2017 31 January

Myanmar – IP Law Developments

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Currently, there is no dedicated statute or law on trademarks in Myanmar. However, according to Section 18(f) of the Registration Act of 1909 or Directive No. 13 of the Inspector General of Registration, it is possible for a proprietor to register a trademark by means of a “Declaration of Ownership of Trademark” with the Office of the Registration of Deeds under the Ministry of Agriculture, Livestock and Irrigation and Assurances. It is accepted practice to then publish a cautionary notice detailing the registration in a local newspaper in order to make it public. The registration constitutes prima facie evidence of trademark ownership in a criminal or civil proceeding against an infringer.

Process

The process to register a trademark in Myanmar is threefold. First, a search of registered trademarks may be conducted to ensure that the mark has not previously been registered. However, Myanmar does not have a dedicated IP Office and the Office of the Registration of Deeds does not offer an official search facility. As such, a trademark search in Myanmar is based on our private index of trademark cautionary notices published in newspapers or journals, as is the case with services offered through other firms. This type of search is not comprehensive as the publication of a cautionary notice is not compulsory. In any case, the Registrar does not conduct a search of prior marks when examining a Declaration of Ownership filing.

Second, in order to register the mark in accordance with Section 18(f) of the Registration Act 1909, the owner of the mark must submit a signed Declaration of Ownership with the Office of the Registration of Deeds attesting that the mark is in fact the property of the applicant and must include a description of the designated goods and services in connection with the trademark. The required documents include (i) Power of Attorney, (ii) Declaration of Ownership of Trademark and (iii) original specimens (samples) of each trademark.

Furthermore, the Myanmar Stamp Act stipulates that every instrument to which the duty applies, when executed outside of Myanmar, must be duly stamped within three months of entering the country. The process of obtaining trademark registration from the Office of the Registration of Deeds takes at least three weeks from the date of filing the application.

Foreign trademark owners are not permitted to file a registration at the Office of the Registration of Deeds, they must apply through a local licensed agent or a lawyer. The required documents must be in English, or certified English translations provided where other languages are used.

Lastly, although not officially required, it is accepted practice to publish a “cautionary notice” in a newspaper with wide circulation to give constructive notice that the mark has indeed been registered. Obviously, the publication of a trademark cautionary notice draws the attention of the public to the fact that the mark is owned and in use by the owner or licensees. The notice should include the name of the trademark, its owner, the registration number and a warning stating that any fraudulent imitation or unauthorized use will be dealt with in accordance with the law.

Treaty Obligations

Myanmar became a member of the World Intellectual Property Organization (WIPO) in May 2001. As an existing member of the World Trade Organization (WTO) and in keeping with TRIPS Agreement obligations, Myanmar was due to bring new intellectual property laws into force in January 2006. However, through a decision by the WTO Council for TRIPS made on 29 November 2005, Myanmar and other least-developed countries were given an extension until 1 July 2013 to provide protection for trademarks, copyright, patents, and other intellectual property under the WTO. The draft intellectual property laws regarding trademarks, patents, copyright, and industrial designs were to be submitted to the Myanmar Parliament by 1 July 2013, but this has not eventuated.

Legal Analysis

There is no specific body of law in Myanmar dedicated solely to trademarks. The legal right to a trademark in Myanmar partially depends upon general principles of common law. In the absence of specific legislation, the above process has developed and represents a strong customary practice for the evidence-based affirmation of ownership rights to a trademark. Although these procedures do not legally guarantee enforceability, the registration, along with the published cautionary notice, serve as a crucial component of evidence in any common law litigation regarding passing off or trademark infringement.

Generally, in order to enforce IP rights in relation to a trademark, the owner must produce three forms of evidence, namely that;

  • The owner authentically owns the mark;
  • The owner is the original inventor of the mark; and
  • The mark was used in Myanmar at some time.

In terms of a civil action for trademark infringement or passing off, the relief granted by the court is a temporary or perpetual injunction and/or damages for losses. Instigating a criminal action, due to counterfeiting the trademark for example, falls under the Penal Code. The Penal Code details various offences such as false trademark, counterfeiting a trademark, making or possessing any instrument for counterfeiting a trademark, and selling goods marked with a counterfeit trademark.

Any person using a mark who reasonably calculates that purchasers will believe the goods to be genuinely manufactured by another is deemed to be using a false trademark. Use of a false trademark (unless no intent to defraud can be proven) is punishable by a term of imprisonment of up to one year, a fine, or both.

Draft Trademark Law

The Draft Trademark Law was submitted to the Myanmar parliament in 2013; however it has yet to approved or put it into force. It is expected, however, that Parliament will pass the Draft Trademark Law, or a version of it, very soon.

This draft law is expected to introduce a ‘first-to-file’ system, meaning that the person or entity which registers a trademark first will become its rightful owner. Anyone wishing to determine whether a trademark has previously been registered and/or is different from those trademarks previously registered, must apply to the Intellectual Property Office, which the law will presumably establish, pay a registration fee and conduct the relevant search.

The term for trademark registrations under the proposed law will be ten years from the application submission date and shall be renewable for ten-year periods thereafter.

Under the draft law a trademark owner may initiate litigation in a criminal and/or civil action for an alleged infringement. Myanmar is currently in the process of establishing special IP Courts that will hear criminal and civil cases regarding infringements. Trademark infringement will also be a criminal offence under the draft law, punishable by up to three years in prison.

Under the draft law, any owner of a mark who has had it registered under the current regime pertaining to the Registration Act 1909 will need to re-file an application under the new provisions once they come into force in order to continue enjoying the rights entitled by a registered mark.

Please contact William Greenlee or Ei Ei Thein if you would like further information.