PUBLICATION

Appeal against an order of forfeiture of goods
          When a forfeiture is directed on a conviction, and an appeal lies against the conviction, an appeal shall lie against the forfeiture also. When a forfeiture is directed on acquittal and the goods or things to which the direction relates are of value exceeding fifty kyats, an appeal against the forfeiture may be preferred, within thirty days from the date of direction to the court to which in appealable cases appeals lie from sentences of the court which directed the forfeiture.

Limitation for prosecution
          Normally there is no limitation in criminal prosecution. But Section 15 of the Myanmar Merchandise Marks Act provides limitation for criminal prosecution which reads as follows:

         "No such prosecution as is mentioned in the last foregoing section shall be commenced after the expiration of three years next after the Commission of the offence, or one year after the first discovery thereof by the prosecutor, which ever expiration first happens. "

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

Criminal action cases
Though an aggrieved trademark proprietor has two courses of
action against violation of his trademark right, namely civil action and criminal action, in practice remedies offered by civil courts are a far better way of protecting trademarks than prosecuting in criminal courts. Thus more civil cases are brought than criminal cases. In our country only three criminal cases have been reported since 1940 to date. Amongst them, two cases were concerned with Section 483 of the Myanmar Penal Code and the other concerned with Sections 482 and
486 of the Myanmar Penal Code. They,were decided in 1939,1950 and 1962.

CHAPTER VII

The Myanmar Sea Customs Act


Goods which shall not be ,brought into Myanmar
          The Sea Customs Act is also important in connection with Trade mark rights.Section 18 of the Sea Customs Act (Myanmar Code, Volume III, pages 258 and 159 ) reads as follows:
"18. No goods specified in the following clauses shall be brought, whether by land or sea, into the Union ofMyanmar:
* * *
(d) goods having applied thereto a counterfeit trade-mark within the meaning of the Myanmar Penal Code, or a false tradedescription within the meaning of the Myanmar Merchandise Marks Act:
(e) goods made or produced beyond the limits of the United Kingdom, India or Pakistan and the Union of Myanmar and having applied thereto any name or trade-mark being ,or purporting to be, the name or trade-mark of any person who is a manufacturer, dealer or trader in the United Kingdom, in India or Pakistan or in the Union of Myanmar unless
(i) the name or trade-mark is, as to every application thereof, accompanied by a definite indication of the goods having been made or produced in a place beyond the limits of the United Kingdom, India or Pakistan and the Union of Myanmar; and
(ii) the country in which that place is situated is in that indication indicated in letters as large and conspicuous as any letter in the name or trade-mark ,and in the same language and character as the name or trade-fmark:

CHAPTER VIII

Trademark Protection through Administrative action

Administrative action
          As Myanmar does not have a Trademark Registration Act ,no Trademark Registration office exists. Under these circumstances, protection of Trademark under administrative action is not available in Myanmar as yet.

Consumer Protection does not exit in Myanmar
          Myanmar existing laws (as already mentioned above) provide remedies to aggrieved trademark proprietors only. Consumers are not entitled to sue or to be represented in legal proceedings concerning trademark. There is no legal provision for the protection of consumer as yet. As we have already noted, legal provisions for the protection concerning trademark are primarily directed to the protection of proprietary rights. Consumers are protected against deception only as an incidental function of the trademark law and the protection is far from complete.

CHAPTER IX

Principles of the Law Courts regarding Trademark Matters

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

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

Rights of a Trademark may be acquired by use
           It was firmly established that a trader acquired a right of property in a distinctive mark merely by using it upon or in connection with his goods irrespective of the length of such user and of the extent of his trade 2.

          In Myanmar there is no system of registration of trademarks, nor a statutory title to a trademark. So the rights of parties setting up rival claims to the ownership of a trademark must be determined in accordance with the principles of common law. At common law the use of a trade name or mark which has been adopted by another is actionable only if it tends to mislead by making it appear that the goods sold under it are the goods of that another 10.

          Rights of property may be acquired in a trademark on the proved association in the market of the device, name, sign, symbol or other means in question with the goods of the plaintiff. Use of the same by the defendant, whether intentional or otherwise, will amount to false represenatlon 5.
It is settled law that in Myanmar there is no method by which a trademark may be registered but property in or right in respect of a mark may be acquired by user 4.

A Trade name cannot be claimed for exclusive use under certain circumstances
          Where the plaintiff's name is habitually used along with the trade name of his goods, it is difficult to establish that the trade name has, by itself, become distinctive of his goods. A trademark or name which is primarily descriptive of an article or its composition or its mode of manufacture, must remain open to the trade and cannot be claimed for exclusive use by anyone trader 11 .

Geographical name
          Geographical names which are so disconnected from the origin of goods that they are not indicative ofthe place of manufacture, are in fact distinctive names and may be allowed even on evidence of small use. On the other hand, names such as" German Silver ","Portland Cement" and" Indian Ink" are accepted by common usage as devoid of any geographical meaning and they are, therefore, merely descriptive of the goods 12.

Nature of exclusive right
          The right which a manufacturer has in his trademark is the exclusive right to use it for the purpose of indicating where, or by whom or at what manufactory, the article to which it is affixed was manufactured. As soon, therefore as a trademark has been so employed in the market as to indicate to purchasers that the goods to which it is attached are the manufacture of a particular firm, it becomes, to that extent, the exclusive property of the firm and no one else has a right to copy it, or even to appropriate any part of it, if by such appropriation unwary purchasers may be induced to believe that they are getting goods which were made by the firm to whom the trademark belongs 13.

Sole right of Trademark use for all classes of goods does not exist
          It is settled law that a person does not acquire a monopoly in the use of any trade name irrespective of any kind or class of goods in as much as there is no such thing as a monopoly of a property in the nature of copyright or patent. An owner of a trademark in respect of a particular commodity has no right to prohibit or prevent other persons from the use of such mark in connection with goods of a totally different character 8.

Indication of ownership
          A trademark need not indicate to the public the actual ownership of the goods in question. A trademark merely guarantees to the purchaser that the goods on which the mark is applied emanate from the same source of trade as the goods that had hitherto borne the same trademark. It is not necessary for the public to know the specific source of the article or the name of the manufacturer 13.

Appropriation of a Trademark
          A trademark, being in the nature of property, cannot be appropriated by anyone without the permission of its owner. If a person appropriates it, he will be committing an actionable wrong whether he does it honestly or fraudulently 8.

Trademarks are transferable and inheritable
          As the manufacturer has sole right to the ownership of the trademark, he has the right to transfer it to. some other person. The heirs of the manufacturer has the right to own and use the trademark. Hence on the death of the original owner, his sons and daughters have the right to use it. Such right is owned by the heirs in equal portion. 14

Trademark Ownership
          By mere registration of a trademark, the person who registers can not become the owner of that trademark. But by using the said mark in own business and when ,many come to know that the said mark is the goods which manufactured by the owner of the said mark5 and then the owner of the mark may obtain the exclusive right to use.15

Guiding principles applicable to cases of colourable imitation
          It is desirable to bear in mind that no general rule can be laid down to what is a colourable imitation or not. Each case must be dealt with as it arises, regard being to the circumstances of the particular case.16

          The question is not whether a person looking at the two trade­marks side by side, would be confused. The question is whether the person who sees the proposed trademark in the absence of the other trademark, and in view only of his general recollection of what the na­ture of the other trademark was, would be liable to be decided and to think that the trademark before him is the same as the other of which he has a general recollection.16

          It is not necessary in order to constitute a colourable imitation that the two marks concerned should be similar in every particular, but it will be sufficient in law to constitute a colourable imitation, if there exists such similarity between the two marks, which could, in the circum­stances of a particular case, be considered to be calculated to deceive the class of persons for whom the goods are ordinarily or primarily in­tended.16

          No trader has the right to use that trademark so nearly resembling that of another trader as to be calculated to mislead in cautions purchasers.6


Guiding principles applicable to cases of counterfeiting Trademark
          In the case of counterfeiting a trademark it is not necessary that the two trademarks concerned must be similar in all particulars. In comparing the. two trademarks, if it is found that there are similarities between the two, it amounts to counterfeidng although there are slight differences between them. 17
          MYINT LWIN LAW OFFICE is one of the law firms in Myanmar with a well established reputation in the area of Intellectual Property Law including Trademark. The firm was founded in 1994.
          With trademark advocate, legal assistance working in Yangon office, the firm has extensive experiences in providing highly efficient services to demestic and international client in obtaining, maintaining intellectual property applications and trademark registrations in Myanmar.
We work closely with other professional firms in Asia, United States and Europe.
          The firm is also engaged in areas of maritime law, litigation, foreign investment, joint ventures, corporate and commerical law, banking, finance and real estate. U Myint Lwin, founder, is a member of AIPPI (Internation Association for the Protection of Industrial Property), INTA (International Trademark Association), PTMG (Pharmaceutical Trade Marks Group), FICPI (Federation International des Conseils en Propriete Industrielle), ASEAN IPA (Asean Intellectual Property Association), AIPLA (American Intellectual Property Law Association), IPBA (International Pacific Bar Association).
(Council member - 2000-2006);

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10. The Tajmahal Stationery Mart v. K.E. Mohamed Ebrahim V.S. Aliar & Co. 1950, Burma Law Reports (High Court) p.41
11.Daw Thet P v. Saya Khin 1952, Burma Law Reports (High Court) p.245
12. Ko Maung Ngwe v. Mr. B. Lall 1962, Burma Law Reports (Chief Court) p.93
13. T.C. Mohamed v. A. Kunjalam and two others 1951, Burma Law Reports (S.C) p.98
14. Ma Than & two others v. U Chit Swe 1961, Burma Law Reports (Supreme Court) p.136
15. Aung Gwan Choon (a) Aung Choon & one v. B.Y.C Soap Factory 1966, B.L.R. p.1038
16. Gaw Shan Soot v. E. C. Madha Brothers 1952, Burma Law Reports (H.C) p.136
17. U Maung Maung (a) Ali Bhai v. Daw Khin Than Myint 1975, B.L.R. (C.C) p.72
9. T.M. Mohamed Cassim v. G.S.T. Shaik Thumby Sahib, 1940, Rangoon Law Reports p.244

 

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