PUBLICATION

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 thereof

Under 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.

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5. K.E. MOhamed Ebrahim and another v. The Tajmahal Stationery Mart
6. C.M.Brothers v. A.Kunjalan and two others. 1950, Burma Law Reports (High Court) p.262
2. Gaw Kan Lye & Saw Kyone Saing 1939, Rangoon Law Reports p.503
7. B. M. Kharwar v. A. M. Motiwala Ltd. 1939, Rangoon Law Reports p.18

 

2008 by U MYINT LWIN LAW OFFICES IN MYANAMR. Prepared by DPS. Last Modified: Oct.1.2013 by MPPL.