Appeal against an order of forfeiture of goods

Appeal against an order of forfeiture of goods

When a forfeiture is directed on a conviction, and an appeal lies against the conviction, an appeal shall lie against the forfeiture also. When a forfeiture is directed on acquittal and the goods or things to which the direction relates are of value exceeding fifty kyats, an appeal against the forfeiture may be preferred, within thirty days from the date of direction to the court to which in appealable cases appeals lie from sentences of the court which directed the forfeiture.Limitation for prosecution Normally there is no limitation in criminal prosecution.

But Section 15 of the Myanmar Merchandise Marks Act provides limitation for criminal prosecution which reads as follows:"No such prosecution as is mentioned in the last foregoing section shall be commenced after the expiration of three years next after the Commission of the offence, or one year after the first discovery thereof by the prosecutor, which ever expiration first happens. "

As regards limitation under the said Act it has been held in the case of T.M. Mohamed Cassim v. G.S.T. Shaik Thumby Sahib 9 that the period of limitation prescribed by section 15 of the Myanmar Merchandise Marks Act for prosecuting an offender under the Myanmar Penal Code for the use of a false trademark is three years from the date of the commission of the offence charged or one year from the date of discovery by the prosecutor of the offence charged, which ever is less.'

"Criminal action cases Though an aggrieved trademark proprietor has two courses ofaction against violation of his trademark right, namely civil action and criminal action, in practice remedies offered by civil courts are a far better way of protecting trademarks than prosecuting in criminal courts. Thus more civil cases are brought than criminal cases.

In our country only three criminal cases have been reported since 1940 to date. Amongst them, two cases were concerned with Section 483 of the Myanmar Penal Code and the other concerned with Sections 482 and486 of the Myanmar Penal Code. They,were decided in 1939,1950 and 1962.

CHAPTER VII

The Myanmar Sea Customs Act

Goods which shall not be ,brought into Myanmar The Sea Customs Act is also important in connection with Trade mark rights.Section 18 of the Sea Customs Act (Myanmar Code, Volume III, pages 258 and 159 ) reads as follows:

"18. No goods specified in the following clauses shall be brought, whether by land or sea, into the Union ofMyanmar:* * *

(d) goods having applied thereto a counterfeit trade-mark within the meaning of the Myanmar Penal Code, or a false tradedescription within the meaning of the Myanmar Merchandise Marks Act:

(e) goods made or produced beyond the limits of the United Kingdom, India or Pakistan and the Union of Myanmar and having applied thereto any name or trade-mark being ,or purporting to be, the name or trade-mark of any person who is a manufacturer, dealer or trader in the United Kingdom, in India or Pakistan or in the Union of Myanmar unless
(i) the name or trade-mark is, as to every application thereof, accompanied by a definite indication of the goods having been made or produced in a place beyond the limits of the United Kingdom, India or Pakistan and the Union of Myanmar; and

(ii) the country in which that place is situated is in that indication indicated in letters as large and conspicuous as any letter in the name or trade-mark ,and in the same language and character as the name or trade-fmark:

CHAPTER VIII

Trademark Protection through Administrative action

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.

Consumer Protection does not exit in Myanmar Myanmar existing laws (as already mentioned above) provide remedies to aggrieved trademark proprietors only.

Consumers are not entitled to sue or to be represented in legal proceedings concerning trademark. There is no legal provision for the protection of consumer as yet.

As we have already noted, legal provisions for the protection concerning trademark are primarily directed to the protection of proprietary rights. Consumers are protected against deception only as an incidental function of the trademark law and the protection is far from complete.

CHAPTER IX

Principles of the Law Courts regarding Trademark Matters

Sources of Trademark Law in Myanmar

In Myanmar certain basic principles of trademark law have been established without statutory enactment, merely through the fact that courts have recognized certain rights in respect of trademarks. The most prominent example of such a rule of law is the recognition of the acquisition of an exclusive right in a trademark by the mere fact of its use by a particular person in order to distinguish the goods or products offered by that person.

As the Court's decisions may be said to be the sources of trademark law, we would like to mention briefly the principles of Myanmar Law Courts regarding trademark matters.

Rights of a Trademark may be acquired by use 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 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. So 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 which 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 that another.

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 represenatlon
.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 user .

A Trade name cannot be claimed for exclusive use under certain circumstances Where the plaintiff's name is habitually used along with the trade name of his goods, it is difficult to establish that the trade name has, by itself, become distinctive of his goods.

A trademark or name which is primarily descriptive of an article or its composition or its mode of manufacture, must remain open to the trade and cannot be claimed for exclusive use by anyone trader.11 .

Geographical name Geographical names which are so disconnected from the origin of goods that they are not indicative ofthe place of manufacture, are in fact distinctive names and may be allowed even on evidence of small use. On the other hand, names such as" German Silver ","Portland Cement" and" Indian Ink" are accepted by common usage as devoid of any geographical meaning and they are, therefore, merely descriptive of the goods 12.Nature of exclusive right The right which a manufacturer has in his 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 manufacture 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 which were made by the firm to whom the trademark belongs 13.

Sole right of Trademark use for all classes of goods does not exist 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.

Indication of ownership A trademark need not indicate to the public the actual ownership of the goods in question. A trademark merely guarantees to the purchaser that the goods on which the mark is applied emanate from the same source of trade as the goods that had hitherto borne the same trademark. It is not necessary for the public to know the specific source of the article or the name of the manufacturer .

Appropriation of a Trademark

A trademark, being in the nature of property, cannot be appropriated by anyone without the permission of its owner. If a person appropriates it, he will be committing an actionable wrong whether he does it honestly or fraudulently .

Trademarks are transferable and inheritable

As the manufacturer has sole right to the ownership of the trademark, he has the right to transfer it to. some other person. The heirs of the manufacturer has the right to own and use the trademark. Hence on the death of the original owner, his sons and daughters have the right to use it. Such right is owned by the heirs in equal portion.

Trademark Ownership

By mere registration of a trademark, the person who registers can not become the owner of that trademark. But by using the said mark in own business and when ,many come to know that the said mark is the goods which manufactured by the owner of the said mark5 and then the owner of the mark may obtain the exclusive right to use.

Guiding principles applicable to cases of colourable imitation

It is desirable to bear in mind that no general rule can be laid down to what is a colourable imitation or not. Each case must be dealt with as it arises, regard being to the circumstances of the particular case.

The question is not whether a person looking at the two trade­marks side by side, would be confused. The question is whether the person who sees the proposed trademark in the absence of the other trademark, and in view only of his general recollection of what the na­ture of the other trademark was, would be liable to be decided and to think that the trademark before him is the same as the other of which he has a general recollection.

It is not necessary in order to constitute a colourable imitation that the two marks concerned should be similar in every particular, but it will be sufficient in law to constitute a colourable imitation, if there exists such similarity between the two marks, which could, in the circum­stances of a particular case, be considered to be calculated to deceive the class of persons for whom the goods are ordinarily or primarily in­tended

No trader has the right to use that trademark so nearly resembling that of another trader as to be calculated to mislead in cautions purchasers.
Guiding principles applicable to cases of counterfeiting Trademark In the case of counterfeiting a trademark it is not necessary that the two trademarks concerned must be similar in all particulars. In comparing the. two trademarks, if it is found that there are similarities between the two, it amounts to counterfeidng although there are slight differences between them.

By: Myint Lwin ( Advocate)

Infringement actions

Infringement actions

But in 1968 the correctness of aforsaid decision came into question in John Walker & Sons Ltd. v. U Than Shwe 8. The learned Judge therein dissent from the above mentioned views of the late High Court of Rangoon held that an action, for infringement of a trademark is main tainable in this ountry. He observed that the learned Judges in the case of Gaw Kan Lye v. Saw Kyone Saing 2 must have overlooked the pro visions of section 54 Specific Relief Act, which clearly authorise the Courts in Burma to grant injunctions in infringement suits.

In order to reach a correct solution over the question of maintainability or otherwise off an action for infringement of a trademark, the learned Judge in John Walker & Sons Ltd. v. U Than Shwe 8 examined what the law on trademarks was in India and United Kingdom at the relevant time and observed as follows:

"A Trademarks Act was first introduced in the United Kingdom in the year 1875 and in India in the year 1940. Our Courts in Burma have been applying the Trademark Law as it stood in the United Kingdom prior to 1875 and in India prior to 1940. Before the first Trademarks Act in the United Kingdom was passed in 1875, both the Chancery Courts and the Common Law Courts entertained the trademark suits which were then known as the actions in deceit although the reliefs given by them were different in that Common Law Courts sanctioned injunctions. In such suits ithad to be satisfactorily proved that somebody had been deceived and that the defendant imitated the plaintiff's trademark with fraudulent intention.

Then in 1838 the Chancery Court in Millington v. Foc ,( 3 My. Cr. 338) decided that the Court would intervence and grant the relief of injunction if there was proof that the goods of the defendant were or could be passed off as the goods of the plaintiff and that the question of fraudulent intention of the defendant was immaterial .It was due to this decision that the cause of action known as the passing-off action came into existence. Subsequently the Chancery Courts went further and considered that a trademark was a property which could be acquired like any other property and the invasion of such a right would afford the owner a remedy similar in all respects to those attached to any other property-vide Clement v. Maddick (1859 1 Giff. 98) This is how the cause of action known as the infringement action of a Trademark came to be recogized.

So far as India is concerned, prior to the introduction of the Trademarks Act, 1940 ,the Chancery Law of England regarding the infringement action was embodied in section 54 Specific Relief Act, which is still in force in this country up to the present moment. The relevant portion of this section reads:
"When the defendant invades or threatens to invade the plaintiff's right to , or enjoyment of property, the Court may grant a perpetual injunction." Explanation For the purpose of this section a trademark is property. (a) * * * * (w) A improperly uses the trademark of B. B may obtain an injunction to restrain the user, provided that B's use of the trademark is honest.


Since the passing-off Judgement in above John Walker & Sons Ltd~ v. U Than Shwe 8, a person whose right to a trademark has been infringed can maintain an action for infringement of trademark and also maintain an action for passing-off if he so desires.Therefore, it can be seen in Myanmar that an action for infringement of a trademark is maintainable relying on the above mentioned case law as an authority. Infringement action is not maintainable by virtue of a Trademark Registration Act.

In an infringement action the question of fraud or probability of deception is immaterial and all that the plaintiff has to prove is that he is the true owner of the trademark and that the defendant is using a get-up which is either the same or similar to his trademark.

In a passing-off action the proprietor has first to prove that he has used the mark and has acquired a reputation in it in the business concerned. He then has to prove that what the defendant has been doing is to cause the defendant's goods to be confused with the plaintiff's goods in the result that customers are led to believe that they are obtaining goods of the plaintiff when in fact they are obtaining goods of the defendant.Remedies obtainable in a Civil Suit Though the plaintiff should allege and prove in different manners,the reliefs given by the courts in suits for passing-off are the same as in suits for infringement.

The reliefs obtainable in these actions are an injunction, damages and other ancillary reliefs amongst 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.
Limitation for a Civil Suit Description of suit for compensation for infringing copyright or any other exclusive privilege has to be sued from the date of the infringement within 3 years according to Myanmar Limitation Act.

(The First Schedule - First Division Article 40 ). In the case of a continuing breach of contract and in the case of a continuing wrong independent of contract, a fresh period of limitation begins to run at every moment of the time during which the breach or the wrong as the case may be continues. (Myanmar Limitation Act Section 23).
Computation of Court fees According to the Myanmar Court Fees Act Section 7- (iv)(d) and (e), the amount of fee payable under the Act shall be computed in suits to obtain an injunction and for a right to some benefit in connection with trademark. For the purpose of Court Fees, the plaintiff shall mention the suits valuation in the plaint or memorandum of appeals.

CHAPTER VI

The Myanmar Merchandise Marks Act

Trade Descriptions Myanmar has a separate Act named" The Myanmar Merchandise Marks Act" which deals with trade descriptions. This Act should be read together with the above mentioned the Myanmar Penal Code sections for the reason that there are certain provisions which refer to trademark offences under the Myanmar Penal Code.

Unintentional contravention of Trademark offences According to the provisions of Section 8 of the Myanmar Merchandise Marks Act, a person charged under section 482 of the Myanmar Penal Code for using a false trademark or under section 485 of the Myanmar Penal Code for making instrument for counterfeiting a trademark shall be acquitted if he can prove:

(a) that in ordinary course of business he is employed, on behalf of other persons, to apply trademarks, to make dies, plates or other instrument for making or being used in making trademarks and that in the case which is the subject of the charge he was so employed and was' not interested in the goods or other things by way of profit or commission dependent on the sale thereof, and

(b) that he took reasonable precautions against committing the offence charged, and

(c) that he had, at the time of commission of the alleged offence no reason to suspect the

genuineness of the mark and

(d) that on demand made by or on behalf of the prosecutor, he gave all the information in his power with respect to the persons on whose behalf the mark was applied.

Forfeiture of goods in Trademark offences No provision relating to forfeiture of goods in trademark offence is prescribed in the Myanmar Penal Code. It is provided in section 9 of the Myanmar Merchandise Marks Act. So far as it concerns trademark is as follows: "When a person is convicted under section 482 of the Myanmar Penal Code of using a false trademark or under section 486 of the, Myanmar Penal Code of selling or exposing or having in possession for sale or any purpose of trade or manufacture,any goods or things with a counterfeit trademark applied thereto, or is acquitted on proof of the matter or matters specified in section 486 of the Myanmar Penal Code the court convicting or acquitting him may direct the forfeiture to the state of all goods and things by means of ,or in relation to which the offence has been committed or but for such proof as aforesaid, would have been committed. "

Trademark Protection under Myanmar law

CHAPTER IV

Trademark Protection under Criminal law
Criminal offences for Trademark Infringement

Myanmar is one of only a few countries who recognize criminal offences for trademark infringement.

In the Myanmar Penal Code provisions relating to trademark, property mark and other marks are given in Sections 478 to 489 . A proprietor of a trademark may take criminal action against an infringer of his trademark for the following offences:
(a) Using a false trademark;
(b) Counterfeiting a trademark;
(c) Making or possessing any instrument for counterfeiting a trademark;
(d) Selling goods marked with a counterfeit trademark.

Use of a false Trademark Section 480 of the Myanmar Penal Code defines using a false trademark as follows: "Whoever marks any goods or any case, package or other receptacle containing goods or uses any case, package, or other receptacle with any mark thereon, in a manner reasonably calculated to cause it to be believed that the goods so marked or any goods contained in any such receptacle so marked are the manufacture or merchandise of a person whose manufacture or merchandise they are not is said to use a false trademark."

Punishment for use of a false Trademark According to the provisions of Section 482 of the Myanmar Penal Code a user of any false trademark shall be punished with imprisonment of either description for a term- which may extend to one year or with fine or with both unless he can prove that he acted without intent to defraud.Counterfeiting a Trademark and punishment thereof Whoever counterfeits any trademark used by any other person shall be punished under section 483 of the Myanmar Penal Code with imprisonment of either description for a term which may extend to two years or with fine or with both.Making or possessing any instrument for counterfeiting a Trademark and punishment thereofUnder Section 485 of the Myanmar Penal Code:

"Whoever makes or has in his possession any die, plate or other instrument for the purpose of counterfeiting a trademark or has in his possession a trademark for the purpose of denoting that any goods are the manufacture or merchandise of a person whose manufacture or merchandise they are not, shall be punished with imprisonment of either description for a term which may extend to three years or with fine or with both."Selling goods marked with a Counterfeit Trademark and punishment thereof

Section 486 of the Myanmar Penal Code states as follows:Whoever sells, or exposes or has in possession for sale or any purpose of trade or manufacture any goods or things with a counterfeit trademark affixed to or impressed upon the same or to or upon any case, package or other receptacle in which such goods are contained, shall unless he proves:

(a) that having taken all reasonable precautions against committing an offence against this section, he had at the time of the commission ofthe alleged offence no reason to suspect the genuineness of the mark, and

(b) that on demand made by or on behalf of the prosecutor he gave all the information in his power with respect to the person from whom he obtained such goods or things or

(c) that otherwise he had acted innocently, be punished with imprisonment of either
description for a term which may extend to one year or with fine or with both.

CHAPTER V

Trademark Protection under Civil Law

Passing - off actions

Unlike India and England, Myanmar has no Trademark Act and as a result an action for infringement of a trademark was unknown to this Country before 1968. Until 1968, what was maintainable in civil law was only an action for" passing-off" which is an old common law remedy.In 1939 the late High Court of Rangoon had in Gaw Kan Lye v. Saw Kyone Saing 2 clearly held that in Myanmar there is no statutory provision for the registration of trademark and no action could therefore be brought for infringement of a trademark, but the courts entertained passing-off suits.This concept was accepted and followed by the courts in Myanmar up to 1968.

Guiding principles applicable to cases of passing-off actions The guiding principles applicable to cases of passing-off actions are clear and beyond dispute. No man can represent his goods as being the goods of another man, and no man is permitted to use any mark, sign or symbol, device or means, whereby without making a direct false representation himself to a purchaser who purchases from him, he enables the purchaser to make a false representation to somebody else who is the Ultimate Customer. In passing-off actions it is not necessary to give proof of actual instances of deception, , as the very life of a trademark depends upon the promptitude with which it is indicated'. Evidence of actual instances may be useful to the Court, but the Court has to exercise its own judgement as to the probability of deception. All that is necessary for the plaintiff to prove is that the mark used by the defendant is likely to deceive purchasers of the class who buy the goods bearing the plaintiff's mark, and it is not necessary to prove actual deception 2. A plaintiff has not to establish affirmatively in every case that he has not copied the trade mark of another person in the same trade. What he is required to do is to prove that he has adopted a certain trademark and has acquired the sole right to use it . It is only when he is challenged and proof will be tendered to the contrary that he has to prove that he has not copied another man's trademark 7. The intent to deceive was obvious. Where it is obvious that there was an intent to deceive and that the goods were, on the fact of it, calculated to deceive, no proof of actual deception is necessary 7.The question of reputation in the market of a distinctive rather than of a descriptive design or 'mark did not fall to be considered 2. If a mark or design be a distinctive one the trader who adopts it is entitled to protection directly the article having assumed a vendible character is launched upon the market. As between two competitors who are each desirous of adopting a mark which is distinctive in character it is entirely a question of who gets there first 2.

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.