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I. Legal grounds
At present, Myanmar has no IP Laws. Therefore, it also has no specific IP Governing Body as yet. In Myanmar, as domestic legislations, IP rights are protectable under the following existing laws:
II. Trademark related matters in Myanmar
*Important Notice: Changes and Impact of Myanmar IP Law on Trademarks
1. Definition of trademarks
There is still neither a particular statute nor a law on trade marks nor specific provisions regarding registration of trade marks in Myanmar today. However, the Penal Code 1860 defines a trade mark as “a mark used for denoting that goods are the manufactured merchandise of a particular person”. References to trade marks can also be found in various legislation, such as the Criminal Procedure Code, the Private Industrial Enterprise Law and the Merchandise Marks Act.
2. Basic information on trademarks in Myanmar
A company may acquire a right of property in a mark in Myanmar by using it on – or in connection with – the company’s goods or services, if it can be shown that the public understands the mark to indicate goods made by a particular manufacturer or sold by a particular company/merchant. This understanding would accumulate goodwill in such a mark.
While there is no trade mark registration legislation in Myanmar, a practice has developed by which the person purporting to be the trade mark owner may make a Declaration of Ownership with respect to that trade mark and register that Declaration with the Office of Registration of Deeds in Yangon or Mandalay under the Registration Act 1908. Once the Declaration is registered, it is customary and advisable to publish a Cautionary Notice in local newspapers warning people not to infringe that trade mark.
Enforcement can thereafter be pursued (a) under Sections 478-480 of the Myanmar Penal Code; (b) against infringement under Section 54 of Myanmar’s Specific Relief Act and under the Myanmar Merchandise Marks Act and (c) under the common law tort of passing off. The ‘law of passing off’ essentially prevents other traders from unfairly riding on the reputation and successthat the applicants have built for their trade mark. Three factors need to be proved before a claim of passing off can succeed: (i) that a company has established a connection to their trade mark through actual use within Myanmar; (ii) that the defendant has made a misrepresentation to the public that his goods or services are in some way associated or connected with them; (iii) as a result, the company has suffered damage to its brand’s reputation due to such misrepresentation by the defendant.
Myanmar generally relies on the principles of the system of common law. The registration of a Declaration of Ownership of a trade mark can be used as a relevant factor for the purpose of determining when the SMEs intend to claim the ownership of the trade mark, but this will not by itself give a full right of property in that trade mark. Thus, as with common law trade marks in other jurisdictions, a Myanmar trade mark needs to have established a reputation or “use” in Myanmar in order to be enforceable. SMEs shall be aware that they should actually use the trade mark within the territory. A registration of a Declaration of Ownership and publishing a Cautionary Notice do not automatically give the owner of a trade mark the necessary “use” in Myanmar or vest rights of that trade mark.
Registration of a Declaration of Ownership of a trade mark can be refused under the following circumstances:
The draft Trademark Law issued in July 2015
Based on the current Trademarks Bill issued in July 2015, the term of a registered trade mark will be ten (10) years from the filing date, and can be perpetually renewed for additional ten (10) year terms. Furthermore, both domestic and foreign owners of marks could apply for trade mark registration under this law. Court proceedings will be under the jurisdiction of IP courts which are expected to be created in accordance with the provisions in the Industrial Designs Bill.
Importantly, trade mark owners who have registered a Declaration of Trade Mark Ownership with the Office of Registration of Deeds under the Registration Act before this law comes into force will have to apply for a new registration under the new law, and there will be no transitional period. International trade mark owners are also able to claim priority over their international trade marks.
Term of protection
There is no trade mark registration available in Myanmar at present. The “registrations” of Declaration of Ownership are, in practice, valid for three (3) years from the date of registration and may be “renewed” by reregistering a Declaration and re-publishing a Cautionary Notice.
Citizens of Myanmar and foreigners can register their trademarks. A Declaration in the prescribed form must be completed by the person purporting to be the trade mark owner for each trade mark, and must be executed before a Notary Public.
A description of the goods or services on or in connection with which the trade mark is used and a clear representation of the mark must be included in the Declaration.
A Power of Attorney must be executed (by the same party who signs the Declaration) appointing local counsel to be the attorney of the trade mark owner for the purposes of registering the Declaration(s) at the Office of Registration of Deeds.
A non-compulsory Cautionary Notice (which may include details of more than one mark) should be published in local newspapers, either in the English language, Myanmar language or both.
For foreign applicants, the Declarations of Ownership and Power of Attorney are submitted in English, and must be accompanied by a translation in Burmese. Cautionary Notices can be published in English, Burmese or both.
Myanmar’s existing system allows the recordal of your marks with the Office of Registration of Deeds under the Registration Act.
The registration of a Declaration of Ownership of a trade mark by a person, though a relevant factor for the purpose of determining when he had intended to claim the trade mark as his/hers, will not by itself give him/her a right of property in that trade mark. The registration of the Declaration and publication of the Cautionary Notice only serve to establish prima facie “use” of the trade mark in Myanmar for evidentiary purposes in any future dispute or passing-off action. They do not in and of themselves create any legal or proprietary right to the relevant trade mark. It is important that you establish a reputation or “use” in Myanmar in order to enforce ownership.
Trade mark searches/inspections of the official register of Declarations are not currently permitted. However, because the Cautionary Notices are published in the newspaper, private collections of Cautionary Notices can be searched as a guide to whether a Cautionary Notice for a mark has been published.
In case of litigation, it will be sufficient in court to prove imitation if there exists a similarity between the two marks which could in certain circumstances be considered to be conceived to deceive the consumers.
A trade mark or name which is primarily descriptive of an article, of its composition or mode of manufacture, must be open to everyone and cannot be claimed for exclusive use by one trader.
An owner of a trade mark has no right to prohibit other persons from the use of such mark in connection with goods of a totally different character.
3. Registration of trademark/ service mark
4. Vital Role of the Cautionary Notice / Advertisement
5. Renewal of Trademark Registration
6. Law enforcement for protection of Trademark/ Service Mark
Criminal action under the Penal Code also is possible against a person using false trademark or counterfeiting a trademark, or making or possessing any instrument for counterfeiting a trademark or selling goods marked with a counterfeiting trademark, respectively under section 482, 483, 485 and 486 of the said Code.
According to the exemptions of Section 486 of Penal Code, the accused person can be exempted from accusing if she/he can prove as follows:
(1) Perform innocently due to the lack of knowledge on differentiate of counterfeit and genuine.
(2) Can identify the main source of counterfeit goods are obtainable
Punishments ranges are from fine to 03 years imprisonment additionally by a court order of seizure and destruction of infringing articles and goods.
In criminal nature, it is necessary to make preliminary survey on the nature of suit. Base on pre-survey result. We (Coordinating agent) can choose the line of action, hard line (taking raid action against selling of counterfeit goods) or take principal line (made the seller of counterfeit goods sign the Deed of Confession).
Cautionary Notice in Myanmar
1. What is a Cautionary Notice in Myanmar?
Cautionary Notice actually serves as an IPR warning which is published in Myanmar journals for public awareness of the ownership of the trademark.
2. Why is it important to follow a Cautionary Notice in Myanmar?
In countries where IPR registration is not recognized, protection is sometimes provided by the publication of Cautionary Notices in newspapers or periodicals that have a wide circulation within the relevant country or region. While Cautionary Notices are not legally required by any laws in Myanmar, they are a practical requirement should the owner of the intellectual property want to defend it against infringement. Myanmar recognizes cautionary notices as a way of protecting intellectual property. An effective Cautionary Notice in Myanmar may discourage infringement and can be relied upon as evidence of exclusive rights in a mark.
3. What are contents of the Cautionary Notice in Myanmar?
The Cautionary Notice in Myanmar should state the name and address of the proprietor, as well as a description of the intellectual property. In the case of a patent, an abstract is required, and in the case of a design, the shape of the design is required. A trademark needs only to be typed unless a special form is to be protected, in which case the special form should be reflected in the Notice.
4. Is our client’s trademark advisable to be published in the form of Cautionary Notice in Myanmar?
The answer depends on whether the trademark owner actually uses his mark in Myanmar or not. If the mark is not used in Myanmar after its registration or if it is not extensively used in Myanmar (i.e. no appointed distributor etc.), then it is recommended to publish the mark as a cautionary notice in Myanmar newspapers.
5. Which Myanmar newspaper should the trademark owner publish his mark in the form of Cautionary Notice?
There is a variety of Myanmar newspapers state owned or private, daily and weekly, English and Myanmar languages. Most cautionary notices are published in three (03) major newspapers The Myanmar times, Myanmar Daily Journal, The New Light of Myanmar.
6. How often should our client’s publish a Cautionary Notice?
There is no written rule. Common practice indicates that a Cautionary Notice should be republished every 3-4 years. Extensively used marks should not construed as a way of republishing the Cautionary Notice since Myanmar people should understand who owns these marks.