Barrister Hamidul MishbahThe High Court in Bangladesh on 6 February 2013, comprised of Madam Justice Naima Haider and Mr. Justice Md. Khairul Alam, has ruled that inaction and failure of Customs Authority, Telecommunication Regulator (BTRC) and Law Enforcement Agencies to restraint imports, distribution and trading of unauthorized SAMSUNG branded mobile phones and electronic goods is unlawful. The Court directed the government bodies to take necessary steps to confiscate, prohibit imports and clearance through Customs, stop distribution and trading of unauthorized SAMSUNG branded mobile phones and electronic goods throughout Bangladesh.

Samsung India, a subsidiary of Samsung Electronics – one of the world’s largest technology and smart phone manufacturing companies, through its branch office in Bangladesh, filed a writ application (Judicial Review) in 2015. It challenged the inaction and failure of the government bodies resulting in unauthorized and counterfeit imports and trading of SAMSUNG branded mobile phones and electronic goods by grey importers and unscrupulous traders. The number of the unauthorized and grey importers and unscrupulous traders are plenty in numbers which made it unmanageable and impractical for Samsung to bring them under justice and protect its trademark rights under the ambit of Trademarks and Specific Reliefs Acts.

Samsung contended that Samsung’s ownership over the trademark “SAMSUNG” is an exclusive right, which grants Samsung the sole right to authorize one for commercial use of the “SAMSUNG” trademark including imports, distribution and trading of SAMSUNG branded mobile phones and electronic goods in Bangladesh. Plenty of importers and traders are engaged into importing and trading of SAMSUNG branded goods, for which they have no authorization or license obtained from Samsung.

Samsung further submitted that BTRC has a statutory obligation under the telecommunication law to ensure that importers of mobile phones obtain prior permission from BTRC for importing mobile phones, and the Customs Authority has an obligation under the Customs Act to ensure that any importer of branded goods produces to them a certificate (license) obtained from the brand owner, i.e. Samsung, for importing such goods. Both the statutory bodies were falling short of performing their duty and enforce the laws against the unauthorized and grey importers and traders. As a result, Samsung became aggrieved.

Article 102 of the Constitution of Bangladesh empowers the High Court Division, to order any government authority to do which it is required by law to do. Initiated in 2015, this was the first of its kind litigation, an innovative move spearheaded by Samsung’s lawyer Barrister Hamidul Mishbah of OLD BAILEY Chambers, Dhaka, wherein a brand owner moved to a constitutional court invoking its fundamental rights for protection and enforcement of its trademark rights at and beyond the border.

BTRC being the licensing authority, Customs being the gate keeper, and the law enforcement agencies having the power to stop any unlawful activities, are entrusted with the lawful authority to stop any unlawful act, which they ought to perform but have not been.

The Court, however, observed Samsung’s statutory rights conferred under the Trademarks Act, which is an exclusive right, and such right inherently enshrines from fundamental rights such as right to property, right to conduct lawful trade or business, right to protection of law. Statutory bodies are obliged to protect, promote and ensure the enjoyment of fundamental rights. Fundamental rights are owed by the state to the people within the territory, and the statutory bodies shall act so that such rights are not infringed.

The High Court therefore declared that the inaction and failure of government bodies to perform their statutory duties by restraining the imports, clearance through customs, distribution and trading of unauthorized SAMSUNG branded mobile phones and electronic goods is unlawful, and made the Rule absolute. The Court further passed a continuous mandamus order (order of direction) upon BTRC, Customs and Law Enforcement Agencies to perform their duty to ensure that import, distribution and selling of counterfeit or unauthorized SAMSUNG branded goods are stopped at and beyond the border.

This emerges as a trailblazing judgment, so far stopping of parallel import of branded goods are concerned. It shall act as a reminder to government bodies. International brands doing business in Bangladesh, that experience similar challenges like Samsung, can now follow the principle established by this SAMSUNG case.

Written by Barrister Hamidul Mishbah, Managing Partner, OLD BAILEY Chambers, Dhaka.

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