Ownership of Trademark in Myanmar

CHAPTER I

Definition of a Trademark
Trademark Definition under Criminal Law

Section 478 of the Myanmar Penal Code defines Trade Mark as a mark used for denoting that goods are the manufacture or merchandise of a particular person.

In order to be a Trade Mark, within the meaning of section 478 of the Myanmar Penal Code the mark must be "distinctive" in the sense of being adapted to distinguish the goods of the proprietor of the Trade Mark from those of other persons. Where the mark merely describes the quality or origin of the article and is such as is commonly used in the trade, to define goods of particular kind, it is not distinctive 1.

What is a distinctive mark has been defined by Lord Halsbury whose well known definition quoted in Gaw Kan Lye v. Saw Kyone Saing 2 is as follows:

'Distinctive' means distinguishing a particular person's goods from somebody else's - not a quality attributed to the particular article, but distinctive in that respect that it is a manufacture of his, distinguished from somebody else's. If a mark merely describes the quality or origin of an article, such a descriptive mark is, obviously, not capable of distinguishing the goods of one maker from those of others, e.g. 'Pain­killer' and 'Gripe Water' for medicines,' Malted Milk' and' Madras Curry Powder' for articles of diet."

It has been held in J.Petley & Son v. S.Ah Kyun 3 that the style of the "get up" of the boxes or packages in which goods are retailed does not constitute a "Trade Mark" as defined in section 478 of the In­dian Penal Code.

Trademark Definition under Civil Law

There being no Trademark Act, Trademarks are not defined un­ der Myanmar Civil Law. However in a broad sense "Trademark" is widely understood in this country. Even under the Myanmar Penal Code, words can constitute a trademark. In Myanmar it does not really matter whether a particular brand or label used by a particular manufacturer constitute a trademark in the strict legal sense. For example the manufacturer may use a particular colour combination only without any particular mark, e.g. Lever's Car­bolic Soap. In such a case anyone who imitates the particular colour combination on that soap would be liable in an action for passing-off even if there is no particular mark on the label.

In Myanmar there is nothing to prevent a person who has invented a particular colour combination to distinguish his goods from registering it or from calling it a trademark. ,As a matter of fact, many manufacturers usually register the entire label attached on the goods although within that label they may have a particular device which is called a trademark. Thus the whole label will be a trademark and not the particular device in it. The word "trademark" is in fact loosely used in Myanmar .

CHAPTER II

Acquisition of exclusive right for use of a Trademark

Acquisition of Trademark right without registration

Unlike the system existing in some European countries which require a trademark to be registered in order to be protected; the Union of Myanmar recognizes acquisition of trademark rights without registration, similar to the system adopted by the United Kingdom, the United States of America and a number of other countries. Typically, this concept is based not on a statute but on common law; which is to say that precedences are established through Court decisions.

Acquisition of exclusive right of use through past use

As in many other countries, in Myanmar it is sufficient that a trademark is used in order to acquire the exclusive right of use.

Registration does not automatically give exclusive right of use

In Myanmar there is no law or statute established for the registration of trademarks and no authorities exist from which an exclusive right to a particular trademark can be obtained. The right to a trademark depends upon the general principles of common law.

CHAPTER lll

Trademark Registration

Registration of a Local Trademark by Declaration of Ownership

A trademark owner may, if he desires, register his trademark at the Office of the Registrar of Deeds under the Registration Act by means of a declaration of ownership. In fact, most of the prominent trademark owners and also Government Enterprises register their trademarks under the Registration Act, and thereafter advertise a cautionary notice in daily newspapers to protect their trademarks.

As already stated, there is no Trademark Registration Act in Myanmar. And therefore- registration of a trademark is not compulsory. However registration of declaration of ownership of Trademark under the Registration Act is certainly beneficial. Direction 13 of the Registration Act provides for the registration of Trademarks under section 18 (f) of the Registration Act:-

Direction 13

Trademarks may be registered under section 18(f) of the Registration Act, in Register Book 4, by means of a declaration for each trademark. The declaration shall contain the name of the Company, individual or firm represented in a special or particular manner and the signature of the applicant for registration or some predecessor in his business. A trademark should have one or more invented words and may be registered in respect of particular goods or classes of goods.

Registering Officers should refuse registration, if the Mark is likely to be on moral or legal grounds objectionable or likely to hurt the religious susceptibilities of any class of citizens of Myanmar.Registration should, for example, be refused where the document lends itself to use as an instrument of fraud, or is obscure. Colourable imitation of a currency note should also be refused for registration. And under no circumstances should the image bearing the image of General Aung San(our national heor,father of peace nobel prize winner Aung San Su Kyi)* be registered."

Under the above Direction a trademark has to be registered by means of a declaration of ownership, which is a solemn statement of facts made by the declarant and usually attested by a Notary Public or a Magistrate or some Judicial Officer. Such a declaration usually states the rights of the declarant to the trademark, and a specimen of the trademark or label concerned is usually attached to the declaration.

Although the mere fact of registration is not conclusive proof of the ownership or user of the trademark, nonetheless it may be prima facie evidence of ownership or user and the ability to produce a registered document is certainly a help in a criminal or civil court proceeding. In the process of registering a trademark, the owner shall mention the following facts in the declaration submitted for registration:

(a) The said trademark is being actively used for which specific services or goods, he wishes to market in Myanmar;

(b) The said trademark has been created by him from his original idea;

(c) The said trademark is neither imitation nor fraudulent copy of a trademark owned by any other person;

(d) To his knowledge, no person has manufactured and distributed any goods of the same type using the said trademark.

The registration of a trademark by means of a Declaration is usually followed by publication of a cautionary notice in daily newspapers, usually stating that any fraudulent imitation,unauthorized use or infringement of the said trademark will be dealt with according to law.

Registration of a Foreign Trademark by Declartion of Ownership

As Myanmar does not have a Trademark Registration Act, foreign trademarks are also registered under the Registration Act and trademark cautionary notices are advertised in the daily newspaper through their Myanmar Trademark Lawyers.

Wordmarks are especially advertised in Myanmar with pronunciation, which is a transliteration.

In practice, the following documents are ,essentially required.

(1) 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.

(2) A dozen representations of the trademark.

(3) The Declaration of Ownership of Trademark including Stamp Duty. Usually the Special Power of Attorney is differently legalized according to the country's legal system and with the certificate endorsed by the ,Myanmar Embassy or a Consul or Embassy Official.

Effectiveness of Trademark Registration In Myanmar, registration of Declaration of Ownership of trademark under the Registration Act, by itself can give no legal protection to the proprietor. The Registration Act applies to the registration of deeds only and no more. A common law action is purely factual, relying entirely on the evidence produced before the court and in no way depends on whether the trademark in question is registered or not under the registration Act aforesaid.

Registration of Trademark under the Registration Act will only be a relevant factor for the purpose of determining the date since which trademark owner had intended to claim the trademark as his, and will not by itself give him a right of property in that trademark

( 4 )Although the mere fact of registration is not conclusive proof of the ownership or user of the trademark, nonetheless it may be prima facie evidence of ownership or user and the ability to produce a registered document may be of some help in a passing off case.

Time from which Registered document operatesAccording to the Section 47 of the Registration Act,a registered document shall operate from the time from which it would have commenced to operate if no registration there of had been required or made, and not from the time of its registration.