Case Study 2 – Action against packaging design copies in Myanmar
A Dutch company, Company A, specialising in the production and distribution of professional sealants for commercial and home use, had registered ownership of its trade mark and packaging design for its growing sales of sealants in Myanmar. After several years of sales in Myanmar, they were alerted by their local distributor to the existence of competing products bearing similar packaging design, but with a different logo, on sale in Yangon and Mandalay by resellers of hardware products.
Local attorneys worked closely with the local distributor of Company A to issue, cease and desist letters to resellers of the competing products. Two trade packaging infringement civil law suits were filed in 2014 against the resellers who had continued to use the competing products with the similar packaging design.
The cease and desist letters were effective to the extent that the resellers who received the letters stopped selling the competing products.
Both civil law suits remain pending after two years.
Brand owners may encounter items bearing very similar packaging designs that imitate the shape, colours, surface appearance, graphic features and/or descriptive words, taken from the package of their original products, but without using the brand owner’s principal trademarks / trade-name. Hence brand owners should consider registering their packaging design as a trademark in addition to the registration of their principal trademarks / tradenames.
IP rights owners should also be aware of the typical speed of which civil suits in Myanmar are resolved before initiating trade mark infringement suits.