IPR Enforcement (Import and Export) Rules, 2019 - NBR to Boost Revenue Earnings for Bangladesh

By Barrister A B M Hamidul Mishbah, Advocate, Supreme Court of Bangladesh, Managing Partner, Old Bailey Chambers, Founder, Bangladesh IP Forum.

Tolerating counterfeit and parallel importation of branded products has been a formidable challenge for multinational companies or brand owners operating in the FMCG (fast moving consumer goods) sector within Bangladesh. The similar threat stemming from the counterfeit exports has been quite frustrating for the renowned apparel brands that are importing from or having their branded goods manufactured within, Bangladesh too. This trend of parallel and counterfeit importation and exportation of branded goods resulting violation or infringement of intellectual property rights of the brand owners, who are mostly the foreign investors or multinational companies operating in Bangladesh is creating an adverse and damaging impact on Bangladesh’s economy and GDP growth by discouraging or slowing down foreign investment and denying government of Bangladesh from earning appropriate amount of duty or revenue.

In order to combat such wrongdoings, the National Board of Revenue (NBR) introduced the IPR Enforcement (Import and Export) Rules, 2019 under the aegis of section 15, 16 and 17 of the Customs Act, 1969. With such proactive initiative taken by NBR by enacting the said IPR Enforcement (Import and Export) Rules, 2019 Bangladesh has now entered into the league of countries that have taken effective measures to implement customs recordal system within their legal framework for controlling borders. Customs Recordal system is one of the legal procedures that brand or intellectual property owners use to enforce their intellectual property rights (IPR) at the borders. Under this system brands, i.e. intellectual property that could be a trademark or patent or design or geographical indication or copyright or trade secret, can be recorded with the customs authority of a country for the purpose of stopping or disallowing imports or exports of any unauthorized or counterfeit goods.

NBR’s move in enacting the IPR Enforcement (Import and Export) Rules, 2019 has graciously been welcomed and appreciated by the IPR and brand owners that are doing business in Bangladesh. Numerous multinational companies or brand owners whose goods are being imported and exported to and from Bangladesh have already filed their applications with the relevant customs houses for recordation. It is indeed a matter of immense encouragement that some of the customs authorities, i.e. ICD Kamalapur and Dhaka Customs House, have already approved some of the applications and issued the recordation certificates in favour of the applicant brand owner.

In order for the proper implementation and enforcement of the IPR Enforcement (Import and Export) Rules, 2019 it is imperative that the customs and NBR officials are appropriately made aware of and trained on the application of the IPR Rules. To this extent the stakeholders of the IPR Enforcement (Import and Export) Rules, 2019 representing the private sector have responded positively. Numerous awareness sessions, workshops and knowledge sharing sessions have been arranged wherein the relevant customs officers representing various customs houses have participated with great interest and enthusiasm. Bangladesh IP Forum – a nonprofit entity working for the protection and enforcement of IPR in Bangladesh, has arranged several awareness and knowledge sharing sessions and workshops alone as well as in association with the United States Patent and Trademark Office and REACT – the Anti-Counterfeit Network.

Stakeholders including the brand owners and right holders firmly believe that building capacity among the customs officials who are at the front line to apply and enforce the IPR Enforcement (Import and Export) Rules, 2019, is very important for the interest of effective implementation of the Rules, and thus the awareness sessions and capacity building initiatives must continue and be taken place on routine basis.     

One of the salient features of the IPR Enforcement (Import and Export) Rules, 2019 is that the scope of the Rules extends to exporting of counterfeit goods – a praiseworthy decision taken by NBR. NBR’s decision of prohibiting the exportation of counterfeit goods from Bangladesh will highly encourage foreign brands that are having their branded goods manufactured in Bangladesh, and the same shall boost the brand owners’ and right holders’ confidence and trust into Bangladesh, and is expected to attract more investment for Bangladesh.      

Under the current IPR Enforcement (Import and Export) Rules, 2019 Trademarks, Patents, Designs, Geographical Indications and Copyrights can be recorded with the customs authority. In order to record such intellectual properties, a brand owner or the right holder may file an application with the relevant customs houses. The application must be accompanied by relevant documents, i.e. description of the branded goods vis-à-vis the infringing goods, features that may distinguish the genuine and infringing goods, copies of IPR registration certificates, HS Codes, letter of authorization, and any other information, i.e. suspected sources of infringing goods, types of import or export, packaging of the goods, prices, information about the suspected importers or exporters (if any), etc.

Filing of the application works as a request made by the brand owner or right holder to the customs authorities to monitor and detect any infringing goods. Upon receiving the application along with the relevant documents, the relevant customs authority shall issue a notification about the acceptance of the application for recordation to the brand owner or right holder within 30 days, and such recordation of intellectual property shall be valid for one year from the date of filing of the application.

Post recordation there could be two scenarios, i.e. (i) customs authority can act suo-moto on the basis of suspicion and can temporarily suspend release of the goods being placed for import or export and immediately inform the brand owner for subsequent proceedings as prescribed by the Rules, or (ii) if the brand owners or right holders suspect that infringing goods are about to be imported or exported, they may file a request to the relevant customs authority to temporarily suspend the release of such goods.

By and large the introduction of the IPR Enforcement (Import and Export) Rules, 2019 by NBR has generated positive momentum and a great deal of appreciation and accolades from the stakeholders including the brand owners or right holders, investors, multinational companies doing business in and with Bangladesh, development partners and peer groups in and around the world. It is expected that the appropriate enforcement and proper implementation of the IPR Enforcement (Import and Export) Rules, 2019 will encourage foreign investment into Bangladesh, lift Bangladesh’s impression as a IPR supportive country to rest of world and also increase earning revenue for the government resulting further economic growth and prosperity for Bangladesh.