enforcement of Intellectual Property Rights: Bangladesh Context Naimuddin Ahmed

Introductory

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

Copyright

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?