CHAPTER XI
MISCELLANEOUS
Procedure before the Registrar70. In all proceedings under this Act before the Registrar-
(a) the Registrar shall have all the powers of a Civil Court for the purposes of receiving evidence, administering oaths, enforcing the attendance of witnesses, compelling the discovery and production of documents and issuing commissions for the examination of witnesses;
(b) evidence shall be given by affidavit, provided that the Registrar may, if he thinks fit, take oral evidence in lieu of, or in addition to, such evidence by affidavit;
(c) the Registrar shall not exercise any power vested in him by this Act or the rules made thereunder adversely to any party duly appearing before him without (if required in writing within the prescribed time so to do) giving such party an opportunity of being heard;
(d) the Registrar may, save as otherwise expressly provided in this Act, and subject to any rules made in this behalf under section 84, make such orders as to costs as he considers reasonable, and any such order shall be executable as a decree of a Civil Court.
Procedure before Government71. In all proceedings under this Act before the Government, evidence shall be given by affidavit, provided that the Government may, if it thinks fit, take oral evidence in lieu of, or in addition to, such evidence by affidavit, and shall for that purpose have all the powers of a Civil Court referred to in clause (a) of section 70.
Procedure in certain cases of option to apply to the High Court Division or the Registrar72. Where under this Act an applicant has the option of making an application either to the High Court Division or to the Registrar,-
(a) if any suit or other proceedings concerning the trade mark in question is pending before the High Court Division or a District Court, the application shall be made 23[to the High Court Division];
(b) if in any other case the application is made to the Registrar, the Registrar may, if he thinks fit, refer the applica¬tion at any stage of the proceedings to the High Court Division.
Suits for infringement to be instituted before District Court73. No suit for the infringement of a trade mark or otherwise relating to any right in a trade mark shall be instituted in any Court inferior to a District Court having jurisdiction to try the suit.
Appearance of Registrar in proceedings involving recti¬fication of register74. (1) In any suit or other legal proceedings in which the relief sought includes alteration or rectification of the register, the Registrar shall have the right to appear and be heard, and shall appear if so directed by the tribunal.
(2) Unless the tribunal otherwise directs, the Registrar may, in lieu of appearing, submit a statement in writing signed by him, giving such particulars as he thinks proper of the proceedings before him relating to the matter in issue, or of the grounds of any decision given by him affecting it, or of the practice of the Trade Marks Registry in like cases, or of other matters relevant to the issues and within his knowledge as Registrar, and such statement shall be evidence in the suit or other proceeding.
Costs of Registrar in proceedings before High Court Division24[74A. In all proceedings under this Act before the High Court Division the costs of the Registrar shall be in the discretion of the High Court Division, but the Registrar shall not be ordered to pay the costs of any of the parties.]
Evidence of entries in register and things done by Registrar75. (1) A printed or written copy of any entry in the register, purporting to be certified by the Registrar and sealed with the seal of the Trade Marks Registry, shall be admitted in evidence in all Courts in Bangladesh and in all proceedings without further proof or production of the original.
(2) A certificate purporting to be under the hand of the Registrar as to any entry, matter or thing that he is authorised by this Act or the rules to make or do shall be prima facie evidence of the entry having been made, and of the contents thereof, or of the matter or thing having been done or not done.
Appeals76. (1) Save as otherwise expressly provided in this Act, an appeal shall lie, within the period prescribed by the Government, from any decision of the Registrar under this Act or the rules made thereunder to the High Court Division having jurisdiction:
Provided that if any suit or other proceeding concerning the trade mark in question is pending before the High Court Division or a District Court, the appeal shall be made to 25[High Court Division].
(2) In an appeal by an applicant for registration against a decision of the Registrar under section 13 or section 14 or section 15, it shall not be open, save with the express permission of the Court, to the Registrar or any party opposing the appeal to advance grounds other than those recorded in the said decision or advanced by the party in the proceedings before the Registrar, as the case may be; and where any such
additional grounds are advanced, the applicant for registration may, on giving notice in the prescribed manner, withdraw his application without being liable to pay the costs of the Registrar or the parties opposing his application.
(3) Subject to the provisions of this Act and of rules made thereunder, the provisions of the Code of Civil Procedure, 1908, shall apply to appeals before the High Court Division under this Act.
Power to Supreme Court to make rules77. 26[The Supreme Court] may make rules consistent with this Act as to the conduct and procedure of all proceedings under this Act before 27[the High Court Division].
Certificate of validity78. If in any legal proceeding in which the validity of the registration of a trade mark comes into question, a decision is given in favour of the proprietor of the trade mark, the tribunal may grant a certificate to that effect, and if such a certificate is granted, then in any subsequent legal proceeding in which the said validity comes into question, the said proprietor on obtaining a final order or judgment in his favour shall, unless the said final order or judgment for sufficient reason directs otherwise, be entitled to his full costs, charges and expenses as between legal practitioner and client.
Trade usage, etc., to be taken into consideration79. In any suit or other proceeding relating to a trade mark, the tribunal shall admit evidence of the usages of the trade concerned and of any relevant trade mark or get up legitimately used by other persons.
Agents80. Where by or under this Act any act, other than the making of an affidavit, is required to be done by any person, the act may, subject to prescribed conditions or in special cases with the consent of the Government, be done, in lieu of by that person himself, by a duly authorised agent, being either a legal practitioner or a person registered in the prescribed manner as a trade marks agent.
Fees81. There shall be paid in respect of applications and registration and other matters under this Act such fees as may be prescribed by the Government.
Government to be bound82. The provisions of this Act shall be binding on the Government.
[Omitted]82A. [Power to make reciprocal arrangements with Acceding or a non-Acceding State.- Section 82A was inserted by section 12 of the Trade Marks (Amendment) Act, 1946 (Act No. XII of 1946) and subsequently omitted by section 3 and the Second Schedule of the Bangladesh Laws (Revision And Declaration) Act, 1973 (Act No. VIII of 1973).]
Power to make reciprocal arrangements with other Governments83. If at any time after the expiry of six months from the commencement of this section it is made to appear to the Government that any Government outside Bangladesh has made satisfactory provision for the protection within its territories of trade marks in respect of which an application for registration has been made in Bangladesh, the Government may, by notification in the official Gazette, make provision with regard to trade marks in respect of which an application for registration has been made within the territories of that Government to enable any person who has applied within such territories for registration of a trade mark or his legal representative or assignee to obtain registration of the trade mark in Bangladesh under this Act on his making an application for registration in Bangladesh, within such period as may be fixed in this behalf by the notification as if an application for registration under this Act had been made in respect of that trade mark at the date at which the application for registration was made within the territories of that Government.
Power of Government to make rules84. (1) The Government may, subject to the condition of previous publication by notification in the official Gazette, make rules to carry out the purposes of this Act.
(2) In particular and without prejudice to the generality of the foregoing power, such rules may-
(a) prescribe the classification of goods for the purpose of the registration of trade marks, and empower the Registrar to amend the register so far as may be necessary
for the purpose of adapting the entries therein to any amended or substituted classification which may be prescribed;
(b) require the making of duplicates of trade marks and other documents connected therewith;
(c) provide for securing and regulating the publication, sale or distribution of copies of trade marks and other documents connected therewith;
(d) prescribe additional matters to be entered in the register;
(e) prescribe the conditions and restrictions subject to which the register, and the Refused Textile Marks List may be inspected;
(f) prescribe the form of certificates of registration;
(g) prescribe the conditions under which a trade mark removed from the register may be restored under sub-section (3) of section 18;
(h) prescribe the further documents, information or evidence to accompany an application under sub-section (1) of section 41;
(i) prescribe classes of goods as textile goods for the purposes of Chapter IX;
(j) provide for the constitution of Advisory Committees referred to in section 66, and prescribe the places of meeting, and conduct of business at meetings, of such Committees;
(k) regulate the awarding of costs by the Registrar under section 70;
(l) prescribe the conditions subject to which an agent referred to in section 80 may act;
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(m) prescribe the fees to be paid under this Act;
(n) provide for the establishment of branches of the Trade Marks Registry when expedient for facilitating the working of this Act, and authorise the preparation of copies of the register to be kept at such branch offices;
(o) prescribe the manner in which, in proceedings under this Act before the Government or the Registrar, applications shall be made, notices given and matters advertised;
(p) prescribe times or periods required by this Act to be prescribed;
(q) provide, generally, for regulating the business of the Trade Marks Registry and of branches established under clause (n) and for regulating all things by this Act placed under the direction or control of the Government or the Registrar.
Power to Government to make provision for applications for registration before the coming into force of the remaining provisions of Act85. The Government may, by notification in the official Gazette, provide such procedure as it considers expedient to enable intending applicants to deposit trade marks at the Patent Office before the coming into force of the remaining provisions of this Act:
Provided that the deposit of a trade mark under this section shall not affect any right, existing or accruing, in the trade mark.
[Omitted.]86. [Proceedings at Patent Office and the Bombay Registry to be deemed to have been taken at Trade Marks Registry.- Omitted by the Adaptation of Central Acts and Ordinances Order, 1949 (Governor General’s Order No. 4 of 1949).]
1 Throughout this Act, the words “Bangladesh”, “Government” and “the High Court Division” were substituted for the words “Pakistan”, “Central Government” and “a High Court” or “the High Court” respectively by section 3 and the Second Schedule of the Bangladesh Laws (Revision And Declaration) Act, 1973 (Act No. VIII of 1973)
2 The words “or an Additional Judge or a Joint Judge” were omitted by section 3 and the Second Schedule of the Bangladesh Laws (Revision And Declaration) Act, 1973 (Act No. VIII of 1973)
3 Clause (d) was omitted by section 3 and 2nd Schedule of the Central Laws (Statute Reform) Ordinance, 1960 (Ordinance No. XXI of 1960)
4 The words “the Supreme Court” were substituted for the words “such High Court” by section 3 and the Second Schedule of the Bangladesh Laws (Revision And Declaration) Act, 1973 (Act No. VIII of 1973)
5 Sub-section (1) was substituted by section 2 of the Trade Marks (Amendment) Act, 2003 (Act No. XIV of 2003)
6 Sub-section (2) was substituted by section 2 of the Trade Marks (Amendment) Act, 2003 (Act No. XIV of 2003)
7 The words “already on the register” were substituted for the words, figure and letter “either already on the register or already regis¬tered in any Acceding State or a non Acceding State to which section 82A for the time being applies” by section 3 and the Second Schedule of the Bangladesh Laws (Revision And Declaration) Act, 1973 (Act No. VIII of 1973)
8 The comma, words, figure and letter “, or from the register of trade marks in any Acceding State or a non-Acceding State to which section 82A for the time being applies” were omitted by section 3 and the Second Schedule of the Bangladesh Laws (Revision And Declaration) Act, 1973 (Act No. VIII of 1973)
9 The figure and bracket “(1)” was omitted by section 3 and the Second Schedule of the Bangladesh Laws (Revision And Declaration) Act, 1973 (Act No. VIII of 1973)
10 The words, figure and letter “or in any Acceding State or a non-Acceding State to which section 82A for the time being applies” were omitted by section 3 and the Second Schedule of the Bangladesh Laws (Revision And Declaration) Act, 1973 (Act No. VIII of 1973)
11 The words, figure and letter “or in any Acceding State or a non-Acceding State to which section 82A for the time being applies” were omitted by section 3 and the Second Schedule of the Bangladesh Laws (Revision And Declaration) Act, 1973 (Act No. VIII of 1973)
12 The Explanation was omitted by section 3 and the Second Schedule of the Bangladesh Laws (Revision And Declaration) Act, 1973 (Act No. VIII of 1973)
13 The figure and bracket “(1)” was omitted by section 3 and the Second Schedule of the Bangladesh Laws (Revision And Declaration) Act, 1973 (Act No. VIII of 1973)
14 The words, figure and letter “or in any Acceding State or a non-Acceding State to which section 82A for the time being applies” were omitted by section 3 and the Second Schedule of the Bangladesh Laws (Revision And Declaration) Act, 1973 (Act No. VIII of 1973)
15 The word “Taka” was substituted for the word “rupees” by section 3 and the Second Schedule of the Bangladesh Laws (Revision And Declaration) Act, 1973 (Act No. VIII of 1973)
16 The words “an Acceding State or” were omitted by section 3 and the Second Schedule of the Bangladesh Laws (Revision And Declaration) Act, 1973 (Act No. VIII of 1973)
17 Clause (b) of sub-section 4 was omitted by section 3 and the Second Schedule of the Bangladesh Laws (Revision And Declaration) Act, 1973 (Act No. VIII of 1973)
18 The words “Royal Arms or” were omitted by section 3 and the Second Schedule of the Bangladesh Laws (Revision And Declaration) Act, 1973 (Act No. VIII of 1973)
19 The words “Royal Arms or” were omitted by section 3 and the Second Schedule of the Bangladesh Laws (Revision And Declaration) Act, 1973 (Act No. VIII of 1973)
20 The words “Bangabandhu Sheikh Mujibur Rahman” were substituted for the words “Quaid-i-Azam Mohammad Ali Jinnah” by section 3 and the Second Schedule of the Bangladesh Laws (Revision And Declaration) Act, 1973 (Act No. VIII of 1973)
21 The words “the Government or any department of the Government” were substituted for the words “His Majesty’s Government or the Central Government or any Provincial Government or any department of any such Government” by section 3 and the Second Schedule of the Bangladesh Laws (Revision And Declaration) Act, 1973 (Act No. VIII of 1973)
22 The word “or” and clause (c) were added by section 3 of the Trade Marks (Amendment) Ordinance, 1948 (Ordinance No. XXV of 1948), clause (c) was again substituted by section 2 of the Trade Marks (Amendment) Act, 1949 (Act No. III of 1950)
23 The words “to the High Court Division” were substituted for the words and commas “to that High Court or, as the case may be, to the High Court within whose jurisdiction that District Court is situated” by section 3 and the Second Schedule of the Bangladesh Laws (Revision And Declaration) Act, 1973 (Act No. VIII of 1973)
24 Section 74A was inserted by section 12 of the Trade Marks (Amendment) Act, 1943 (Act No. XV of 1943)
25 The words “High Court Division” were substituted for the words “that High Court or, as the case may be, to the High Court within whose jurisdiction that District Court is situated” by section 3 and the Second Schedule of the Bangladesh Laws (Revision And Declaration) Act, 1973 (Act No. VIII of 1973)
26 The words “The Supreme Court” were substituted for the words “a High Court” by section 3 and the Second Schedule of the Bangladesh Laws (Revision And Declaration) Act, 1973 (Act No. VIII of 1973)
27 The words “the High Court Division” were substituted for the word “it” by section 3 and the Second Schedule of the Bangladesh Laws (Revision And Declaration) Act, 1973 (Act No. VIII of 1973)
28 Clause (ll) was omitted by section 3 and the Second Schedule of the Bangladesh Laws (Revision And Declaration) Act, 1973 (Act No. VIII of 1973)