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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.
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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
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