Trade Mark Protection In Myanmar: A Case Study.

24 November, 2016

 

In today’s blog post we are taking a look at the trade mark protection in Myanmar, a country that is in the process of modernizing its IP laws. Even though  Myanmar has published a new Draft Trade Mark Law back in 2015, the law has still not yet come to force and in the meantime EU SMEs still  need to protect their IP in Myanmar. This blog post offers some advice on how to protect your trade mark and the design of your package in Myanmar by focusing on a recent case study. 

 

Trade Mark Regime in Myanmar

 

Compared to other South-East Asian countries, Myanmar currently has the weakest IP laws and regulations in place. Myanmar is not yet a signatory of any multilateral trade mark treaty. However, in accordance with the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) , to which it has acceded, Myanmar is required to implement and comply with Articles 1-12, Article 19 of the Paris Convention and the terms of TRIPS by no later than 1stJuly 2021. Myanmar is now in the process of drafting several IP laws

 

Currently, there is still neither a particular statute nor law on trade marks, nor specific provisions regarding the registration of trade marks in Myanmar. However, the Penal Code of Myanmar defines a trade mark as “a mark used for denoting that goods are the manufactured merchandise of a particular person”. Likewise, the Private Industrial Enterprise Law provides that “a business is not allowed to distribute or sell its goods without trademark”. At present, foreign companies doing business in Myanmar have been relying on these laws to enforce their IP rights relating to trade mark.

 

Whilst, there is no trade mark registration legislation in Myanmar, a practice has developed by which

the person purporting to be the trade mark owner can make a Declaration of Ownership and register the declaration with the office of the Registrar of Deeds and Assurances in Yangon or Mandalay. It is advisable for foreign SMEs doing business in Myanmar to follow this practice and register their trade mark in the following way, in case the Myanmar authorities request the Declaration when handling cases of infringement.

 

The declaration must be made by the trade mark owner and must include a description of the goods and services and a copy of the trademark. Foreign companies cannot complete the registration by themselves and need to appoint a local agent. SMEs should keep in mind that under this practice, companies are also able to register their product’s packaging design as a trade mark. This is highly recommended, because Myanmar does currently not have any laws and regulations protecting product’s design. By registering their packaging design as a trade mark with the Registrar of Deeds and Assurances, SMEs could still protect the design of their products.

 

Once the declaration is registered, it is advisable to publish a Cautionary Notice in a daily English language newspaper such as the New Light of Myanmar, warning people not to infringe the trade mark. In the case of infringement, enforcement can then be pursued against ‘passing off’ clauses under the Myanmar Penal Code. The ‘law of passing off’ prevents other traders from unfairly riding on the reputation and success of an established trade mark. Three factors need to be proved before a claim of passing off can proceed: (i) that the SME has established a connection to the trade mark through actual use within Myanmar; (ii) that there is an infringement; (iii) that the SME has suffered damages to their brand’s reputation.  The registered declaration and the cautionary notice serve to establish prima facie ‘use’ of the trade mark in Myanmar for evidentiary purposes. This is why it is important under current trade mark regime, to register the declaration.

 

SME Case Study – The Importance of Registering Product’s Design as a Trade Mark

 

Background

 

A Dutch company, let’s call it Company A, specialising in the production and distribution of professional sealants for commercial and home use, had registered ownership of its trade mark and packaging design for its growing sales of sealants in Myanmar with the Registrar of Deeds and Assurances. After several years of sales in Myanmar, they were alerted by their local distributor to the existence of competing products bearing similar packaging design, but with a different logo, on sale in Yangon and Mandalay by resellers of hardware products.

 

Action Taken

 

Local attorneys worked closely with the local distributor of Company A to issue cease and desist letters to resellers of the competing products. Two trade packaging infringement civil law suits were filed in 2014 against the resellers who had continued to use the competing products with the similar packaging design.

 

Outcome

 

The cease and desist letters were effective to the extent that the resellers who received the letters stopped selling the competing products.  Both civil law suits, however, remain pending after two years.

 

IP Lessons

 

Brand owners may encounter items bearing very similar packaging designs that imitate the shape, colours, surface appearance, graphic features and/or descriptive words, taken from the package of their original products, but without using the brand owner’s principal trademarks / trade-name. Hence, brand owners should consider registering their packaging design as a trademark in addition to the registration of their principal trademarks / tradenames.

 

IP rights owners should also be aware of the typical speed of which civil suits in Myanmar are resolved before initiating trade mark infringement suits.