By Alec Christie, DLA Piper Australia
With the resurgence of business interest in Myanmar, the loosening of sanctions and the growing feeling that Myanmar is again “open for business”, it is essential that trade mark owners selling their goods or services in Myanmar (or if others are importing and selling their goods in Myanmar) urgently consider their trade mark position for and how to protect their trade marks in Myanmar.
There is currently no legislation in Myanmar giving a proprietary right to a mark on registration. One must therefore look to Myanmar’s general law to determine the acquisition of title to and protection of trade marks in Myanmar.
Registering a Declaration of Ownership
A person purporting to be a 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 (or appropriate Township Office of the Settlements and Land Records Department). Once the Declaration is registered it is advisable to publish a “Cautionary Notice” in the daily newspaper to warn people not to the infringe the trade mark. Such “registrations” are considered to be “valid” for three 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 but they do not, contrary to the views of many commentators, in themselves create any legal or proprietary right to the relevant trade mark.
Passing off
The general law provides that no trader has any right to represent his/her goods as the goods of somebody else. 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. The “injured party” is entitled to nominal damages if no actual damage is proved.
Protection of trade marks, names and get-up
A plaintiff who uses a name, mark or get-up (“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.
Use of the mark required
The plaintiff need not prove that the mark has always been used by him/her alone or, indeed, that it has been formally used as the name of his/her goods, so long as the public has used it as such. 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 the particular goods are made by particular manufacturer or sold by a 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.
Confusion/deception
Myanmar Courts will only intervene where the plaintiff can show that another’s actions may endanger the goodwill of the plaintiff. 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.
However, it is not necessary that the trades should actually overlap. Protection will be afforded where the other is selling goods which are of such a 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. Other factors considered by the Court include the price and quality of the goods sold by the parties. 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. 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. Of course, the fact that such confusion has actually occurred is strong evidence of the probability of its recurrence in the future.
Defences to passing off actions
A defendant in a passing off action may deny the plaintiff’s title to the mark, 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. 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. The defendant could also show use by himself/herself or predecessors in business. However, individual and localised rights of use will not prevent the plaintiff from succeeding against other third parties.
If the plaintiff had allowed another person who is acting in good faith to build up a reputation under a mark, 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.
Available remedies
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. In addition to these civil remedies, another avenue for enforcement and protection is through criminal action under the Myanmar Penal Code 1860 and/or the Merchandise Marks Act 1889. A further cause of action in respect of trade mark infringements in Myanmar exists under Section 54 of the Specific Relief Act, 1877, which is more straightforward. 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.
Expected future developments
Myanmar is a founding member of the WTO, WIPO, and has been engaged with both organisations in respect of IP related seminars and discussions on new IP laws since 1997. Given the renewed business interest in Myanmar and the “business friendly” Government now in place, it is expected that a new trade mark law providing for proprietary rights in marks on registration will be considered by the parliament in the near future.
Trade mark owners should implement their trade mark strategies for Myanmar based on the current law, because if trade mark owners wait and the new legislation grandfathers in those trade marks for which a Declaration of Ownership has been lodged (or otherwise gives them priority for registration) trade mark owners may find that another party has the trade mark rights or priority in Myanmar for their trade mark.
We recommend that the old adage “prevention is better than cure” be followed and urge you to implement your trade mark strategy for Myanmar now.
For more information on trade marks (including a detailed paper on protection of trade marks in the “new” Myanmar), intellectual property and/or doing business in Myanmar, please do not hesitate to contact:
Alec Christie, Partner
Tel: +61 2 9286 8237
alec.christie@dlapiper.com