Protection Of Trade Marks In Myanmar¹

Unfortunately, it appears that infringement of famous marks is increasing in Myanmar.² As there is currently no legislation in Myanmar giving a proprietary right to a mark upon registration,³ one must look to Myanmar’s general law to determine the acquisition of title to and protection of trade marks in Myanmar.⁴

Although there is no legislation in Myanmar yet giving a "registered owner" of a mark proprietary title to that mark, there is a procedure which 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. This Declaration of Ownership ("Declaration") may then be registered with the office of the Sub-Registrar of Deeds and Assurances in Yangon. Once the Declaration is registered⁵ it is customary and advisable to publish a "Cautionary Notice" in the English language daily newspaper warning people not to the infringe the trademark. Such "registrations" are valid for five years from the date of registration and may be "renewed" by re-registering a Declaration and re-publishing a Cautionary Notice.

Registration of the Declaration and publication of the Cautionary Notice serve to establish the "use" of the trade mark for evidentiary purposes in any future dispute or passing-off action, they do not in themselves create any legal or proprietary right to the relevant trade mark.⁶

Even though property in a name or mark is not vested in the "registered owner" through registration under statute in Myanmar, the general law does provide that no trader has any right to represent his/her goods as the goods of somebody else.⁷ An action to enforce this principle, namely an action based on passing off, lies where there is a tangible possibility of damages to some business or trading activity. It is not, however, necessary to prove a fraudulent motive or representation and the "injured party" is entitled to nominal damages if no actual damage is proved.

The consequence of the application of the right to prevent passing off is that a trader ("the plaintiff"), who uses a name, mark or get-up (hereafter collectively referred to as "the mark") that has become distinctive of his/her goods, can prevent others using the same or a similar mark where that use will deceive or is likely to deceive a substantial number of members of the trade or public into thinking that the goods offered for sale or supplied by those others are the goods of or manufactured by the plaintiff.⁸

The plaintiff need not prove that the mark has always been used by him/her alone or, indeed, that it has been used as the name of his/her goods, so long as the public has used it as such.⁹ Further, the plaintiff need not show that the use has been such that the public associates the goods so sold under the mark with his/her name, as long as it can be shown that the public understands the mark to mean goods made by some particular manufacturer or sold by some particular merchant.

The extent of the use which is necessary for the plaintiff to prove depends on the nature of the mark and other circumstances of the case. In general, it is sufficient to

prove use of the mark within a limited area or even use abroad, provided that the area and use are such that confusion is likely to arise between the goods of the plaintiff bearing the mark and the other’s goods.

In certain cases, the first use of a trade mark upon or in connection with a trader's goods with the intention of indicating origin may, assuming the mark is otherwise capable of doing so, be sufficient to establish "use".¹⁰

Myanmar Courts will only intervene where the plaintiff can show that another’s actions may endanger the goodwill of the plaintiff.¹¹ Therefore, the type of trade in which the goods are sold, as well as the geographical area in which the goods are sold, will be of great importance. Case law on point shows that there must be some common field of activity in which, however remotely, both the plaintiff and the other are engaged:¹²

"A person does not acquire a monopoly in the use of the any trade name irrespective of the kind or class of goods inasmuch as there is no such thing as a monopoly of property in the nature of copyright or patent. An owner of a trade mark in respect of a particular commodity has no right to prohibit or prevent another person from the use of such mark in connection with goods of a totally different character."

However, it is not necessary that the trades should actually overlap and protection will be afforded where the other is selling goods which are of so similar a nature to those of the plaintiff bearing the mark that a purchaser might infer a common origin. In addition, Myanmar Courts will take account of likely extensions of the plaintiff's trade in the future.

In deciding whether two marks are so alike that there is a tangible probability of confusion, the Court considers the impression likely to be conveyed by the mark as a whole.¹³ In Admjee Hajee Dawood Co. Ltd v. Swedish Match Company, the Court held, in respect of the Plaintiffs’ use of a star design mark on its matches, that the "plaintiffs had not established a right to restrain everybody from using a design for matches in which any number of stars is a distinctive mark."¹⁴

Other factors considered by the Court include the price and quality of the goods sold by the parties, since a considerable difference in these respects will naturally diminish the probability of confusion. In considering whether there is any likelihood of deception of the public by a mark applied to goods, the persons to be considered are ordinary sensible members of the public, excluding both those who are particularly knowledgeable in the particular trade and those who are so ignorant that they ought not to be taken as representative.

It is not necessary for the plaintiff to show that confusion has actually occurred between the goods of the plaintiff and the other in order to obtain an injunction, if the Court is of the opinion that there is a strong probability of confusion occurring in the normal course of trade. Of course, the fact that such confusion has actually occurred is strong evidence of the probability of its recurrence in the future.

A defendant in a passing off action may deny the plaintiff's title to the mark,¹⁵ allege fraud, acquiescence or a licence disentitling the plaintiff to succeed, plead that there was no real and tangible danger of confusion arising by the use of the mark or that he/she has an independent or concurrent right to use the mark. Such concurrent rights may arise through use or through inheritance, whereby all of the children, for example, of the deceased trade mark owner have the right to use the mark.¹⁶

If the defendant can show general use by others of the mark sued on, this will defeat the plaintiff's claim to a monopoly right in the mark. Further, in Daw Thet Pu v. Saya Khin, the Court established that:

"A trade-mark or name which is primarily descriptive of an article …must be open to the trade and cannot be claimed for exclusive use by one trader."¹⁷

Apart from general use, the defendant could also show use by himself/herself or predecessors in business, perhaps merely local, but bona fide and of sufficient duration to negative the idea of deception.¹⁸ However, such individual and localised rights of use will not prevent the plaintiff from succeeding against third parties.

If the plaintiff had allowed another person who is acting in good faith to build up a reputation under a mark to which the plaintiff has rights, the plaintiff may lose the

right to bring proceedings for infringement or passing off in respect of the use of the mark by the other person and may even be debarred himself/herself from using the trade mark in the relevant region. However, even long use of a mark by another, if fraudulent or surreptitious, does not affect the plaintiff's right to a final injunction.¹⁹

The remedies which may be granted in actions for passing off include both interim and permanent injunctions and an award of damages or an account of profits.²⁰ Also, in appropriate cases, orders may be made for the delivery up of infringing articles or labels for the destruction of those articles or the erasure of the offending mark. Where the mark can be erased, the order will be for erasure only.

An indirect but none the less effective avenue for enforcement of trade marks and protection of trade names is through criminal action under the Myanmar Penal Code 1860 and/or the Merchandise Marks Act 1889. For the purposes of the Penal Code and the Merchandise Marks Act, a trade mark is:

"a mark used for denoting that goods are the manufacture or merchandise of a particular person".²¹

The benefit of criminal action is that the Merchandise Marks Act’s forfeiture provisions, which also apply to offences under the Penal Code, give significant powers to the Court to order the forfeiture of infringing goods, whether or not a conviction is actually secured.²²

Under the Penal Code it is an offence, among other things, to:

(i) "use a false trade mark", unless such act was done innocently, without intent to defraud;²³

(ii) counterfeit a trade mark;²⁴

(iii) make or possess any die, plate or other instrument for the purpose of counterfeiting a trade mark or possess a trade mark for denoting that any goods are the manufacture or merchandise of a person whose manufacture or merchandise they are not;²⁵

(iv) sell or possess for sale or any purpose of trade or manufacture any goods to which a counterfeit trade mark is affixed or impressed unless proved that:

(a) having taken all reasonable precautions against committing an offence, there was no reason to suspect the genuineness of the mark;

(b) all information known about the person from whom the goods were obtained was given to the prosecutor; and

(c) otherwise, the activities in question were done innocently.²⁶

A person is deemed to "use a false trade mark" if they mark any goods or packaging in a manner reasonably calculated to cause it to be believed that the goods are the manufacture or merchandise of a person of whose manufacture or merchandise they are not.²⁷

If convicted, the penalty for offences (i) and (iv) is imprisonment for up to a year, a fine or both, for offence (ii) it is imprisonment for up to two years, a fine or both and for offence (iii) it is imprisonment for up to three years, a fine or both.

The trade mark protection possibilities under the Penal Code, described above, tie in with the protections and remedies afforded under the Merchandise Marks Act, 1889.

Every person who does any of the following is guilty of an offence²⁸ under the Merchandise Marks Act, unless it can be proved that they acted innocently and

without the intent to defraud:²⁹

(i) applies any "false trade description" to goods;³⁰ or

(ii) sells or exposes or has in possession for sale or for any purpose of trade or manufacture, any goods or things to which any or false trade description is applied.³¹

The punishment for each of these offences on conviction is imprisonment for up to three months or a fine and in the case of a second or subsequent conviction, imprisonment for up to one year or a fine or both.³²

A "false trade description" is a trade description which is untrue in a material respect as regards the goods to which it is applied.³³ The fact that the trade description is a trade mark or part of a trade mark does not prevent it from being a false trade description for the purpose of the Merchandise Marks Act. A false trade description also includes the application to goods of any figures, words, marks or arrangement or combination of them, whether including a trade mark or not, as are reasonably calculated to lead a person to believe that the goods are the manufacture or merchandise of some person other than the person whose manufacture or merchandise they really are.³⁴ In this respect, the Court has laid down the following test:

"The proper test is whether the "get-up" of the accused’s goods is likely to deceive a purchaser who is acquainted with the complainant’s "get-up", but who trusts his memory. It is to be assumed that the purchaser will look fairly at the goods without the distinguishing features being concealed and the Court must also have regard to the class of purchasers by whom the goods would normally be bought."³⁵

Also, any person within Myanmar who aids or abets the commission of any act which, if committed in Myanmar, would be an offence under the under the Merchandise Marks Act or Chapter XVIII of the Penal Code,³⁶ is deemed to be guilty of that offence and is subject to prosecution for and the penalties applicable to that offence.³⁷

The Court may order the forfeiture to the Court of all goods and things by means of or in relation to which an offence has been committed or, where the accused is not convicted because the contravention was found to be unintentional, would have otherwise been committed.³⁸ The offences to which forfeiture apply are:

(i) use of a false trademark (Sections 480/482 and 487/488 of the Penal Code);

(ii) selling/possessing for sale goods with a counterfeit trade mark (Section 486 of the Penal Code);

(iii) applying a false trade description (Section 6 of the Merchandise Marks Act); and

(iv) selling/possessing for sale goods to which a false trade description is attached (Section 7 of the MM Act).

Criminal action provides a powerful and timely remedy to trade mark owners and should be considered along with any civil actions to be pursued.

A further possible cause of action in respect of trade mark infringements in Myanmar exists under Section 54 of the Specific Relief Act, 1877. This cause of action was

recently reinvigorated by the Director General of the Office of the Attorney General.³⁹

Section 54 of the Specific Relief Act provides that "when the defendant invades or threatens to invade the plaintiff’s right to, or enjoyment of, property, the Court may grant a perpetual injunction …". The "Illustrations" to the operation of Section 54 include, among others, where:

"(w) A improperly uses the trade mark of B. B may obtain an injunction to restrain the user, provided that B’s use of the trade mark is honest."

Further, Section 54 of the Specific Relief Act specifically provides that "for the purpose of this section, a trade mark is property." Thus, even without a system of registration of trade marks giving proprietary title on registration, judicial authority in Myanmar has held and the Director General of the Office of the Attorney General has re-asserted that an action for infringement of trade mark, distinct from and additional to an action for passing off, is maintainable under Section 54 of the Specific Relief Act. Specifically, the Court held in the Johnie Walker Case that:

"A trade mark, being in the nature of property, cannot be appropriated by anyone without the permission of its owner. If a person appropriates it, he will be committing an actionable wrong whether he does it honestly or fraudulently."⁴⁰

Actions under Section 54 of the Specific Relief Act for infringement of trade marks appear to be more straight forward procedurally than the alternative trade mark infringement actions currently available in Myanmar. For this reason alone, even though the boundaries of such an action are yet to be fully tested in the Myanmar Courts, this cause of action should be seriously considered by potential plaintiffs in trade mark infringement cases.

As a result of the success of the "National Seminar on Intellectual Property",⁴¹ a draft trade mark law regulating the registration of trade marks and providing for proprietary title upon registration is believed to be under consideration by the Government. It is expected that the trade mark law will be enacted in the near future.

One possible requirement which may be included in the trade mark law is that the permission of the body overseeing the operation of the trade marks law would be required before legal proceedings could be instituted under the trade mark law. However, it is likely that civil or criminal proceedings under any other Act, Law or Myanmar’a general law might still be able to be taken against any person or organisation which infringes the owner’s rights in a trade mark, without such approval. Thus, civil actions under the general law for passing-off and the Specific Relief Act and criminal actions under the Merchandise Marks Act and the Penal Code for counterfeit marks, knowingly selling infringing products and the like are likely not to be affected by the trade marks law.

It is also likely that the trade mark law will not extend its protections to those trade marks for which only a Declaration of Ownership is registered. If a trade mark owner wishes to obtain the protections afforded by any trade marks law then the trade mark will need to be registered under and according to any new law. In any event, it is more than likely that the trade marks law will provide for any benefits under or rights attaching to marks for which Declarations of Ownership has been registered or gained by use of the mark in Myanmar will automatically lapse within a specified time.

It is understood that the Government has been assisted by WIPO in drafting the trade mark law and that Myanmar will join WIPO and accede to the Paris Convention⁴² (and possibly the Nice Agreement).⁴³ As a member of the World Trade Organisation ("WTO"), Myanmar is also considering ratifying the WTO Agreement and thereby becoming bound by the Trade Related Aspects of Intellectual Property (or "TRIPS") Agreement.

Footnotes