PUBLICATION

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 it had 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 trade
mark 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. "

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2. Gaw Kan Lye & Saw Kyone Saing 1939, Rangoon Law Reports p.503
8. John Walker & Sons Ltd. v. U Than Shwe 1968, Burma Law Reports (Chief Court) p.73
 

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