Transactional Scenario Of Before And After Enforcement Of New Myanmar Trademark Law

Biz Law Consult Myanmar September 28, 2020

Transactional Scenario Of Before And After Enforcement Of New Myanmar Trademark Law

Chapter 1

Current Trademark Regime

Myanmar does not have in place a judicial court specifically dealing with intellectual property rights. Disputes related to the infringement of intellectual property right are governed by common rules of civil and criminal procedure. Similarly, there is no institution in charge of supervising the administration, registration and enforcement of intellectual property.

Myanmar is attempting to address these legal deficiencies and the high level of piracy within Myanmar. After Myanmar joined ASEAN in 1997, it agreed to modernize its intellectual property laws in accordance with the ASEAN Framework Agreement on Intellectual Property Cooperation. The Ministry of Education, with advice from external stakeholders and experts, drafted four new intellectual property bills – on trademarks, copyrights, patents, and industrial design – with the aim of creating a modern, comprehensive legal framework for intellectual property rights and improving Myanmar’s business climate. In anticipation of the trademark bill passing, Myanmar has established a single national Intellectual Property Office with USAID assistance that will monitor compliance with intellectual property laws and be responsible for further developing intellectual policy and regulations. In addition, the WTO has delayed required implementation of the Trade Related Aspects of Intellectual Property (TRIPs) Agreement for Least Developed Nations – including Myanmar – until 2021.

1.1 Relation between Myanmar and International Organizations

Myanmar became a founder country of the World Trade Organization (WTO) on 16th, November, 1994. Myanmar joined to ASEAN on 23rd July, 1997 and also became a 176th member country of WIPO on 15th May, 2001. As a member of WTO, WIPO and ASEAN, we have to abide the obligation of TRIPs Agreement and ASEAN Framework Agreement on IP CO-operation. In the Republic of the Union of Myanmar, Judicial and Legal system on IPRs had timely developed at the early of 19th Century.[1]

The Constitution of Myanmar (2008) contains the provisions which delineate the intellectual property rights. Chapter VIII related to Citizen, Fundamental Rights and Duties of the Citizens indirectly guarantees the exercise of intellectual property rights in Article 349, c-f (right to carry out the functions in technical know-how, technology, science, exploration of arts, business and trade) and in Article 354.d (right to develop language, literature and culture).[2]

Concerning the Trademarks system, Myanmar do not have any Act like Trademarks Registration Act and no specific statutory law on trademarks and no statutory provision regarding registration of trademarks. However, the existing laws of Myanmar Merchandise Marks Act, Registration Act, Sea Custom and Land Custom Act and Penal Code (478) are in current use and there are relevant laws of Myanmar trademark system.[3]

These existing laws of Myanmar relating to Intellectual Property do not cope with the current economic trend and development in the field of Intellectual Property. As a member of the WTO and WIPO, Myanmar has an obligation to put in place the intellectual property laws with the minimum international standards protection. Apart from the TRIPs Agreement, Myanmar deeply considered the main objective of ASEAN Framework Agreement that the members must ensure the Intellectual Property Laws and practices in the ASEAN countries will not obstruct the free flow of literary and artistic works, goods and services throughout the ASEAN region but will promote and facilitate such an exchange. [4]

Ministry of Science and Technology (MOST) is a focal Ministry of WIPO since 2001 and responsible for the promotion of IP System in Myanmar. Ministry of Science and Technology and Attorney General Office (AGO) have worked together for drafting the IP Laws such as Patent, Industrial Design, Trademark and Copyright in accordance with TRIPs Agreement and with the major objective in order to facilitate access of the Republic of the Union of Myanmar to international markets and promote free trade and foreign direct investment. At the present stage, these draft IP laws are under the legislation process.

1.2 Definition of Trademark

The meaning of trademark is defined in Section 478 of Penal Code as follows “A mark used for denoting that goods are the manufacture on merchandise of a particular person is called trademark”.

In the case of A.KHUNJALAM AND TWO OTHERS V.T.C.MOHAMED[5] mentioned that “in order to be a Trade Mark within the meaning of s.478 of the 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”.

The Paris Convention for the protection of Industrial Property, 1883 does not regulate the conditions for the filling and registration of marks which are determined in each contracting State by domestic law.[6]

The basic rule contained in Article 15 of the Trade-Related Aspects of Intellectual Property Rights is that any sign, or any combination of signs, capable of distinguishing the goods and services of one undertaking from those of other undertakings, must be eligible for registration as a trademark, provided that it is visually perceptible. Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs, must be eligible for registration as trademarks.

Under Article 2(g) of the draft trademark law, “Mark” means “any visible sign capable of distinguishing the goods or services of one undertaking from those of other undertaking including names, letters, numerals, configurations, combination of colors, or any combination of these signs thereof. In the said expression are also included: trademark, service mark, collective mark and certification mark”.

Besides, Article 2(h) and 2 (i) further mentioned the definition of “Trademark” and “Service Mark”. In Article 2(h), “Trademark” means “a mark in the course of trade capable of distinguishing the goods of one enterprise from those of others”. Under Article 2(i), “Service mark” means “in the course of trade capable of distinguishing the services of one enterprise from those of other.

1.3 Regulatory Body of Trademark Registration

No specific trademark law has been enacted in Myanmar. Although the Registration Act, 1908 is originally intended to handle registration of deeds for land. The Inspector General of Registration issued the registration Direction 13 in 1962 which provides the trademarks may be registered under Registration Act.

Under Direction No.13 provided that “ a trademark is registered by means of a declaration of ownership a solemn statement of facts made by the declarant and usually attested by a notary public, a magistrate or a judicial officer. Although registration of a trademark is not considered conclusive proof of ownership, it is likely to be taken as prima facie evidence of ownership. The ability of produce a registration document will certainly help in criminal or civil court proceeding.”[7]

In Section 18 (f) of the Registration Act, 1908 provided that “all other documents not required by Section 17 to be registered”.

The Registration Act, 1908 is replaced by the Registration Law, 2018. From now on the registration of Trademark must comply with the Registration Law, 2018.

For this reasons, a mark is registrable in the Office of Registrar of Deeds and Assurances under the Ministry of Agriculture and Irrigation Settlement and Land Records Department by submitting a declaration of ownership of the mark under Section 17 ((j) of Registration law, 2018 and Registration Direction 13 of the Inspector General of Registration.

1.4 Trademark Filing Procedure

As stated above, a mark is registrable in the Office of Registrar of Deeds under Section 17(j) of the Registration Law 2018 and Registration Direction 13/1962 of the Inspector General of Registration. The procedure of trademark registration is mentioned below:

Although it can assume that trademark registration goes on unchecked. The Inspector General of Registration issued Registration Direction 13/1962 in order to examine the trademark application.

In Direction 13 stated that “Registration officers should refuse if the mark is likely to be objectionable on moral or legal grounds, or likely to hurt the religious susceptibilities of any class of citizens of Myanmar. Registration should be also refused where, for example the document lends itself to use an instrument of fraud is obscure. Colorable imitation of a currency note should also be refused for registration. And under no circumstances should a mark bearing the image of General Aung San be registered”.[8] .

Prior to registering a trademark, the applicant must choose the class of goods of services for which the trademark is used. Different goods or services are grouped into different classes, therefore, depending on what goods or services one is applying for, registration should be sought in one or more classes. Besides, a clear description of goods and/or services must be provided.

Nice Classification has been adopted by more than 80 countries but not including Myanmar. The Registration of Deed Office accepts trademark applications filed with goods and services grouped and classed according to the Nice Classification. The Nice Agreement (1957) establishes a classification of goods and services for the purpose of registering trademarks. The classification system consist of a list of classes, 34 for goods and 11 for services, as well as an alphabetical list of the goods and services that fall under these respective classes.

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. In the case of John Walker & Sons Ltd (Appellent) V. U Than Shwe (Respondent)[9], 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.

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

A Declaration of Ownership of Trademark could be filed to stand for only one trademark. The specimen of the mark is to be affixed or reflected thereon, either of goods or services, but without limit of number of class covered. To qualify for registration, application must be filed within 4 months from the dated of execution of the Declaration according to Section 23 the Registration Law, 2018.[10]

In case of foreign trademarks, should the owner could not personally appear before the Registrar, his duly authorized Power of Attorney to the applicant must be submitted along with the Declaration. The Power of Attorney is essentially required for notarization and legislation (authentication) by the Myanmar diplomatic office in its home country.[11]

In case of trademark registration, although the law is not mentioned to do so, the applicant must confess the followings;

(a) The applied trademark is using in goods or services that he produced or performed.

(b) The mark is created with his own idea.

(d) Any sales of manufactured goods or services by using such trademark have not seen or hear it.[12]

The office of the Registration of Deeds shall register the declaration of ownership of trademark by filling it in Registration Book 4 which is a general registration book for matters such as declaring, limiting and withdrawing privilege and right on any movable property considered according to Section 53 (a) of Registration Law 2018.[13]

After registering documents presented for registration in accordance with the provisions of this law, the registration Officer shall write on such documents the number and register-books in which they have been registered and endorse them as registered.[14]And then it is signed, sealed and endorse them as registered.[15]

Such kind of registration, although it has been mostly understood as trademark registration, is actually just the act of declaration, according to Registration Direction 13/1962, such that “I am the one who has first invented this trademark by itself and used it since…”, in the present of registrar. And the registration number resulting from it has been called as trademark registration number. Indeed, it is just a registration number of declaration[16].

In Myanmar, trademark registration is not a compulsion. According to Section 47 of the Myanmar Registration Law 2018, a document which is not compulsorily registration does not take effect starting from the day it is registered, but form the day it is executed. There is no period of limitation for the validity of registration, and it will be permanent until it is cancelled by the person who claims registration or by any order of the court.[17]

For strengthened and full protection of the mark, the trademark owner must register his or her trademark and use them as soon as possible. With regard to this U Kaw v. U Ba Aye [18]provided that it is settled law that in Burma there is no method by which a trade mark may be registered but property in or right in respect of a mark may be acquired by user. The registration of a trademark by a person, though a relevant factor for the purpose of determining the date since which he had intended to claim the trademark as his, will not by itself give him a right of property in that trademark.

The registration fee for one application is Kyat 6. The stamp duties payable are Kyat 100 per application, Kyat 150 per declaration, and Kyat 300 for Power of Attorney irrespective of local or foreign mark.[19]

1.5 Require Documents for registration a Trade Mark.

As a current practice, the following persons have the right to register trademarks;

(a) Citizens and legal entities of Myanmar;

(b) Foreigners or foreign companies and organizations;

Thus, an individual or a company may acquire a right of property in a mark in Myanmar by using it on, or in connection with, their goods or services.

Once a mark has been selected and cleared for use and register, the application for registration of such mark should be prepared and filed.

In case of registration as an individual, the following documents are required-

(a) The name of trade mark owner.

(b) The national Registration Card number of trade mark owner

(d) The classes of goods or services

(e) The sample representation of trade mark or service mark.

On the other hand, as a legal entities or organization, the following documents are required.

(a) the director resolution of the company;

(b) Company certificate issued by Directorate of Investment and Company Administration (DICA)

(d) The sample representation of trademark or

Recently the new company Law[20], comes into force and the DICA (Directorate of Investment and Company Administration) declared that the documents issued under the 1914 Company law will not be issued under the new system. Give authorize to all government department to inspect details about the company in myco.dica.gov.mm website.

With regard to the qualified persons for registration of Deeds, Section 30 (b) of the Registration Law provided that other than as provided in Section 29 and 81, the following persons may carry out the registration of documents at a Deeds Registration Office under Section 10 and 11-

(a) persons executing [the instruments]; in case of a decree or order, beneficiaries under the decree or order

(b) persons under Section 3 (h)

Section 3 (h) of this law provided that representative means the legal guardian of a minor or an insane. In case of a department, organization, company or association, the person authorized through a meeting resolution to represent such entity.

(c) attorney of persons under sub-section (a), duly authorized by power-of-attorney executed and authenticated as follows:

(i) A person who holds a power-of-attorney executed by the person, who authorized the power-of-attorney in the presence of the Registration Officer under Section 7 and 8, and by the Registration Officer under Section 7 and 8 to confirm that the authorization is true.

(ii) A person who holds a power-of-attorney executed or endorsed by any authorized officer from the Myanmar Embassy at the relevant country.

In Section 14 of the Trademark Law stated that the applicant for the registration of mark shall mention in the application of the registration that he/she authorizes a representative or an agent for the application, the name and address of that person.

At this time, trademark applications are not examined as to formality and substantive examination. They are just stamped or certified and there is no opposition nor cancellation procedure in Myanmar. A third party, who objects to a trademark registration, may claim cancellation of the registration in the courts. The registration may be invalidated with order of cancellation granted by the courts.[21]

Although no law stipulates the procedure for change of the owner on record, a trademark right is transferable. In case there are any material changes in name or address of the trademark owner, covered goods or services relating to the registered mark, it used to be registered afresh.[22]

1.5.1 Publication of Trademark

Government Authorities do not publish official gazette for trademark Registration. Therefore, it is the common practice in Myanmar that the registrant him/herself places a publication of cautionary notice in a local newspaper. The notice contains the specimen of the trademark, name and address of trademark owner as well as a short warning against trademark infringement. Although the notice in local newspaper is not the statutory requirement, it would constitute strong evidence for use of the mark. Therefore, the newspaper notice is an indispensable and useful procedure in the current trademark practice in Myanmar.[23]

Therefore, 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.

1.5.2 Term of Registration

No law provides for the terms of trademark registration; once a mark is registered, the registration becomes perpetual and there is no need for renewal. It is common practice in Myanmar, however, that the registrant repeats the newspaper notice every years and notify his/her trademark to the public.

So, for a renewal of the registration, a re-publication of the cautionary notice is also recommended. In Draft Trademark Law, the validity of a registered mark is 10years commencing from the filing date for the registration of mark. After the expiry of the 10 year validity of the registration, he or she could renew for 10 years at a time.[24]

1.6 Current Scenario of Trademark Protection in Myanmar

In the absence of specific Trademark Law, by observing a series of case laws and prevailing practices in Myanmar a person aggrieved by the infringement of his trademark can have two remedies open to him: (1) he can institute criminal proceedings under Penal Code and/ or (2) he can bring an action for an injunction and damages. Since 1968, law suits not only for passing-off but for infringement of trademarks are maintainable.[25] The obtainable relieves in these actions are injunctions (both temporary and perpetual injunction inclusive), damages and other ancillary remedies.[26]

As previously mentioned, though non-existence of specific law, cases decided by Supreme Court, whatever had been called as “High Court” or “Chief Court” or “Central Court” defines and prescribes legal principal of Trademark proprietorship.

Disputes in respect of trademark ownership are determined in accordance with common law principle. With regards to this Daw Hla and one v Daw Kin Kin Lat and one[27] stated that “In Myanmar, there is no system of registration of trademarks, nor for a statutory title to a trademark. So the rights of the parties setting up rival claims to ownership of a trademark must be determined in accordance with the principles of common law”.

The Laws relating to trademark protection are-

(a) Penal Code ,1860

(b) Merchandise Marks Act ,1889

(d) Sea Customs Act ,1878

(e) Registration Act ,1908

(f) Private Industrial Enterprise Law ,1990

(g) Anti-money Laundry Law ,2014

(h) Myanmar Investment Law, 2016

(i) Unfair Competition Law ,2015

1.6.1 Criminal Nature of Protection

Effective strategy for enforcement of one’s trademarks and protection of trade name is through criminal action under the Myanmar Penal Code, 1860. In Penal Code, Sections 478 to 489 in Chapter 18 provide definitions of trademark; property mark; using false marks and punishment for making, using and possessing such marks. In these proceedings, the defendant is liable to be fined and/ or imprisoned if found guilty.[28]

Section 478 of Penal Code 1860 provides that “A mark used for denoting that goods are manufacture of merchandise of a particular person is called a trademark’’.

Under the Penal Code it is an offence to, among other things:

(i) “use a false trade mark,” unless such act was done innocently, without intent to defraud; it is imprisonment for up to a year, a fine and both.[29]

(ii) counterfeit a trade mark; it is imprisonment for up to two years, a fine and both.[30]

(iii) make or possess any die, plate or other instrument for the purpose of counterfeiting a trade mark or possess a trade mark for denoting that any goods are the manufacture or merchandise of a person whose manufacture or merchandise they are not; it is imprisonment for up to three years, a fine or both.[31]

(iv) sell or possess for sale or any purpose of trade or manufacture any goods to which a counterfeit trade mark is affixed or impressed unless it is proven that;

(a) Having taken all reasonable precautions against committing an offence, there was no reason to suspect the genuineness of the mark;

(b) All information known about the person from whom the goods were obtained was given to the prosecutor; and

In practice, the defendant who has been charged under this section uses these three exceptions as a line of defend to escaped from such offence.

As stated above, the Penal Code 1860 stipulates to protect trademark with providing criminal punishments against trademark infringement.

1.6.2 Civil Nature of Protection

A possible additional cause of action worth considering in respect of trade mark infringements in Myanmar exists under Section 54 of the Specific Relief Act, 1887. This cause of action was reinvigorated as a possible alternative to passing-off by the comments of the Director General of the Office of the Attorney General. [33]

Section 54 of the Specific Relief Act provides that “when the defendant invades or threatens to invade the plaintiffs right to, or enjoyment of, property, the Court may grant a perpetual injunction…’’ The “Illustrations’’ to the operation of Section 54 include, among others, where:

An improperly uses the trade mark of B, B may obtain an injunction to restrain the user, provided that B’s use of the trade mark is honest.

In the case of U Maung Maung (a) A Li By V Daw Khin Than Myint[34] stated that “ in making counterfeit trademark it does need to be identical but it is similar when compare each other and this make consumer misleading that they are produced from the same person”.

On considering for whether temporary injunctions should be granted or not in the dispute between the rival grinding essence (Thanatkha) manufacturers namely “Taung Gyi Mauk Mae” and “Shan Maung Mae”, it is not to decide predominantly on infringement issue, but only on whether there consists a prima facie ground in the case.[35]

1.6.3 Protection under Special Laws

The trademark protection possibilities under the Penal Code described above tie in which the protections and remedies afforded under the Merchandise Marks Act, 1889. The Merchandise Marks Act does not exempt any person from any action, suit or other proceeding that might, but for the provisions of the Merchandise Marks Act, be brought against them, nor does it give any civil right of action to those who are damaged by any breach of its provisions. However, the 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 secured.[36]

Every person who commits any of the following acts is guilty of an offence under the Merchandise Marks Act unless it can be proven that they acted innocently and without the intent to defraud:

(a) “applies” any “false trade description” to goods; it is imprisonment for up to three months or a fine[37], and

(b) sells or exposes or has in possession for or for any purpose of trade or manufacture, any goods or things to which any false trade description is applied; it is imprisonment for up to one year or a fine or both[38].

Section 15 of Merchandise Mark Act 1889 prescribes the provision on period of limitation criminal action against trademark infringement. It provides that no prosecution shall be commenced after the expiry of three years after the commission of the offence, or one year after the first discovery thereof by the prosecutor, whichever first happens.

The Sea Customs Act prohibits export or import by land or sea of goods with a counterfeit trademark. The same applies in the area of trade and commerce. Under Section 18 and 19 of the Sea Custom Act, importation into the country by land or sea of goods with a counterfeit trademark within the meaning of the Penal Code or a false trade description within the meaning of the Myanmar Merchandise Marks Acts and goods made or produced outside the limits of the Union of Myanmar and having affixed thereto any name or trademark being, or purporting to be , the name or trademark of any person who is manufacturer, dealer or trader in the Union of Myanmar is prohibited. Any goods, imported in contravention of this provision shall be liable to confiscation, and in addition any person involved in any such offence is liable to pay a fine under Sections 19A and 167 respectively. In section 170 and 171, a Custom officer is authorized to stop and search any person, vessel or vehicle on the grounds of reasonable suspicion. In Section 9 of the Land Customs Act, it is laid down that the provisions of the Sea Customs Act including those above-mentioned are applicable.[39]

In Section 27(a) of the Private Industrial Enterprise Law prescribe that an entrepreneur, in distributing and selling the goods he has produced shall not sell without a trade mark.[40]

Section 5 (c) of the Anti-Money Laundering Law provides that Laundering of money and properties derived from commission of any of the following offences shall be applicable to this Law; offences relating to infringement of the Intellectual Property Right. With regard to Penalties, Section 43 of this law provided that whoever commits money laundering shall, on conviction, be published with imprisonment for a term which may extend to ten years or with fine or with both. If the offender is a company or organization, a fine which may extend to five hundred million kyats shall be imposed on such company or organization. The beneficial owner shall be punished with imprisonment for term which may extend to seven years.

According to Myanmar Investment Law (2016), trademark is treated as capital. In Section 40(d) of this Law enacted that in investment, the following are also included: intellectual property rights under any laws, including technical know-how, patent, industrial designs, and trademark,

In Section 18 of the Unfair Competition Law (2015) stated that no businessman shall carry out any of the following acts which mislead the consumers:

(a) carrying out with intention to compete with the use of deceptive information which mislead the legally registered name of goods, business slogan, logo, packaging, geographical indication and other elements.

(b) carrying out business such as production of goods and services by using the information contained in sub-section(a).

Any person who violates the prohibitions contained in section 18 shall, on conviction, be punished with imprisonment for a term not exceeding one year or with fine not exceeding Kyat fifty lakhs or with both.[41]

Chapter 2

Trademark Draft Law and its Structure

The Draft Trademark Law was published and submitted to the Myanmar Parliament in 2013 and it was published in newspapers for public comment. It is now being reviewed by the concerned Draft Law of Parliament.

In this draft law includes 23 Chapters and 101 Article. Any individual or corporate entity that owns trademarks will be allowed to register in Intellectual Property Office, which will be fully operational by the time the new Trademark law comes into force. Foreigners have to appoint a local agent to file the registration on their behalf, if their ordinary residence or principal place of business is outside of Myanmar.

The draft Trademark Law introduces a “first-to-file” system replacing the current “first-to-use” system. This bring Myanmar IP laws closer to the IP law of other ASEAN nations, as most ASEAN nations use the first-to file system. It also means the foreign exporters should register their trademark in Myanmar as soon as possible and ideally before launching their product on the Myanmar market, because whoever registers the trademark first will then become the owner of that trademark, regardless of its first use.[42]

This new law seems adheres to international standards. Some provisions with regard to registration process, term of registration, types of marks eligible for registration, claiming priority right are similar to the standards used in other countries. Trademark owners will have the option of pursuing either civil or criminal actions against alleged infringers.

This law further provides the procedure for the enforcement of border control measures. More detailed registrability guidelines and application procedures will be provided. Priority rights will be included. Oppositions and cancellation actions will be available. Well-known marks will be recognized and geographical indication registration will be available. Special IP courts will be established and therefore border control measures will be stronger. Specifically define the type of trademark which cannot be register.

Among other chapters, this paper focuses on Chapter 6, 7 and 8 which relates registerable mark, the process of application and examination, procedure of objection and registration respectively.

2.1 Importance of Distinctiveness

Trademark distinctiveness is an important concept in the law governing trademark and service marks. A trademark may be eligible for registration, or registrable, if it performs the essential trademark function, and has distinctive character.

The more distinctive a trademark design is, the easier it is to register that trademark. The higher the distinctiveness spectrum a trademark is, the more protection is received. In Abercrombie & Fitch Co.v. Hunting World, 537 F.2d (2^nd Cir. 1976), established the spectrum of trademark distinctiveness in the U.S, breaking trademark into classes which are accorded differing degrees of protection. Courts often speak of marks falling along the following “Spectrum of distinctiveness”, also known within the U.S as the “Abercrombie classification” or “Abercrombie factors”.

Trademark Bill also recognized the important of distinctiveness and application of trademark will be decided based on whether such mark is distinctiveness or not. In Article 10 of this law mentioned that “Lack of distinctiveness as a mark is consider to be strong reason for refusal, such mark shall not be registrable”. Surprisingly, the meaning of “distinctiveness” does not define in the draft trademark law.

2.2 Transactional Period for Registered Trademark under Existing Practice.

Registered trademarks will not be carried over to the new system. So, the trademark which is registered under the current system has to be re-registered.

In Chapter (27) Article 92 of trademark law provided that “before this law comes into effect, the owner of mark, who has registered at the Document of Registration Office in accordance with the Registration Act, desires to attain the right of registered mark, he or she shall submit application for the registration of mark in accordance with this law”.

For the purpose of this Section, the owner of registered mark and non-registered mark must have to register in accordance with the new law to obtain the right of registered mark.

In such situation the owner of the registered marks will have to face some difficulties. The draft trademark law specifically describes type of marks which are not registrable but in current practice there is no such system.

In current framework of trademark registration adheres to certain guidelines provided in the Registration Direction 13/1962. Trademarks are to be refused registration if they are obscure,

(a) Marks that bear the image of General Aung San,

(b) Marks that are colorable imitations of a currency note,

(d) Marks that are hurtful to the religious susceptibilities of any class of citizens of Myanmar, or

(e) Mark that they are used as an instrument of fraud.

These considerations have indeed been used as basis to refuse registrations of certain marks. For example, marks with features that have a likeness to known figures or symbols in Buddhism have been known to be refused registration.

In comparing with current practice, the new Trademark Law stated more restrict rules than the old one.

In case of re-registration, there may include the marks which are not in consistence with the new law’s restrictions contained in Article (10) and (14).

In Chapter (7) and (8) of Trade Mark Law enacted the application process for registration of Trade Mark. Before application, the applicant must comply with the requirements contained in Chapter (6). Chapter (6) of this Law mentioned grounds for refusal of a trademark.

Under Chapter (6), Article 10 of Trademark Law provides “if a mark is involved with the following factors and considered it to be a strong reason for refusal, such mark shall not be registrable:

(a) Lack of distinctiveness as a mark;

(b) Comprising only the marks or indications describing classes, connected content, quality, quantity, intended utility, value, geographical origin, production time, or other characteristics of goods and services;

(c) Contrary to the public order, morality, faith, and conscience which is the venerated and cherished culture of the State;

(d) Becoming a general usage, habitual usage, or applied usage in the trading circle in the current vocabulary in use;

(e) Regarding Sub-article (b) , misleading the public or trading circle;

(f) Using, without permission of the relevant authorities, whole or partial direct republication or duplication of any flag, symbolic emblem, or other signs of any country, using legal sign or quality assurance marks describing command or guarantee defined by any country, using commemorative features, flags, other emblems, names of intergovernmental organizations or abbreviation or initials of those organizations;

(g) Involving in the prohibited matter under existing law.

(h) Using the emblems protected independently according to the international agreements in which the State is a member”;

Under Article 11 of this Law further provides connected reason for refusal, the marks which are;

(a) Misleading the people by using a mark identical or similar to a registered mark on the goods or services that is identical or similar to the goods or services of the registered mark;

(b) Using, without permission of the relevant person or legal entity, the mark that is possibly in violation of the individual rights of any individual or to the name and reputation of any legal entity;

(d) Mark that applies for the registration in bad faith;

(e) Mark that applies for the registration is not only identical or similar to the famous mark, but it is also identical or similar to the goods so that it misleads the people;

(f) Mark that applies for the registration is being identical or similar to the registered famous one but different in the goods or services, capable of indicating to have a connection between the owner of famous mark and the goods or services in use; and the mode of such using is capable of detrimental to the interest of the owner of famous mark;

The applicants, the owner of the registered mark under current system, may not know his or her mark contains in the expression of non-registrable mark mentioned in Article 10 and 11. He or she will able to know his or her mark is registrable or not by the time when the examination process is begin.

In the examination process, the inspector, regarding to the application for the registration of mark shall examine whether or not the factors are in conformity with the rules of Article (10) and Article (14)[43] and then the application which are in conformity with the rules of Article (10) and Article (14) will notify to the applicant about the non-conformed application to mark for the purpose of correction and preparation.[44]

When the registration applicant obtains this notification, he or she shall apply the two exemptions contained in Article 10 of Sub-article (b).

Article 10 of sub-article (b) describes two exceptions that are as follows;

(1) Prior to the date applying for the registration of the mark, it has been prominent because of the used of it among consumer.

(2) The only application has been using that mark in a honest manner continuously and independently.

At that time the role of applicant is important to show evidence that his or her trade mark is fall within the exception of Article 10 (b) of Sub-article (1) and (2). But in this new law there is no provisions how to submit evidence for the purpose of sub-article (1) and (2). In new law, we are hoping to include a specific procedure to solve this difficulty in rule relating to trademark law.

When the draft law comes into force, registration and re-registration cannot be considered on the same footing.

2.3 Trademark Application and registration under Draft Trademark law

Trademark application is provided in Chapter 7 and 8 of the new trademark law. According to this chapter an applicant for the registration of the mark shall write the application for the registration either in Burmese Language or English language.[45] An application for the registration of the marks shall mention the following factors in the application of the registration;

(1) A request for the registration;

(2) Name and address of an applicant or legal entity;

(3) If the applicant authorizes a representative or an agent for the application, the name and address of that person;

(4) Clear and comprehensive expression of the mark;

(5) Goods and services, and names and classes of goods and services for which the registration is sought and grouped according to the international classification of the marks;

In addition to Sub-article (a), the following factors shall be, if necessary, mentioned:

(1) If the applicant applies for a legal entity, the registration number of that entity, class, and country name;

(2) If the applicant requests the right of priority, the claim for the rights of priority along with the secured proof and declaration of why you have entitlement to it;

(3) If the applicant request for the rights of priority relating to the trade affairs, the claim for the rights of propriety relating to the trade affairs along with the secured proof and declaration of why you have entitlement to it; If a mark for application is a mark that already registered at the Office of Documentation, a certified certificate that proves such registration;

(4) Other requirements occasionally defined by the Department.[46]

Inspector, regarding to the application for the registration of mark, shall:

(a) Examine whether or not the factors are in conformity with the rules of Article (10) and Article (14) and thereafter report the conformed application, including comments, to the registrar

(b) Examine whether or not the factors are in conformity with the rules of Article 10 and Article 14 and thereafter, shall notice the applicant about the non-conformed application to make correction and preparation, as may be necessary. If the applicant fails to amend and fulfill within 30 days from the date of notice, it presumed that the application is withdrawn.

(c) Receive the application with the necessary correction within the period defined in Sub-article (b) and then verify the stimulations and report it, including comments, to the Registrar.[47]

The applicant fails to comply with Article 20 of Sub-article (b) he/she re-apply in accordance with the conditions mentioned in Article 21. The applicant has been re-applying for the registration of the mark the registrar shall verify and allow the request and issue the statement to inform the people, if they may object, for objection to the application in conformity with Article (1) and Article (14).[48] The person who opposed may, subscribing the prescribed fees, submit a letter of objection in writing with any sufficient reason defined in Article (10) and (11) of this law within 60 days from the date of making a statement to Registrar.[49]

If the Registrar, on receiving the letter of objection, shall send a notice letter to applicant in order to defend against objection within a defined period[50]and examine the cause of objection whether in conformity with stipulations defined in Article (10) and (11) and thereafter grant or refuse.[51] Record about the grant or refusal the registration in the registration in the registration book and notify the applicant; thereafter issued the statement of the grant or refusal to the public in accordance with the defined manner.[52]

If there is no objection within 60 days from the date of making statement to the people, the registrar may grant the application for the registration that mark.[53]

After the above mentioned process, a registration certificate may produce the applicant if the registration is granted.

Publication (Article-25-c)

Issuing Certificate (Article-25)

Application

(Article-12)

Examination

(Article-20)

Complete

Not complete (amend within 30days) (Article-20)

Fail to amend

Re-apply within 60 days (Articel-21)

Publication for opposition

(Article 22-b)

Within 60 days

opposition

(Article-22)

No opposition

(Article-25-a)

examination objection(Article- 25)

Trademark Registration Process

Denial of opposition

(Articel-25)

Allow opposition (Article-25)

Publication

(Article- 25)

2.4 Cross- Border Protections

Myanmar Customs Department provides a recordal system for trademarks upon application of the trademark owner. Goods bearing the recorded trademark imported by any party other than the local company granted with sole distributorship will be detained at customs. In addition, the IPR holder may inform the customs of suspected importation of infringing goods by notifying Customs when he/she is aware of specific import of counterfeits for Customs to take action.[54]

The requirements and procedures for voluntary recordal are as follows;

(a) Application letter from the right holder or the authorized agent addressed to the Director General, Myanmar Customs Department Yangon.

(b) Contract between local Company and the right holder;

(d) Trademark sample

(e) Registered declaration of the ownership of trademark in Myanmar.

(f) Publication of cautionary notices in the newspaper;

(g) Power of attorney from right holder to law firm.

(h) Description of product.[55]

The application should be delivered to the Dispatch Unit of customs. The application will be forwarded from the Director General to the Director of Import/Export to the Staff Officer who will review the application. Upon successful application, a notification of the protection from the importation of counterfeited goods will be issued to the applicant. If all required information/documentation have been provided, the applicant will be processed within one-two (1-2) weeks. Also, the recordal application does not involve any fee. However, the applicant has to be affixed with a 1,000 MMK stamp. The officers strictly require all documents listed above to approve the application and have rejected applications where item b) had been omitted due to sensitive commercial details included in the document.[56]

Concerning with border control protection Chapter (20) of new trademark law provided that the right holder who has sufficient grounds for suspecting that the mark is fraudulent, on being accused as such, has been imported or is being imported or will be imported inside the territory of the State, may submit the application, in accordance with stipulations, to the relevant Customs to issue suspension order on the said goods not to access freely through the trade route.

What documents required for submission to the custom department are not mentioned in this law but hopefully to specify clearly by the time require procedure for implementation this law is enacted.

Protecting on rights of trademark by customs is stated in Chapter (20) of Trademark draft law. In Article 66 of this law provided that “the right holder who has sufficient grounds for suspecting that the mark is fraudulent, on being accused as such, has been imported or is being imported or will be imported inside the territory of the State, may submit the application, in accordance with stipulations, to the relevant Customs to issue suspension order on the said good not to access freely through the trade route”.

2.5 Current Situation of Protection on Well-known Marks

Over half of the companies on Interbrand’s Top 20 Best Global Brands 2014- including Google, Apple, Coca-Cola, Samsung, Toyota, Intel, Hewlett Packard and Honda-have registered their marks under the current system. Apple is the top-ranked brand in the Best Global Brands 2014 rankings and it already has an official authorized dealer and seller of Apple laptops, desktop computers and iPhones in Myanmar which is responsible for expanding the tech giant’s business and addressing customer requirements. Coca-Cola has also generated a lasting positive impact in Myanmar by manufacturing, distributing, selling and hiring through its local business there. Samsung has launched an electronic equipment business, mobile phone reseller and shop in the country; while other leading global brands-such as Mercedes Benz, BMW and Toyata-have all opened showrooms with local partner in Myanmar.[57]

Under the current system, it is possible for one or more parties to register identical or similar trademarks in Myanmar concurrently, as previously mentioned. This is the case even well-known marks. Therefore, identical trademarks should be recorded and a cautionary notice published to show that they are protected in Myanmar.

Recently, a number of local shops have been using names and well-known marks as their shop or business names. This may be because the well-known marks (often foreign) mark is unknown to them. Additionally, under the current system, they may be within their right to use the well-known marks, provided that they have recorded a declaration of ownership with the RDA. In such cases right holders can do nothing to prevent such infringement, unless they have already taken step to protect their marks in line with the current practice. In current there is no provision protection of well-known mark.[58]

However, in new law expressly defines well-known marks and offers varying protection for both registered and unregistered well-known marks. However, the law is silent on the process of how a mark would be declared a well-known mark, providing only that a mark would be well-known if it meets the set criteria. Exactly what these criteria will be is not provided for in the law, and will likely be covered by subsequent issuances, possibly in the rules and regulations for trademark registration. It is also not clear if there will be a separate registry for well-known marks. Until then, it is best to have at least basic protections in place, such as trademark registration under the current registration system. At the very least, a trademark registration already in place would be compelling proof of historical use of the mark in Myanmar, which is often a useful argument when seeking a claim that a mark is well-known.

In order to protect infringement of well-known mark, the owner of such mark should register not only the mark itself but also register its transcriptase word.

Chapter 3

Future Perspective of New Trademark Protection in Myanmar

Both Civil and Criminal remedies for trademark infringement are available under the Bill. Civil relief available to aggrieved trademark owners includes temporary measures and the courts are empowered to order infringers to pay damages, court fees, and attorney fees. The Bill also stipulates criminal penalties in the form of imprisonment, fines, and the destruction of infringing goods.

Trademark owners are eagerly anticipating the enactment of the Bill into a law, as foreign investments continue to pour into Myanmar pursuant to the enactment of the new Myanmar Investment Law 2016 and Myanmar Companies Law 2017. While there are references to the protection of intellectual property rights in various statues, it is timely for Myanmar to introduce its very first trademark law to adequately address trademark protection needs and the concerns of foreign and local businesses alike. Another feature which is a welcome move is the possibility that a trademark owner can enforce its rights through customs. In other words, with enough reasons for alleged import, export or transit of infringing goods into, out of or via the country, the trademark owners will be allowed to apply to the Department of Customs for a detention or suspension order.

Registration of marks under the new Law will be effective for ten years, with the option to renew indefinitely at the end to every ten-year term. Non-use of a mark for three consecutively years will be sufficient grounds for cancellation. The new Myanmar Intellectual Property (IP) office will be created to look after the operations in the new Trademark Law. Additionally, new Intellectual Property Courts specialized in handling trademark litigations will be established.

3.1 Protection on Geographical Indication

Geographical indications are understood by consumers to denote the origin and the quality of products. Many of them acquired valuable reputations which, if not adequately protected, may be misrepresented by dishonest commercial operators. False use of geographical indications by unauthorized parties is detrimental to consumers and legitimate producers. The former are deceived and led into believing to buy a genuine product with specific qualities and characteristics, while they in fact get a worthless imitation. The latter suffer damage because valuable business is taken away from them and the established reputation for their product is damaged. [59]

The important of protecting geographical indication, the new draft Trademark Law, introduced the provisions concerning the protection of geographical indication. In accordance with this law, any legal entity representing the following persons of the locality in which the relevant good is produced, desirous of registration a geographical indication shall apply to the Intellectual Property Office of Myanmar for registration in conformity with the stipulations;

(a) Persons who produce goods of natural products or natural resources;

(b) Producers of agricultural products;

(d) All national competent authorities on behalf of the persons indicated under (a) to (c).[60]

Under Article 55(c) of Draft Trademark Law, a person who holds the rights of the registered geographical indication shall have a right to protect and prohibit the following matters;

(1) Regarding geographical indication of the good, the use of any means in the designation or presentation of a goods that indicates or suggests that the goods in question originates in a geographical area other than the true place of origin in a manner which misleads the public as the geographical origin of the goods;

(2) Any use which constitutes an act of unfair competition;

(3) Indicating geographical origin of the good, using geographical indication for the good not from a defined a place of origin with a disputed geographical indication

A geographical indication points to a specific place or region of production that determines the characteristic qualities of the product that originates therein. It is important that the product derive its qualities and reputation from that place. Since those qualities depend on the place of production, a specific “link” exists between the products and the original place of production. For these important reasons geographical indication should be protected in accordance with national law.

3.2 Protection on Trade Name

A trade name is simply the official name under which an individual as a sole proprietor, or a company, choose to do business. A trade name is commonly known as a “doing business as” name. Legally registering a trade name is an important step in branding for a company, but it doesn’t provide an unlimited brand name or use of the name legal protection. [61]

Protection on Trade Name is stated in Article 61 of the Trademark Draft Law as follows; Trade name shall be protected whether it is a part of the mark or not, even if the trade name is not registered. In accordance with this law, trade name can be protected whether they are registered or not.

In addition, the law also defines the specific names which are unable to use as trade name. In Article 61(b) stated that “Due to the nature of a name or a specification, whether it is being used, if it contradicts with the public order or morality, especially if the nature of business described such name may likely be misleading the trading circle or the public, such name or specification shall not be used as a trade name.

The reason of protecting trade name is also provided in Article 61(c), “if using the mark being identical or similar to one trade name as other trade name or mark without permission results in misleading the public, a trade name shall be protected.

However, even though registering a trade name does not provide legal protection in the way that registering a trademark does, selecting a trade name should still be done thoughtfully, as it is the initial step in establishing an identity for your company in the marketplace.

3.3 Protection on Well-known Mark

Well-known trade and service marks enjoy in most countries protection against signs which are considered a reproduction, imitation or translation of that mark provided that they are likely to cause confusion in the relevant sector of the public. Well-known marks are usually protected, irrespective whether they are registered or not, in respect of goods and services which are identical with, or similar to, those for which they have gained their reputation. It should be noted that, while there is no commonly agreed detailed definition of what constitutes a well-known marks, countries may take advantage of the WIPO joint Recommendation Concerning Provisions on the Protection of Well-known Marks.[62]

In Trademark draft law introduces the protection of well-known mark but in which does not provide the well-known marks criteria. According to Article 2(m) of Draft Trademark Law, “Well-known marks mean any mark in accordance with the specified criteria to be well-known in the country.”

It should be aware of the fact that a number of trademark laws merely implement obligations under Article 16.3 of the TRIPS Agreement and protect well-known registered trademarks only under the following conditions;

- that the goods and services for which the other mark is used or is seeking protection are not identical with or similar to the goods for which the well-known mark acquired its reputation.

- That the use of the other mark would indicate a connection between these goods and the owner of the well-known mark, and

- That his interests are likely to be damaged by such use[63].

3.4 Forming IP Court

By signing onto the World Trade Organization’s (WTO) Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS), signatories publically recognized the importance of effectively protecting and enforcing intellectual property rights (IPR). Although TRIPS itself does not obligate its signatories to establish separate IPR courts, many governments have done so on their own accord. The majority of signatory countries have established some form of court or tribunal which specializes in IPR issues. These courts are referred to by various names, including the Specialized Intellectual Property and International Trade Court, and the Court for Intellectual Property Disputes, to name a few. All of these courts exist mainly to adjudicate IPR disputes. [64]

IPR matters can be divided into two major categories. The first category includes bodies that hear disputes brought by rights holders concerning the grant or registration of an IPR. These disputes are usually between the owner and IP offices of each country. For example, when determining whether to grant a trademark, an IP office is exercising a quasi-judicial function, which requires either judicial oversight or another avenue of appeal. The second category concerns judicial enforcement of IPR in disputes between rights holders and alleged infringers. There are many different types of specialized IPR courts, and governments give these courts different names, although the core functions of such courts are often similar.[65]

When the Trademark Draft Law comes into force the IP Court will arise and the provisions regarding to establishing IP Court are mentioned in Chapter (21) of Article 75 to 85. So the infringement on the rights of trademark, the aggrieved person may lodge the complaint to the Court for temporary action and may file litigation to the Court to take action by way of Criminal or Civil action. [66]

Specialized IPR courts often make quicker and more effective decisions. Because judges in specialized courts are generally encouraged to have specialized knowledge, they are unable to understand the procedures and technicalities associated with IPR cases. Specialist Judges recognize case patterns and legal issues, which reduces delay and facilitates the speedy resolution of cases. This save time and allows court resources to be used more efficiently. With increased judicial competence in effectively and efficiently resolving IPR cases, confidence in IPR litigation will also increase. [67]

3.5 Offences and Penalties under Draft Trademark Law

According to Articel 86 of Trademark Law “whoever knowingly commits any of the following acts for business purposes without having permission of the right holders, whether on conviction or abetting an offence, shall be punished with imprisonment for a term not exceeding 3 years or with fine for an amount not exceeding 5 million kyat or with both:

(a) Making a forged mark;

(b) Using a forged mark on goods or in services related;

(d) Selling, distributing, or importing the goods using the forged mark;

(e) Importing or exporting the goods with a forged mark.

Under Article 87 stated that “Whoever commits any action contained in Section (86), after conviction for such action, if that person commits the same action again within 5 years period form the date committed the previous action, and on conviction, he or she may be punished with imprisonment for a term of at least 3 years to upmost not exceeding 10 years and in addition, with fine for an amount not exceeding 10 million kyat.

With regard to using sign of flag or emblem of International Agreements to which the State is stated as follows “Whoever uses a sign of flag or emblem of International Agreements to which the State is a member as the mark for business purpose shall, on conviction, be punished with imprisonment for a term not exceeding 3 years or with a fine for an amount not exceeding 5 million kyats or with both.

Whoever removes, destroys, deforms or makes addition with intention to adversely affect the owner of registered mark shall, on conviction, be punished with imprisonment for a term not exceeding one year or with fine for an amount not exceeding 3 million kyats or with both[68].

Article 89 of this law stated that “Whoever removes, destroys, deforms or makes addition with intention to adversely affect the owner of registered mark shall, on conviction, be punished with imprisonment for a term not exceeding one year or with fine for an amount not exceeding 3 million kyats or with both”.

According to Article 90 of this Law enacted that “Whoever commits any of the following acts shall, on conviction, be punished with imprisonment for a term not exceeding one year or with fine for an amount not exceeding 2 million kyats or with both:

(a) Issuing or causing to issue irregularly of the certificate of the registered mark;

(b) Entering or causing to enter irregularly in the Register of Marks.

Article 91 of this Act stated that “Whoever fails to comply with the Court order according to Article (84), he or she shall be punished with imprisonment for a term not exceeding six months or with fine for an amount not exceeding 1.5 million kyats or with both.

This new trademark law also does not prohibit the infringer the infringement on the rights of trademark, any aggrieved person may file litigation to the Court to take action by way of criminal or civil action.[69]

3.6 Comparison between Myanmar Trademark Draft Law and Thailand Trademark Act

Currently, Thailand is a signatory to both the Paris Convention for the Protection of Industrial Property, and the Patent Cooperation Treaty (PCT) and has acceded to the World Trade Organization (WTO) Agreement on the Trade Related Aspects of International Property Rights (TRIPs). In March 2013, Thailand launched the National IPR Centre of Enforcement (NICE) as a coordinating enforcement body and has had a dedicated Central Intellectual Property and International Trade Court (CIPITC) since 1997.[70]

Thailand Trademark Act B.E. 2534 (1991) as amended up to Trademark Act (No.3) Act B.E. 2559 Act B.E, 2559 (2016).

In this law “Mark” means a photograph, drawing, invented device, logo, name, word, phrase, letter, numeral, signature, combination of colors, figurative element, sound or combination thereof[71]. According to this definition, sound mark can be registered in Thailand. Myanmar Trademark draft law does not permit non-conventional sign to register.

In Thailand Trademark applications are only examine and grant by the “Registrar”. Myanmar Trademark Draft law confers “Inspector” to examine the application and the report to it to the “Registrar” to grant application.

Under Thailand Trademark Act, the Minister of Commerce shall have charge and control of the execution of this Act.[72] This is the best chose to implement this responsibility. In Myanmar, Trademark Draft Law confers authority on Ministry of Education[73] In my opinion, Ministry of Education is not suitable to take this responsibility because they have no experience to administer trademark system.

In Thailand, registrable trademarks are decided based on these conditions: (1) be distinctive, (2) not be prohibited under this Act; (3) not be the same as or similar to a trademark registered by another person.[74] In Section 7 of this law defined the definition of “a distinctive trademark”. In Myanmar Trademark draft law also need to define the meaning of “distinctiveness”.

Thailand trademark Act mentioned the provisions concerning with colors. In Section 45of this law stated that “A trademark registered without limitation color shall be registered for all colors”. In Myanmar law should insert this provision because most of the trademarks are combined with colors.

Thailand Trademark Act is more complete and mentioned more details. Myanmar Trademark Law Bill should imitate some of the provisions stated in the Thailand Trademark law in order to implement successfully trademark protection system in the country.

3.7 Comparison between Myanmar Trademark Draft Law and India Trademark Act

The law of trademark in India before 1940 was based on the common law principles of passing off and equity as followed in England before the enactment of the first Registration Act, 1875. The first statutory law related to trademark in India was the Trade Marks Act, 1940 which had similar provision like the UK Trade Mark Act, 1993. In 1958, the Trade and Merchandise Marks Act, 1958 was enacted which consolidated the provisions related to trademarks contained in other statutes like, the Indian Penal Code, Criminal Procedure Code and the Sea Custom Act. The Trade and Merchandise Marks Act, 1958 was repealed by the Trade Marks Act, 1999 and is the current governing law related to registered trademarks. The 1999 Act was enacted to comply with the provisions of the TRIPS.

The Trademark Rules, 2017 notified by the Department of Industrial Policy and Promotion (DIPP) completely revamps the Trademark Rules, 2002 to simplify and expedit the trademark registration process in India and promote e-filings. The Rules have come into effect from 6^th March, 2017. The Trademarks Act, 1999 provides for registration and better protection of trademarks for goods and services and for the prevention of the use of fraudulent marks.

Trademark defined under Section 2 (zb) of the Trade Marks Act, 1999 as, "trade mark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours." A mark can include a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colors or any such combinations. According to this Act, shape of goods can be registered as trademark in India but which is not included in Myanmar Draft Trademark Law.

Section 9 of the Trade Mark Act 1999 stated the character of distinctiveness can be obtained through use. In this Act provided that “if a mark itself lacks distinctiveness, it can still be registered if it has acquired distinctiveness through use.” Myanmar Draft Trademark Law also provided the similar provision.

In addition section 9 of the Trademarks Act further provides the absolute grounds for refusal of a trademark; These are as follows

· The trademark is devoid of any distinctive character – that is, it is not capable of distinguishing the goods or services of one party from those of another.

· The mark consists exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or time of production of the goods or rendering of the service or other characteristics of the goods or services.

· The mark consists exclusively of marks or indications which have become customary in the language or established practices of the trade.

· The mark is of such nature as to deceive the public or cause confusion.

· The mark comprises material likely to offend the religious susceptibilities of a class or section of Indian citizens.

· The mark comprises or contains scandalous or obscene matter.

· Use of the mark is prohibited under the Emblems and Names (Prevention of Improper Use) Act 1950.

· The mark consists exclusively of-

- the shape of goods which results from the nature of the goods themselves;

- the shape of goods which is necessary to obtain a technical result; or

- the shape which gives substantial value to the goods.

Although Myanmar Draft Trademark Law does not mentioned with respect to the shape of the goods all other provisions are almost contain in this draft law.

With regard to refusal of a Trademark provided that, “A mark cannot be registered if there is a likelihood of confusion due to:

- its identity with an earlier mark for similar goods or services; or

- its similarity to an earlier mark for identical or similar goods or services.

· A mark cannot be registered if it is identical or similar to an earlier trademark and is to be registered by a different owner for goods or services which are different from those for which the earlier mark is registered if the earlier mark is a well-known mark in India.

· A mark cannot be registered if its use in India is liable to be prevented by any law.[75] This provisions also not very different form Myanmar Draft Trademark Law.

In India, concrete Trademark Rules are provided and Myanmar should also reference such rules and provide the rules relating to trademark in line with the Myanmar Trademark Regime.

[1] www.aseanip.org.

[2] http://www.wipo.int/wipolex/en/details.jsp?id=6187.

[3] www.aseanip.org.

[4] Ibid.

[5] 1949,B.L.R (H.C) pg. 650.

[6] http://www.wipo.int/treaties/en/ip/paris/summary_paris.html

[7] http://www.wipo.int/wipolex/en/details.jsp?id=6180.

[8] http://www.wipo.int/wipolex/en/text.jsp?file_id=182402

[9] 1968, Myanmar Law Reports (Chief Court) p.73.

[10] U than Maung (Sittawe), Legal Articles on Intellectual Property Rights, 3th edition , Myanmar, Wisdom House, pg-318.

[11] Ibid.

[12] U Maung Maung (Maw kyung), Trademark, Myanmar, Wisdom House, July 2015, Pg-77.

[13]U than Maung (Sittawe), Legal Articles on Intellectual Property Rights, 3th edition , Myanmar, Wisdom House, pg-40.

[14] Section 53(a) of the Registration Law, 2018.

[15] Section 53(b) of the Registration Law, 2018.

[16] U than Maung (Sittawe), Legal Articles on Intellectual Property Rights, 3th edition , Myanmar, Wisdom House, pg-40.

[17] Ibid.

[18] 1962 B.L.R (CC) 187.

[19] U than Maung (Sittawe), Legal Articles on Intellectual Property Rights, 3th edition , Myanmar, Wisdom House, pg-318.

[20] Myanmar Company Law 2017.

[21] http://open_jicareport.jica.go.jp/pdf/12147807.pdf.

[22] Ibid.

[23] Ibid.

[24] Article 31 of Trademark Law (Draft)

[25] John Walker and sons v U Than Shwe (1968, Myanmar Law Reports (C.C) p.73).

[26] http://www.aseanipa.org/index.php/members/thailand1/560-ip-guides-for-myanmar.

[27] 1949 B.L.R (HC) p.41.

[28] Ibid.

[29] Section. 482 of Penal Code.

[30] Section 483 of Penal Code.

[31] Section 485 of Penal Code.

[32] Section 486 of Penal Code.

[33] www.inta.org/TMR/Documents/Volume%2095/vol95-no6-a8.pdf.

[34] 1975, B.L.R (C.C) 72.

[35] U Tin Latt(a) U Sai Latt and others v U Kyaw Nyein 2001, B.L.R(cc) 216.

[36] www.inta.org/TMR/Documents/Volume%2095/vol95-no6-a8.pdf.

[37] Section 6 of the Merchandise Marks Act.

[38] Section 7 of the Merchandise Marks Act.

[39] http://www.wipo.int/ip-development/en/pdf/asean/myanmar.pdf.

[40] Section 27(a) of Private Industrial Enterprise Law.

[41] U than Maung (Sittawe), Legal Articles on Intellectual Property Rights, 3th edition , Myanmar, Wisdom House, pg-318.

[42]https://eurocham-myanmar.org/post/27/Trademark-Protection-in-Myanmar-and-the-New-Draft-Trade-Mark-Law.

[43] Article 20(a) of Trademark Law (Draft).

[44] Article 20(b) of Trademark Law (Draft).

[45] Article 13 (a) of Trademark Law (Draft).

[46] Article 14 of Trademark Law (Draft).

[47] Article 20 of Trademark Law (Draft).

[48] Article 22 of Trademark Law (Draft).

[49] Article 23 of Trademark Law (Draft).

[50] Article 24 of Trademark Law (Draft).

[51]Seciton 25 (b) of Trademark Law (Draft).

[52] Section 25(c).

[53] Section 25 (a).

[54]http://www.southeastasiaiprhelpdesk.eu/sites/default/files/publications/How_to_record_TM_ with_customs.pdf

[55] Ibid.

[56] Ibid.

[57]http://www.worldtrademarkreview.com/Magazine/Issue/55/Features/Protection-for-well-known-marks-in-Myanmar.

[58]http://www.worldtrademarkreview.com/Magazine/issue/55/Features/Proteciton-for-well-known-marks-in-Myanmar.

[59] http://www.wipo.int/sme/en/ip_business/collective_marks/geographical_indications.htm.

[60] Section 51 of Trademark Law (Draft).

[61] http://iipi.org/wp-content/uploads/2012/05/Study-on-Specialized-IPR-Courts.pdf.

[62] http://www.wipo.int/sme/en/ip_business/marks/well_known_marks.htm.

[63] http://www.wipo.int/sme/en/ip_business/marks/well_known_marks.htm

[64] http://iipi.org/wp-content/uploads/2012/05/Study-on-Specialized-IPR-Courts.pdf.

[65] Ibid.

[66][66] Section 75 of Trademark Law (Bill).

[67] http://iipi.org/wp-content/uploads/2012/05/Study-on-Specialized-IPR-Courts.pdf.

[68] Section 88 of Trademark Draft Law.

[69] Section 75(b) of Trademark Law (Bill).

[70] https://www.aseanbriefing.com/news/2016/05/23/understanding-thai-trademark-law.html.

[71] Section 4 of Thailand Trademark Act (No.3) Act B.E. 2559 Act B.E, 2559 (2016).

[72] Section 5 of Trademark Act (No.3) Act B.E. 2559 Act B.E, 2559 (2016).

[73] Section 4 of the Trademark Law (Draft).

[74] Section 6 of Trademark Act (No.3) Act B.E. 2559 Act B.E, 2559 (2016).

[75] Section 11 of India Trademark Act, 1999.

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