IPR enforcement in Myanmar
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1. INTRODUCTION ON ENFORCEMENT OF IP IN MYANMAR
In Myanmar, there is no system for registration of trade marks or for a statutory title to a trade mark. Thus, the rights of the parties setting up rival claims to ownership of a trade mark must be determined in accordance with the principle of common law based on ‘prior use’ rather than ‘first to file’.
To prove the ‘actual use’ of a trade mark in a civil suit in Myanmar is very important to achieve a better right over a mark. According to the current practice, as theoretically more than one person can claim the ownership of the same mark, you shall be aware that using your mark first and prior to another party will be very helpful to establish IP rights over your mark.
Due to the rather complicated judicial system in Myanmar, when possible, it is recommended to solve your IP disputes amicably by negotiations or conciliations for the sake of efficiency and time saving.
Criminal action under the Penal Code is possible against a person using a false trade mark or a counterfeit trade mark, making or possessing any instrument for counterfeiting a trade mark or selling goods marked with counterfeit trade marks.
Besides Customs seizures, there are two (2) main avenues for enforcement in Myanmar: criminal enforcement and civil enforcement. In Myanmar, intellectual property rights are not subject to special codified legislation, and are resembled to general property rights. The enforcement avenues reflect the current system. Currently, IPR infringement cases are handled through a rather complicated judicial system with no less than 5 (five) judiciary levels: the Township, District, State or Regional Courts and the Supreme Court. It explains why disputes are usually amicably solved by negotiations or conciliations.
An effective strategy for enforcement of trade marks and protection of trade names is through criminal action under the Myanmar Penal Code 1860.
Criminal action under the Penal Code is possible against a person using a false trade mark or a counterfeit trade mark, making or possessing any instrument for counterfeiting a trade mark or selling goods marked with counterfeit trade marks (according to Sections 482, 483, 485 and 486 of the Penal Code). To initiate a criminal enforcement action, the rights owner or its authorised distributor must first lodge a police complaint, supported by a compiled dossier of evidence. Pursuant to the police’s investigation, a raid action can be carried out to seize the counterfeit goods. The accused person can be exempted if he/she can prove the following:
- The counterfeiting was done in innocence due to a lack of knowledge on how to differentiate between counterfeit and genuine products; and
- Information identifying and disclosing to the authorities the main source of counterfeit goods.
Punishment ranges from a fine to three (3) years imprisonment. Additionally, the court may order the destruction of the seized goods, by drawing upon powers conferred by the Merchandise Marks Act.
A trade mark owner can launch a civil suit against an infringer in Myanmar for trade mark infringement (under Section 54 of the Specific Relief Act) to obtain a permanent injunction. In addition, the owner may claim damages caused by such infringement.
Under the Civil Procedure Code, when a complaint is filed and the accused does not expressly deny the allegation, this is deemed an admission (unless the accusation is made against a disabled person). This mechanism significantly expedites civil procedure in trade mark infringement cases in Myanmar.
To prove the ‘actual use’ in Myanmar is very important to achieve a better right over a mark. According to the current practice, as theoretically more than one person can claim the ownership of the same mark, SMEs shall be aware that using a mark first and prior to another party, will be very helpful to establish IP rights over such mark. The Declaration of Ownership can be used as ‘prima facie evidence’ of ownership or use if a dispute is brought before the court. A declaration judgment is not available in Myanmar.
In practice, the Myanmar court gives significant weight to the proprietorship of a trade mark by use. As a result, in case of a dispute, evidence of use becomes necessary to prove trade mark ownership to the court. Therefore, the relevant date would be the registration date of the Declaration and the first date of use of the mark in Myanmar. IPRs infringement cases are handled by the Township, District, State or Regional Courts and the Supreme Court according to the amount requested for compensation. Disputes can also be amicably solved by negotiations or third party mediation.
However, under the Specific Relief Act, any person entitled to any rights to any property, including intellectual property, may start a lawsuit against any person denying, or interested in denying, his or her title to such right. The court may, upon its discretion, make a declaration that he or she is so entitled.
In common law countries such as Myanmar, rights owners can rely on passing off in enforcing their trade mark rights. The law of passing off allows a trader who has accumulated goodwill in a trade mark to take action against third parties who have misrepresented the latter’s unrelated goods as the trader’s goods, by taking advantage of the trader’s reputation in the trade mark, at the trader’s expense. An enforcement action lies where there is a tangible possibility of damages to some business or trading activity. It is not necessary to prove a fraudulent motive or representation of intentional harm but can also be caused by negligence. In terms of damages that can be claimed with such action, the “injured party” is generally entitled to nominal damages (generally in a very small amount) if no actual damage is proved.
There are two (2) main avenues for enforcement in Myanmar: criminal enforcement and civil enforcement. In Myanmar, intellectual property rights are not subject to special codified legislation, and are resembled to general property rights. The enforcement avenues reflect the current system. Currently, IPR infringement cases are handled through a rather complicated judicial system with no less than 5 (five) judiciary levels: the Township, District, State or Regional Courts and the Supreme Court. It explains why disputes are usually amicably solved by negotiations or conciliations.
IPR infringement cases are handled by the Township, District, State or Regional Courts and the Supreme Court according to the amount requested for compensation. The relevant documents to initiate a civil lawsuit in Myanmar would need to be drafted on an ‘ad hoc’ basis by lawyers licensed to represent clients in the country.
The relevant documents would need to be drafted on an ‘ad hoc’ basis by lawyers licensed to represent clients in Myanmar.
The Myanmar Customs Department is competent for complaints in relation to a shipment containing counterfeit goods upon request. No official forms are available according to the inputs received by local External Experts and no forms are available on the official website of the Myanmar Customs Department, however, the official website has a specific page with a “Contact Us” form (http://www.mof.gov.mm/en/contact) though which SMEs can leave a specific message to liaise with the local Customs and receive advice on necessary steps according to the local regulations. The service is available in English.
2. USING CUSTOMS TO BLOCK COUNTERFEITS
The Myanmar Customs Department is a governmental agency of the Ministry of Finance. Customs provide examination and investigation on goods imported and exported in accordance with existing laws, rules and regulations and take action against incompliance; they work in co-operation and co-ordination with other allied law enforcement agencies and support the development of trade and national economic development.
The Sea Customs Act 1878 prohibits export or import by land or sea of goods with a counterfeit trade mark. Under sections 170 and 171, a Customs officer is authorized to stop and search any person, vessel or vehicle on the grounds of reasonable suspicion.
Myanmar Customs Department provides a recordal system for trade marks upon application of the trade mark owner. Goods bearing the recorded trade mark imported by any party other than the local company granted with distributorship rights will be detained at customs.
In addition, the IPR holder may inform the customs of suspected importation of infringing goods by notifying Customs when he/she is aware of specific import of counterfeits for Customs to take action.
Based on the current practice of the Myanmar Customs Department, a customs recordal is valid in perpetuity, and there is no requirement to renew it.
The requirements and procedures for voluntary recordal are as follows:
a) Application letter from the right holder or the authorized agent (law firm) addressed to the Director General, Myanmar Customs Department, Yangon;
b) Contract between local company (authorized distributorship) and the right holder;
c) Authorization letter of distributorship to the local company from the right holder / Distributorship agreement between local company and right holder (legalized and notarized at the nearest Myanmar embassy from the country of the right holder);
d) Trade mark sample;
e) Registered declaration of the ownership of trade mark in Myanmar;
f) Publication of cautionary notices in the newspaper;
g) Power of attorney from right holder to law firm (legalized and notarized at the nearest Myanmar embassy); and
h) Description of product.
The application should be delivered to the Dispatch Unit of customs. The application will be forwarded from the Director General to the Director of Import/Export to the Staff Officer who will review the application.
Upon successful application, a notification of the protection from the importation of counterfeited goods will be issued to the applicant. If all required information/documentation have been provided, the application will be processed within one-two (1 – 2) weeks.
To our knowledge, the officers strictly require all documents listed above to approve the application and have rejected applications where item b) had been omitted due to sensitive commercial details included in the document.
Both local and foreign rights owners can submit a customs recordal application.
Applications must be submitted in Burmese. Foreign rights owners can submit applications in English, but they must be accompanied by a translation in Burmese.
Right owners can submit an application of customs recordal, and they can notify customs officers to suspend the customs clearance of specific goods suspected of being counterfeit. Furthermore, Customs officers have ex-officio power to confiscate suspected counterfeit goods.
As IP owner, you should closely work with Customs and try and provide trainings on your goods to help Customs identify counterfeits to trigger the ex-officio action.