Trademark in Myanmar (Burma) - Frequently Asked Questions

• As Myanmar does not have a Trademark Registration Act, as current practice, the following subjects have the right to register trademarks:

  • citizens and legal entities of Myanmar;
  • foreigners or foreign companies and organisations;
  • the organisations or individuals producing or servicing the goods they provide; and
  • 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 or merchant.
  Ownership of marks

• As Myanmar does not have a Trademark Registration Act, trademark definition is referred in different Law or regulation, in which:

  • the Penal Code defines a trademark as ‘a mark used for denoting that goods are the manufactured merchandise of a particular person’, while the Private Industrial Enterprise Law states that ‘a business is not allowed to distribute or sell its goods without trademark’;
  • rights of property may be acquired in a trademark on the proved association in the market of the device, name, sign, symbol or other means in question with the goods of the plaintiff. Use of the same by the defendant, whether intentional or otherwise, will amount to false representation; and
  • ‘non-traditional’ marks, such as sounds and smells, may not be registered at this moment.
  Scope of trademark

• The registration of a declaration of ownership of a trademark by a person, though a relevant factor for the purpose of determining when he had intended to claim the trademark as his or hers will not by itself give him or her a right of property in that trademark.

  Thus, as with common law trademarks in other jurisdictions, a Myanmar trademark needs to have established a reputation or ‘use’ in Myanmar in order to be enforceable; registration of a declaration of ownership and publishing a cautionary notice do not give the purported owner of a trademark the necessary ‘use’ in Myanmar or vest rights of that trademark.

  It was firmly established that a trader acquired a right of property in a distinctive mark merely by using it upon or in connection with his or her goods irrespective of the length of such user and of the extent of his trade. In Myanmar there is no system of registration of trademarks, nor a statutory title to a trademark. Thus the rights of parties setting up rival claims to the ownership of a trademark must be determined in accordance with the principles of common law. At common law the use of a trade name or mark that has been adopted by another is actionable only if it tends to mislead by making it appear that the goods sold under it are the goods of another.

  It is settled law that in Myanmar there is no method by which a trademark may be registered, but property in or right in respect of a mark may be acquired by the user.

  Common law trademarks

• Time frame

  In general, registration for a trademark will be about four to six weeks.

  Costs

  The basic total fees and charges for registration and publication of the cautionary notice of a trademark in Myanmar (attorney costs included) is US$600-1,200.

  In practice, the total and exact costs mainly depend on the size of the advertising page of the mark.

  Documents

  The applicant or trademark agent must prepare all the statutory required documents before registering:

  • a special power of attorney signed by the owner of the trademark in the presence of the notary public and two witnesses, with the certificate endorsed by the Myanmar embassy or a consul or embassy official. Usually the special power of attorney is differently legalised according to the country’s legal system;
  • a dozen representations of the trademark; and
  • the declaration of ownership of trademark including stamp duty.
  Registration time frame and cost

• It is settled law that a person does not acquire a monopoly in the use of any trade name irrespective of any kind or class of goods in as much as there is no such thing as a monopoly of a property in the nature of copyright or patent. An owner of a trademark in respect of a particular commodity has no right to prohibit or prevent other persons from the use of such mark in connection with goods of a totally different character.

  In practice, NICE classifications are usually applied in registration of the mark. Multi-class applications are available and the estimated cost savings are about 20 per cent.

  Classification system

• Examination

  At this time, trademark applications are not examined as to formality and substantive examination. They are just stamped or certified.

  Publication

  A publication of cautionary notice for the trademark in a local newspaper is recommended after the registration of trademark. The purpose of publishing a cautionary notice is to inform the general public about the registration and claim to ownership and warn against potential infringement.

  Response to rejection

  There is no examination, rejection or response to rejection in Myanmar at this time.

  Examination procedure

• Use of trademark at registration

  The applicant may register for a trademark without using or claiming before registration. Therefore, proof of use does not have to be submitted at registration.

  Priority claiming

  Since there is no examination procedure, until now claiming priority rights of trademark has not occurred in Myanmar.

  Use after grant of registration

  For strengthened and full protection of the mark, a client is recommended to obtain public recognition for the registered trademarks in Myanmar and use them as soon as possible for the first-to-use rule under the Myanmar trademark system.

  Use of a trademark and registration

• Since there is no examination procedure nor rejection, there is no appeal process for trademark registration in Myanmar at this time.

  Appealing a denied application

• At this moment, there is no opposition nor cancellation procedure in Myanmar. The trademark owner or brand owner is recommended to gain public awareness on his or her mark via a cautionary notice in the local newspaper or by continuous use and advertisement.

  Third-party opposition

• Duration

  The trademark rights take effect within three years and can be extended unlimited times in succession, each time by three years.

  For a renewal of the registration, the trademark owner must resubmit a declaration of ownership for the mark. A re-publication of the cautionary notice is also recommended.

  Proof of use

  The following documents or material can be used as a proof of use for trademarks in Myanmar:

  • the number of the related consumers who are aware of the mark through purchase or use of the goods or services bearing the mark or through advertising;
  • territorial scope of circulation of the goods or services bearing the mark;
  • turnover of the sale or supply of the goods or services bearing the mark or the volume of the goods sold or the services supplied;
  • the period of continuous use of the mark;
  • widespread goodwill of the goods or services bearing the mark; and
  • value of assignment, licensing price or the value of the investment capital contribution in respect of the mark.
  Duration and maintenance of registration

• The right that a manufacturer has in its trademark is the exclusive right to use it for the purpose of indicating where, or by whom or at what manufactory, the article to which it is affixed was manufactured. As soon, therefore, as a trademark has been so employed in the market as to indicate to purchasers that the goods to which it is attached are the make of a particular firm, it becomes, to that extent, the exclusive property of the firm and no one else has a right to copy it, or even to appropriate any part of it, if by such appropriation unwary purchasers may be induced to believe that they are getting goods that were made by the firm to which the trademark belongs.

  The right owner has the right to use or authorise others to use the trademark, such as for: fastening protected mark to goods, goods packages, means of business, means of service provision, transaction documents in business activities; circulating, offering, advertising for sale or stocking for sale goods bearing the protected mark; importing goods or services bearing the protected mark.

  The trademark owner may also prevent others from using this trademark, except in some cases such as: use for non-commercial purposes, or for the purpose of evaluation, analysis, research, teaching, testing, trial production or information collection for carrying out procedures of application for licences for production, importation or circulation of products; use for maintainance of foreign means of transport in transit or temporarily staying in Myanmar.

  The right on assignment or licensing may also be granted to the trademark owner.

  The benefits of registration

• As the trademark owner has sole right to the ownership of the trademark, he or she has the right to transfer it to other person or organisation.

  The licensee has the right to use the protected or marketed trademark without reregistration or redisbursement for advertisement, while the licensor can receive royalties from the licences.

  Licences

• The trademark owner with fully protected rights in relation to the object specified in the contract can be assigned to other organisations or individuals. The assignment must be registered and declare the assignment with the trademark registry office of Myanmar.

  Under Myanmar’s legislation, the heirs of the trademark owner has the right to own and use the trademark. Hence on the death of the original owner, his or her sons and daughters have the right to use it. Such right is owned by the heirs in equal portions.

  Assignment

• In order to assign owner’s trademark rights against the others, the applicant must possess the following documents:

  • a declaration of assignment which should be signed by both assignor and assignee;
  • a declaration of ownership of changing name; and
  • power of attorney if the dossier is filed through a representative. This document must be legalised at the embassy or consulate of Myanmar in the applicant’s country or a third country if the embassy or consulate is not available in the applicant’s country.
  Assignment documentation

• The assignment shall only valid after the declarations of assignment and change are certified by Myanmar’s trademark registry office.

  Validity of assignment

• For trademarks, the security interests are not compulsory.

  Security interests

• There is no actual rule on the using marking symbols, so such marks as ? or TM can be optionally used to indicate trademark use or registration in Myanmar.

  Markings

• In Myanmar, there is no system for registration of trademarks or for a statutory title to a trademark. Thus, the rights of the parties setting up rival claims to ownership of a trademark must be determined in accordance with the principle of common law based on prior use rather than first to file.

  Court system

  Currently, intellectual property rights infringement cases are handled through a rather complicated judicial system with no fewer than five levels: the township, district, state or regional courts and the Supreme Court. It explains why disputes are usually amicably solved by negotiations or conciliations.

  Administrative action

  As Myanmar does not have a Trademark Registration Act, no Trademark Registration office exists. Under these circumstances, protection of Trademark under administrative action is not available in Myanmar as yet.

  Criminal enforcement

  An effective strategy for enforcement of trademarks and protection of trade names is through criminal action under the Myanmar Penal Code, 1860. 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. Criminal action under the Penal Code is possible against a person using a false trademark or a counterfeit trademark, making or possessing any instrument for counterfeiting a trademark or selling goods marked with counterfeit trademarks according to sections 482, 483, 485 and 486 of the said Code.

  The accused person can be exempted if he or she can prove the following:

  • the counterfeiting was done in innocence owing to a lack of knowledge on how to differentiate between counterfeit and genuine products; or
  • information identifying and disclosing to the authorities the main source of counterfeit goods.

  The punishment ranges from a fine to three years’ imprisonment. Additionally, the court may order the destruction of the seized goods.

  Civil enforcement

  Even though property in a name or mark is not vested in the ‘registered owner’ through registration in Myanmar, the country’s general law provides that no trader has any right to represent its goods as somebody else’s.

  Passing off

  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.

  Enforcement can thereafter be pursued against ‘passing off’ under sections 478-480 of the Myanmar Penal Code; and against infringement under section 54 of Myanmar’s Specific Relief Act and under the Myanmar Merchandise Marks Act. The ‘law of passing off’ essentially prevents other traders from unfairly riding on the reputation and success that you have built for your trademark. Three factors need to be proved before a claim of passing off can succeed: that you have established a connection to your trademark through actual use within Myanmar; that the defendant has made a misrepresentation to the public that his or her goods or services are in some way associated or connected with you; and as a result, you have suffered damage to your brand’s reputation.

  Trademark enforcement proceedings

• Trademark searches or 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.

  It will be sufficient in court to prove imitation if there exists such similarity between the two marks that could in certain circumstances be considered to be conceived to deceive those persons for whom the goods are intended.

  An appeal for compensation for infringement has to be issued within three years of the date of the infringement according to the Myanmar Limitation Act. In the case of a continuing breach of contract and in the case of a continuing wrong independent of the contract, a fresh period of limitation will commence each time a breach occurs.

  Procedural format and timing

• The plaintiffs, defendants or involved parties in a civil case in relation to violated trademark rights have rights and obligations to introduce evidence to prove an infringement.

  It is not necessary for the two trademarks concerned to be similar in all particulars. In comparing the two trademarks, if it is found that there are similarities between the two, it will amount to counterfeiting or infringing even if the differences between them are only slight.

  The plaintiff must prove that he or she is the holder of this trademark by one of the following methods: declaration of ownership, publication of cautionary notice and evidence of use.

  Burden of proof

• Although the plaintiff should allege and prove in different ways, the remedies given by the courts in suits for passing off are the same as in suits for infringement. The remedies obtainable in these actions are an injunction, damages and other ancillary remedies, among which an injunction is the most effective as it is a specific order of the court directing the defendant to refrain from an act of infringement or a passing-off action.

  Standing

• Currently there is no customs intellectual property recordal system in Myanmar. However, the Sea Customs Act 1878 prohibits export or import by land or sea of goods with a counterfeit trademark. In addition, in sections 170 and 171, a customs officer is authorised to stop and search any person, vessel or vehicle on the grounds of reasonable suspicion.

  Rights owners can notify customs officers to suspend the customs clearance of specific goods suspected of being counterfeit. Furthermore, customs officers have ex officio power to confiscate suspected counterfeit goods.

  IP owners should work closely with customs and try to provide training about their goods to help customs identify counterfeits.

  Foreign activities

• Trademark searches or 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.

  Discovery

• There is no typical time frame for infringement or dilution, or related action. Myanmar courts will intervene only on the request of the plaintiff when the plaintiff shows that another’s actions may endanger the goodwill of the plaintiff.

  Under the Myanmar Limitation Act, a civil suit for trademark infringement has to be brought within three years of the date of the infringement. In the case where a breach or infringement continues, a new period of limitation will begin from the latest infringement action.

  Timing

• The litigation costs depend upon many different factors such as damages, the value of the trademark, etc.

  The costs associated with an infringement or dilution action, including trial preparation, trial and appeal in Myanmar may estimate varies from US$10,000 to US$50,000.

  Litigation costs

• When a forfeiture is decided for a conviction, an appeal can be brought against the conviction or forfeiture. When a forfeiture is directed on acquittal and the goods or items to which the direction relates are of a value exceeding 50 kyats, an appeal against the forfeiture is preferred. Appeals against the conviction decision are permitted within 30 days from the date of the decision of the court.

  Appeals

• Litigants can defend themselves or delegate their lawyers to do so on their behalf in court.

  For a charge of infringement or dilution, or any related action, a defendant can provide proof or material to prove that his or her use of the mark is not infringement (not similar, not confusable, out of protection scope, different goods or services applied) or validity of the registered mark or right owner.

  Defences

• Although the plaintiff should allege and prove in different ways, the remedies given by the courts in suits for passing off are the same as in suits for infringement. The remedies obtainable in these actions are an injunction, damages and other ancillary remedies among which an injunction is the most effective as it is a specific order of the court directing the defendant to refrain from the act of infringement or passing-off action.

  Remedies

• There is no actual rule on or practice of ADR techniques in Myanmar at this time.

  ADR

• Famous foreign trademarks should be used and be famous domestically.

  Famous foreign trademarks

Nguyen Hoa Binh | Partner

M: +84 9633 7 4499 | E: [email protected]

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DAITIN & ASSOCIATES CO., LTD.

(IP Agent in Vietnam, Laos, Cambodia and Myanmar)

Ho Chi Minh City               |          Hanoi

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