PART II
DESIGNS
Registration of Designs
Application for registration of designs43. (1) The Registrar may, on the application of any person claiming to be the proprietor of any new or original design not previously published in Bangladesh, register the design under this Part.
(2) The application must be made in the prescribed form and must be left at the Department of Patents, Designs and Trade Marks in the prescribed manner and must be accompanied by the prescribed fee.
(3) The same design may be registered in more than one class, and, in case of doubt as to the class in which a design ought to be registered, the Registrar may decide the question.
(4) The Registrar may, if he thinks fit, refuse to register any design presented to him for registration; but any person aggrieved by any such refusal may appeal to the Government.
(5) An application which, owing to any default or neglect on the part of the applicant, has not been completed so as to enable registration to be effected within the prescribed time shall be deemed to be abandoned.
(6) A design when registered shall be registered as of the date of the application for registration.
Registration of designs in new classes44. Where a design has been registered in one or more classes of goods, the application of the proprietor of the design to register it in some one or more other classes shall not be refused, nor shall the registration thereof be invalidated-
(a) on the ground of the design not being a new or original design, by reason only that it was so previously registered; or
(b) on the ground of the design having been previously published in Bangladesh, by reason only that it has been applied to goods of any class in which it was so previously registered:
Provided that such subsequent registration shall not extend the period of copyright in the design beyond that arising from previous registration.
Certificate of registration45. (1) The Registrar shall grant a certificate of registration to the proprietor of the design when registered.
(2) The Registrar may, in case of loss of the original certificate, or in any other case in which he deems it expedient, furnish one or more copies of the certificate.
Register of Designs46. (1) There shall be kept at the Department of Patents, Designs and Trade Marks a book called the Register or Designs, wherein shall be entered the names and addresses of proprietors of registered designs, notifications of assignments and of transmissions of registered designs, and such other matters as may be prescribed.
(2) The register of designs existing at the commencement of this Act shall be incorporated with and form part of the register of designs under this Act.
(3) The register of designs shall be prima facie evidence of any matters by this Act directed or authorized to be entered therein.
Copyright in Registered Designs
Copyright on registration47. (1) When a design is registered, the registered proprietor of the design shall, subject to the provisions of this Act, have copyright in the design during five years from the date of registration.
(2) If before the expiration of the said five years application for the extension of the period of copyright is made to the Registrar in the prescribed manner, the Registrar shall, on payment of the prescribed fee, extend the period of copyright for a second period of five years from the expiration of the original period of five years.
(3) If before the expiration of such second period of five years application for the extension of the period of copyright is made to the Registrar in the prescribed manner, the Registrar may, subject to any rules under this Act, on payment of the prescribed fee, extend the period of copyright for a third period of five years from the expiration of the second period of five years.
Requirements before delivery on sale48. (1) Before delivery on sale of any articles to which a registered design has been applied, the proprietor shall-
(a) (if exact representations or specimens were not furnished on the application for registration), furnish to the Registrar the prescribed number of exact representations or specimens of the design; and, if he fails to do so, the Registrar may erase his name from the register, and thereupon the copyright in the design shall cease; and
(b) cause each such article to be marked with the prescribed mark, or with the prescribed words or figures, denoting that the design is registered; and, if he fails to do so, the proprietor shall not be entitled to recover any penalty or damages in respect of any infringement of his copyright in the design unless he shows that he took all proper steps to ensure the marking of the article, or unless he shows that the infringement took place after the person guilty thereof knew or had received notice of the existence of the copyright in the design.
(2) Where a representation is made to the Government by or on behalf of any trade or industry that in the interests of the trade or industry it is expedient to dispense with or modify as
regards any class or description of articles any of the requirements of this section as to marking, the Government may, if it thinks fit, by rule under this Act, dispense with or modify such requirements as regards any such class or description of articles to such extent and subject to such conditions as it thinks fit.
Effect of disclosure on copyright49. The disclosure of a design by the proprietor to any other person, in such circumstances as would make it contrary to good faith for that other person to use or publish the design, and the disclosure of a design in breach of good faith by any person other than the proprietor of the design, and the acceptance of a first and confidential order for goods bearing a new or original textile design intended for registration, shall not be deemed to be a publication of the design sufficient to invalidate the copyright thereof if registration thereof is obtained subsequently to the disclosure or acceptance.
Inspection of registered designs50. (1) During the existence of copyright in a design, or such shorter period not being less than two years from the registration of the design as may be prescribed, the design shall not be open to inspection except by the proprietor or a person authorized in writing by him, or a person authorized by the Registrar or the Court, and furnishing such information as may enable the Registrar to identify the design, and shall not be open to the inspection of any person except in the presence of the Registrar, or of an officer acting under him, and on payment of the prescribed fee; and the person making the inspection shall not be entitled to take any copy of the design, or of any part thereof:
Provided that, where registration of a design is refused on the ground of identity with a design already registered, the applicant for registration shall be entitled to inspect the design so registered.
(2) After the expiration of the copyright in a design, or such shorter period as aforesaid, the design shall be open to inspection, and copies thereof may be taken by any person on payment of the prescribed fee.
(3) Different periods may be prescribed under this section for different classes of goods.
Information as to existence of copyright51. On the request of any person furnishing such information as may enable the Registrar to identify the design, and on payment of the prescribed fee, the Registrar shall inform such person whether the registration still exists in respect of the design, and, if so, in respect of what classes of goods, and shall state the date of registration, and the name and address of the registered proprietor.
Cancellation of registration20[51A. (1) Any person interested may present a petition for the cancellation of the registration of a desig-
(a) at any time after the registration of the design, to the High Court Division on any of the following grounds, namely:-
- i) that the design has been previously registered in Bangladesh; or
(ii) that it has been published in Bangladesh prior to the date of registration; or
(iii) that the design is not a new or original design; or
(b) within one year from the date of the registration, to the Registrar on either of the grounds specified in sub-clauses (i) and (ii) of clause (a).
(2) An appeal shall lie from any order of the Registrar under this section to the High Court Division, and the Registrar may at any time refer any such petition to the High Court Division shall decide any petition so referred.
Registration of designs to bind the Government51B. The provisions of section 21 shall apply to registered designs as if those provisions were re-enacted herein and in terms made applicable to registered designs.]
Industrial and International Exhibitions
Provisions as to exhibitions.52. The exhibition of a design, or of any article to which a design is applied, at an industrial or other exhibition to which the provisions of this section have been extended by the Government by notification in the official Gazette, or the publication of a description of the design, during the period of the holding of the exhibition, or the exhibition of the design or the article or the publication of a description of the design by any person elsewhere during or after the period of the holding of the exhibition, without the privity or consent of the proprietor, shall not prevent the design from being registered or invalidate the registration thereof:
Provided that-
(a) the exhibitor exhibiting the design or article, or publishing a description of the design, gives to the Registrar previous notice in the prescribed form; and
(b) the application for registration is made within six months from the date of first exhibiting the design or article or publishing a description of the design.
Legal Proceedings
Piracy of registered design53. (1) During the existence of copyright in any design it shall not be lawful for any person-
(a) for the purpose of sale to apply or cause to be applied to any article in any class of goods in which the design in registered the design or any fraudulent or obvious imitation thereof, except with the license or written consent of the registered proprietor, or to do anything with a view to enable the design to be so applied; or,
(aa) to import for the purposes of sale, without the consent of the registered proprietor, any article belonging to the class in which the design has been registered, and having applied to it the design or any fraudulent or obvious imitation thereof; or
(b) knowing that the design or any fraudulent or obvious imitation thereof has been applied to any article in any class of goods in which the design is registered without the consent of the registered proprietor, to publish or expose or cause to be published or exposed for sale that article.
(2) If any person acts in contravention of this section, he shall be liable for every contravention-
(a) to pay to the registered proprietor of the design a sum not exceeding five hundred taka recoverable as a contract debt, or
(b) if the proprietor elects to bring suit for the recovery of damages for any such contravention, and for an injunction against the repetition thereof, to pay such damages as may be awarded and to be restrained by injunction accordingly:
Provided that the total sum recoverable in respect of any one design under clause (a) shall not exceed one thousand taka.
(3) When the Court makes a decree in a suit under sub-section (2), it shall send a copy of the decree to the Registrar, who shall cause an entry thereof to be made in the register of designs.
Application of certain provisions of the Act as to Patents and Designs54. The provisions of this Act with regard to certificates of the validity of a patent and to the remedy in case of groundless threats of legal proceedings by a patentee shall apply in the case of registered designs in like manner as they apply in the case of patents, with the substitution of references to the copyright in a design for references to a patent, and of references to the proprietor or a design for references to the patentee, and of references to the design for references to the invention.