In this article, we unravel the ins and outs of well-known marks in Myanmar and how they are being determined.
Previously, well-known marks were not fully protected in Myanmar and there were no criteria to determine whether a mark is well-known even though it was recognised under the Common Law system. This changed once the new Trade Mark Law (TML) was enforced on 1 April 2023, granting trademark owners comprehensive rights to maintain the exclusivity of their marks and protect their brand reputation. This extends to well-known marks.
As of the end of 2023, about 50,000 trademark applications have been filed at the IP office through the online and manual filing systems. These applications are still undergoing examination and notifications of office actions would be issued based on the submission date. Once the applications are published, well-known mark status will play an important role in opposition (to prevent third-party registration) and invalidation (even if an infringing mark is registered in future). Hence, it is important to protect well-known marks in Myanmar.
Defining a well-known mark
A well-known mark is protected from use or registration of an identical or similar mark for identical or similar goods and services. The scope of protection is far beyond being identical or similarity if the following conditions are fulfilled:
- a well-known mark has been registered in Myanmar;
- the use of a third party’s mark would indicate a connection between the goods and/or services for which the mark is used and the owner of the well-known mark; and
- such use will likely damage the interests of the well-known mark owner.
However, the TML and its rules are silent on protecting the distinctive nature of a well-known mark from dilution.
A well-known mark in Myanmar must follow the prescribed criteria found in the Trademark Rules. This includes:
- public recognition;
- use of the mark;
- scope of registration;
- official recognition; and
- value of the mark.
Public recognition
The Trademark Rules state that “the degree of knowledge or recognition of the mark in the relevant sector of the public in Myanmar” must be considered. This includes the following groups of people to which the mark applies:
- the actual and/or the potential consumers of the type of goods and/or services;
- distributors and/or persons involved in channels of distribution of the type of goods and/or services; and
- business circles dealing with the type of goods and/or services.
Use of the mark
The rules explicitly refer to use of the mark in terms of its “duration, extent, and geographical area” and the “duration, extent, and geographical area of any promotion of the mark including advertising or publicity and the presentation, at trade fairs or exhibitions, of goods and/or services to which the mark applies”. The law and rules are still silent on the use of the mark in other countries and do not offer a precise explanation for the limitation of activities outside Myanmar (e.g., international trade fairs or exhibitions in other countries). Sales revenue, market share, net profits, tax amount or sales territory of the principal commodities using a mark may be relevant as evidentiary materials.
Scope of registration
According to the rules, the scope of registration refers to “the duration and geographical area of any registrations, and/or any applications for registration, of the mark, to the extent that they reflect use or recognition of the mark”. This means that trademark registration or application for registration in Myanmar is not sufficient. Rather, the period during which a mark has been registered or filed for registration is of the essence.
Official recognition
The Rules state that “the record of successful enforcement of rights in the mark, in particular, the extent to which the mark, was recognized as a well-known by competent authorities” is important in determining a well-known mark, but it is unclear whether the findings of repute by trademark offices in opposition hearings and by courts in other countries will be considered.
Value of the mark
The Rules do not provide detailed information on demonstrating the value associated with a mark. As a standard norm, the mark should be mentioned as an asset in the books of a company to determine its value.
Other indicators
Aside from these five factors, other indicators can be used to determine well-known status. Depending on the specific circumstances of each case, some criteria that may be relevant, inter alia, are:
- the number of stores opened through licenses or franchises;
- the daily average number of local visitors to the website;
- sales revenue;
- tax amount; and
- market share.
These indicators have not been tested in the context of criteria for well-known marks, but they are based on standard norms mentioned in the 1999 WIPO Joint Resolution Concerning Provisions on the Protection of Well-Known Marks, which Myanmar seems to recognise.
Among them, history, use and scope of registration (including global registration) are crucial factors to recognise a mark as well-known.
These criteria help to inform the registrar’s decision in opposition or invalidation actions. There is no specific provision for the court to refer to these criteria when they need to determine whether a mark is well-known. This is a potential legal question in future enforcement actions.
Exclusion factors
The following factors will not be considered when determining whether a mark is well-known:
- the mark has been used, registered or filed for registration in Myanmar;
- the mark is well-known in, or it has been registered or filed for registration in or a legal action is taken in countries other than Myanmar; and
- the mark is well-known by the public at large in Myanmar.
Public recognition in the relevant sector (as opposed to general public) is more important to show that a mark is well-known in Myanmar.
Beyond traditional recognition
In Myanmar, a country full of traditional cultures, well-known recognition may extend beyond trademarks. In April 2015, Carlsberg used the name “TU PO” – a transliteration of “Tuborg” into the local language – to launch the Tuborg beer.
TU PO is spelled and pronounced the same as the title of one of the most famous songs associated with Thingyan, Myanmar’s biggest cultural water festival. The song belongs to Myoma Nyein, then his family after he passed away in 1955. TU PO reflects the spirit of Mandalay (Myoma Nyein’s hometown) and the country’s national festivity identity.
On 15 January 2016, Myoma Nyein’s family called for a press conference and demanded that Carlsberg cease using and remove TU PO from beer containers within one week. Otherwise, they would take legal action. The family said that it had never allowed nor approved the use of TU PO, from their first meeting with the company’s local representatives in 2014 regarding the words and melody of the song “Tu Po”. The family also claimed that the company preferred TU PO over a more accurate transliteration in order to capitalise on the song’s popularity.
The media further pointed out that printing TU PO on beer bottles did not only concern Myoma Nyein’s family and the Mandalay culture, but also the national culture of Myanmar and every Myanmar national. It was an insult to the country’s national symbol.
Four days after the press conference, Carlsberg announced that it would discontinue use of the name and the tentative deadline for phasing out and rebranding would be the day before Thingyan in April 2016.
Conclusion
Like many countries, Myanmar offer well-known marks a higher level of protection than regular trademarks. Its criteria for a well-known mark are also similar to other jurisdictions, as they are based on the standard norms of the WIPO Joint Resolution. In practice, however, the way of interpretation to define the criteria may be different.
In addition, the TU PO case is a cautionary tale regarding the concept of well-known mark beyond the limits of the law. The media, especially press conferences, can be effective in IP enforcement when the local political situation is stable.
This article was first published by World Trademark Review in February 2024.
For further information, please contact:
Moe Mynn Thu, Rouse
moemynnthu@rouse.com
