Trademark Dispute Resolution Guide

Sure, Kazi Faizul Bari! Here's a more elaborate version of your counter-statement:
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Counter-Statement
*We, Dongil Rubber Belt Co. Ltd.,* the registered owner of the trademark "DONGIL SAILING BOAT" (Registration No. * in Class *), hereby submit our counter-statement against the rectification application filed by Mosharof Hossain, Proprietor of M/S. M.M. Trading. We categorically refute the claims made in the rectification application and present our arguments as follows:
*. Priority and Validity:
- The trademark "DONGIL SAILING BOAT" has been validly registered in Bangladesh since May *, *, predating the applicant’s mark "DONGHIL SEALING BOAT" by approximately 20 years (applied on June *, *).
- This establishes our clear priority rights under the Bangladesh Trademarks Act, * and underscores the longstanding recognition of our mark in the marketplace.
- The longevity of our trademark registration serves as evidence of its enduring validity and protection under the law.
*. Acquired Distinctiveness and Goodwill:
- Over *+ years of continuous commercial use in Bangladesh, "DONGIL SAILING BOAT" has acquired substantial distinctiveness and goodwill.
- This acquired distinctiveness further strengthens its protection under trademark law, reinforcing the brand's exclusive association with our products.
- Additionally, "DONGIL SAILING BOAT" holds registrations in multiple international jurisdictions, affirming its legitimacy and distinctiveness on a global scale.
- The extensive recognition and reputation of our trademark build a strong case for its protection against any infringing marks.
*. Bad Faith and Deceptive Similarity:
- The applicant’s choice of “DONGHIL SEALING BOAT" demonstrates clear bad faith, as it deliberately adopts elements confusingly similar to our registered trademark.
- The resemblance in spelling and phonetics ("Donghil" vs. "Dongil" and "Sealing" vs. "Sailing") for identical goods cannot be coincidental and suggests an intentional effort to mislead consumers.
- This similarity violates Sections * and * of the Bangladesh Trademarks Act, *, as it is likely to cause consumer confusion, dilute our brand's distinctiveness, and infringe upon our established rights.
- The applicant's actions undermine the integrity of the trademark system and the principles of fair competition.
*. Continuous and Uninterrupted Use:
- "DONGIL SAILING BOAT" has been in continuous commercial use in Bangladesh since * without any interruption, further solidifying its status as a well-established and recognizable trademark.
- The mark has never been abandoned, diluted, or allowed to become generic, which is critical in maintaining its legal protection and exclusive association with our goods.
- We have consistently implemented quality control and brand protection measures to maintain its distinctiveness and commercial value, ensuring the mark's integrity and consumer trust.
*. Exploitation of Established Goodwill:
- The applicant filed for "DONGHIL SEALING BOAT" approximately 20 years after our registration, when "DONGIL SAILING BOAT" had already built substantial market recognition.
- The timing, coupled with the similarity of the mark, indicates an attempt to exploit our established goodwill rather than develop an independent brand identity.
- Such actions harm our brand's reputation and mislead consumers, violating the core principles of trademark law designed to protect brand identity and ensure fair competition.
*. Public Interest and Market Transparency:
- Maintaining the registration of "DONGIL SAILING BOAT" and rejecting the deceptively similar "DONGHIL SEALING BOAT" serves the public interest by preventing consumer confusion and ensuring market transparency.
- Allowing the applicant’s mark would undermine the trademark system’s core purpose—clear source identification and brand protection, and could lead to market distortions and unfair competition.
Response to Applicant's Submission: Refutation of Claims Set Forth in Paragraphs * Through *:
- Para *-*: Denied. The applicant's claim of manufacturing and marketing products under the "Donghil Sealing Boat" mark appears to be in bad faith, as it closely resembles the established "Dongil Sailing Boat" trademark. This practice aligns with common examples of bad faith trademark applications, where a party intentionally adopts a mark that is confusingly similar to an existing one to exploit its reputation and goodwill. Such actions not only dilute the distinctiveness of the original mark but also mislead consumers, violating the core principles of trademark law designed to protect brand identity and ensure fair competition.
- Para *: Denied. The applicant's assertion that we are attempting to appropriate the trademark is baseless. Dongil Sailing Boat has been the legitimate owner of the trademark since *. The applicant's use of a similar mark is the act of appropriation.
- Para *-*: Denied. The "Dongil Sailing Boat" trademark is inherently distinctive to our goods. As the legitimate owners and prior users, we have established exclusive rights through continuous use and prior registration. The applicant's adoption of a similar mark is fraudulent and dishonest. Therefore, their application should be rejected. Our prior registration and continuous use establish our exclusive rights to the trademark.
- Para *: Denied. The applicant's claim that we do not export, sell, or market rubber belts in Bangladesh is factually incorrect and irrelevant.
- Para *-*: Denied. No comments as they are self-contradictory.
- Para *: Denied. The use of a similar trademark by the applicant will inevitably lead to consumer deception, causing them to believe that their products originate from or are associated with Dongil Sailing Boat. This directly infringes upon our established goodwill and reputation.
- Para *: Denied. Maintaining the purity of the register and protecting the public interest requires rejecting the applicant's claim. Allowing the registration of a deceptively similar trademark would create confusion and undermine the integrity of the trademark system.
- Para *-*: Denied. The balance of convenience lies firmly in favor of Dongil Sailing Boat, the prior registrant and legitimate owner of the trademark. The potential harm to our established business and reputation far outweighs any inconvenience to the applicant for rectification, who knowingly adopted a similar mark.
Based on the above counter-statements and the provisions of the Bangladesh Trademarks Act, *, we respectfully request that the Registrar:
*. Dismiss the rectification application in its entirety.
*. Uphold the valid registration of “Dongil Sailing Boat” trademark.
*. Award costs and other relief as deemed appropriate.
We reserve the right to supplement these arguments with additional evidence and legal submissions as the proceedings progress.
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Let me know if you need any further assistance!

Case Rating: *
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You can further elaborate your counter-statement by referring to specific sections of the Bangladesh Trademarks Act, * for each point of your argument. Here are some suggestions:
*. Priority and Validity:
- Cite relevant sections that establish the priority of registered trademarks and the importance of the registration date.
*. Acquired Distinctiveness and Goodwill:
- Refer to sections that discuss the legal protection of trademarks with acquired distinctiveness.
*. Bad Faith and Deceptive Similarity:
- Mention sections that prohibit the registration of deceptively similar trademarks and outline the consequences of bad faith applications.
*. Continuous and Uninterrupted Use:
- Highlight sections that protect trademarks with continuous and uninterrupted use.
*. Exploitation of Established Goodwill:
- Include sections that protect against exploitation of established goodwill and unfair competition.
*. Public Interest and Market Transparency:
- Refer to sections that emphasize the importance of public interest and market transparency in trademark law.
Would you like more detailed references to specific sections of the Bangladesh Trademarks Act, *?

Case Rating: *
Here is an enhanced and more elaborate version of your counter-statement, specifically referencing the Bangladesh Trademarks Act, *:
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Counter-Statement
We, Dongil Rubber Belt Co. Ltd., the registered owner of the trademark "DONGIL SAILING BOAT" (Registration No. * in Class *), hereby submit our counter-statement against the rectification application filed by Mosharof Hossain, Proprietor of M/S. M.M. Trading. We categorically refute the claims made in the rectification application and present our arguments as follows:
*. Priority and Validity:
- The trademark "DONGIL SAILING BOAT" has been validly registered in Bangladesh since May *, *, predating the applicant’s mark "DONGHIL SEALING BOAT" by approximately 20 years (applied on June *, *).
- This establishes our clear priority rights under Section * of the Bangladesh Trademarks Act, *, which recognizes the seniority of earlier registered trademarks.
- Section *(*)(a) of the Act prohibits the registration of marks that are identical or similar to an earlier trademark and likely to cause confusion.
*. Acquired Distinctiveness and Goodwill:
- Over *+ years of continuous commercial use in Bangladesh, "DONGIL SAILING BOAT" has acquired substantial distinctiveness and goodwill.
- Section *(*) of the Act protects trademarks that have acquired distinctiveness through use in the marketplace.
- Additionally, "DONGIL SAILING BOAT" holds registrations in multiple international jurisdictions, affirming its legitimacy and distinctiveness on a global scale.
- The extensive recognition and reputation of our trademark build a strong case for its protection against any infringing marks under Section *(*).
*. Bad Faith and Deceptive Similarity:
- The applicant’s choice of “DONGHIL SEALING BOAT" demonstrates clear bad faith, as it deliberately adopts elements confusingly similar to our registered trademark.
- The resemblance in spelling and phonetics ("Donghil" vs. "Dongil" and "Sealing" vs. "Sailing") for identical goods cannot be coincidental and suggests an intentional effort to mislead consumers.
- This similarity violates Sections *(*)(b) and * of the Bangladesh Trademarks Act, *, as it is likely to cause consumer confusion, dilute our brand's distinctiveness, and infringe upon our established rights.
- The applicant's actions undermine the integrity of the trademark system and the principles of fair competition.
*. Continuous and Uninterrupted Use:
- "DONGIL SAILING BOAT" has been in continuous commercial use in Bangladesh since * without any interruption, further solidifying its status as a well-established and recognizable trademark.
- The mark has never been abandoned, diluted, or allowed to become generic, which is critical in maintaining its legal protection and exclusive association with our goods.
- We have consistently implemented quality control and brand protection measures to maintain its distinctiveness and commercial value, ensuring the mark's integrity and consumer trust under Section *.
*. Exploitation of Established Goodwill:
- The applicant filed for "DONGHIL SEALING BOAT" approximately 20 years after our registration, when "DONGIL SAILING BOAT" had already built substantial market recognition.
- The timing, coupled with the similarity of the mark, indicates an attempt to exploit our established goodwill rather than develop an independent brand identity.
- Such actions harm our brand's reputation and mislead consumers, violating the core principles of trademark law designed to protect brand identity and ensure fair competition, as stated in Section *.
*. Public Interest and Market Transparency:
- Maintaining the registration of "DONGIL SAILING BOAT" and rejecting the deceptively similar "DONGHIL SEALING BOAT" serves the public interest by preventing consumer confusion and ensuring market transparency.
- Allowing the applicant’s mark would undermine the trademark system’s core purpose—clear source identification and brand protection, and could lead to market distortions and unfair competition as established under Section *.
Response to Applicant's Submission: Refutation of Claims Set Forth in Paragraphs * Through *:
- Para *-*: Denied. The applicant's claim of manufacturing and marketing products under the "Donghil Sealing Boat" mark appears to be in bad faith, as it closely resembles the established "Dongil Sailing Boat" trademark. This practice aligns with common examples of bad faith trademark applications, where a party intentionally adopts a mark that is confusingly similar to an existing one to exploit its reputation and goodwill. Such actions not only dilute the distinctiveness of the original mark but also mislead consumers, violating the core principles of trademark law designed to protect brand identity and ensure fair competition.
- Para *: Denied. The applicant's assertion that we are attempting to appropriate the trademark is baseless. Dongil Sailing Boat has been the legitimate owner of the trademark since *. The applicant's use of a similar mark is the act of appropriation.
- Para *-*: Denied. The "Dongil Sailing Boat" trademark is inherently distinctive to our goods. As the legitimate owners and prior users, we have established exclusive rights through continuous use and prior registration. The applicant's adoption of a similar mark is fraudulent and dishonest. Therefore, their application should be rejected. Our prior registration and continuous use establish our exclusive rights to the trademark.
- Para *: Denied. The applicant's claim that we do not export, sell, or market rubber belts in Bangladesh is factually incorrect and irrelevant.
- Para *-*: Denied. No comments as they are self-contradictory.
- Para *: Denied. The use of a similar trademark by the applicant will inevitably lead to consumer deception, causing them to believe that their products originate from or are associated with Dongil Sailing Boat. This directly infringes upon our established goodwill and reputation.
- Para *: Denied. Maintaining the purity of the register and protecting the public interest requires rejecting the applicant's claim. Allowing the registration of a deceptively similar trademark would create confusion and undermine the integrity of the trademark system.
- Para *-*: Denied. The balance of convenience lies firmly in favor of Dongil Sailing Boat, the prior registrant and legitimate owner of the trademark. The potential harm to our established business and reputation far outweighs any inconvenience to the applicant for rectification, who knowingly adopted a similar mark.
Based on the above counter-statements and the provisions of the Bangladesh Trademarks Act, *, we respectfully request that the Registrar:
*. Dismiss the rectification application in its entirety.
*. Uphold the valid registration of “Dongil Sailing Boat” trademark.
*. Award costs and other relief as deemed appropriate.
We reserve the right to supplement these arguments with additional evidence and legal submissions as the proceedings progress.
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Let me know if you need any further assistance!