အခုတေလာကမူပိုင္ခြင့္ေတြႏွင့္ ပတ္သက္ၿပီးအျငင္းပြားေနတဲ့ ျပႆနာေတြအတြက္ ကိုးကားလို႔ရေအာင္ trademark and patent link ေတြကိုရွာလို႔ရတာေလးေတြတင္ေပးလိုက္ပါတယ္....
Apple ႏွင့္ Sumsaung ေတြေတာင္ သူေနရာႏွင့္သူ ႏိုင္ငံေတြရဲ႕ဥပေဒေတြမတူညီတာေၾကာင့္ တရားစြဲရင္ ႏိုင္ခ်င္မွလဲႏိုင္က်ပါတယ္၊ျမန္မာႏိုင္ငံမွာတရားစြဲရင္ေတာ့ ဘယ္လိုလာမလဲမသိေသးပါဘူး! ကၽႊန္ေတာ္တို႔ဗီဒီယိုေခြေတြထုတ္တုန္းက ေတာ့ လိုက္ဖမ္းၿပီး ဒဏ္ေဆာင္းခိုင္းတာဘဲရွိဖူးခဲ့ပါတယ္၊ တရားတေဘာင္ အႀကီးက်ယ္မလုပ္ဖူးလို႔ဘာမွမသိပါဘူး!
ဒါေပမဲ့ေခတ္ကေျပာင္းလဲေနၿပီဆိုေတာ့ အခုလဲလြန္ခဲ့တဲ့ (၇)ႏွစ္ေလာက္ ႏိုင္ငံတကာက နာမည္ႀကီးတဲ့တံဆိပ္တခုကို ကိုယ္စားလွယ္ယူထားမိေတာ့ သူတို႔ကျမန္မာျပည္အတြက္ trademark ခ်က္ခ်င္းယူထားလိုက္တာကိုေတြ႔ဖူးပါတယ္၊ လုပ္ငန္းရွင္ေတြ မဟုတ္က်ရင္ ဒီမူပိုင္အခြင့္အေရးေတြ ကိုေတာ္ေတာ္ႏွင့္ လူေတြသိက်မယ္မထင္ပါဘူး!
အဓိက စာေရးဆရာ၊ ေတးေရးေတးဆို သမားေတြေလာက္ဘဲ သိက်မွာပါေလ! ဒါေတြကမိမိရဲ႕ အက်ိဳးခံစားခြင့္ေလး ေတြပါ၊ ဒါေပမဲ့ ျမန္မာျပည္မွာေတာ့ ဥပေဒဆိုတာဘယ္ကိုေရာက္ေနၿပီလဲ မသိရေလာက္ ေအာင္ပါဘဲ! တရားတေဘာင္အျဖစ္မေရာက္ရွိက်တာက ဘာလိုေျပာရမလဲ မသိေအာင္ပါဘဲ! ေကာ္ပီရိုက္လုပ္စား ေနတာကိုက ပံုမွန္အလုပ္ေတြလိုျဖစ္ေနပါတယ္၊ IT ႏွင့္ပတ္သက္တဲ့ ေဆာ့လ္၀ဲေခြေတြ အစ အဆိုးဆံုးက ျမန္မာဗီဒီေခြေတြ အဆံုးျဖစ္ေနက်ေတာ့ မူပုိင္ထုတ္လုပ္သူေတြႏွင့္ အဆိုေက်ာ္ေတြ ဆိုရင္ လမ္းေဘးဆိုင္ ေတြကိုေရာက္ေနတာၾကည့္လိုက္ရင္ ရင္ႏွာစရာေတြပါဘဲ! ကိုယ္သူငယ္ခ်င္း အဆိုေတာ္ေတြ ေတာ္ေတာ္ မ်ားမ်ားလဲပါတယ္ေလ! ေခတ္ပ်က္ႀကီးက ိုေရာက္ေနက် တယ္ေလ (IT နည္းပညာထြန္းကားလာတာကိုက ေကာင္းတာေတြရသလို မေကာင္းတဲ့အခ်က္ေတြပါဘဲ)
Apple ႏွင့္ Sumsaung ေတြေတာင္ သူေနရာႏွင့္သူ ႏိုင္ငံေတြရဲ႕ဥပေဒေတြမတူညီတာေၾကာင့္ တရားစြဲရင္ ႏိုင္ခ်င္မွလဲႏိုင္က်ပါတယ္၊ျမန္မာႏိုင္ငံမွာတရားစြဲရင္ေတာ့ ဘယ္လိုလာမလဲမသိေသးပါဘူး! ကၽႊန္ေတာ္တို႔ဗီဒီယိုေခြေတြထုတ္တုန္းက ေတာ့ လိုက္ဖမ္းၿပီး ဒဏ္ေဆာင္းခိုင္းတာဘဲရွိဖူးခဲ့ပါတယ္၊ တရားတေဘာင္ အႀကီးက်ယ္မလုပ္ဖူးလို႔ဘာမွမသိပါဘူး!
ဒါေပမဲ့ေခတ္ကေျပာင္းလဲေနၿပီဆိုေတာ့ အခုလဲလြန္ခဲ့တဲ့ (၇)ႏွစ္ေလာက္ ႏိုင္ငံတကာက နာမည္ႀကီးတဲ့တံဆိပ္တခုကို ကိုယ္စားလွယ္ယူထားမိေတာ့ သူတို႔ကျမန္မာျပည္အတြက္ trademark ခ်က္ခ်င္းယူထားလိုက္တာကိုေတြ႔ဖူးပါတယ္၊ လုပ္ငန္းရွင္ေတြ မဟုတ္က်ရင္ ဒီမူပိုင္အခြင့္အေရးေတြ ကိုေတာ္ေတာ္ႏွင့္ လူေတြသိက်မယ္မထင္ပါဘူး!
အဓိက စာေရးဆရာ၊ ေတးေရးေတးဆို သမားေတြေလာက္ဘဲ သိက်မွာပါေလ! ဒါေတြကမိမိရဲ႕ အက်ိဳးခံစားခြင့္ေလး ေတြပါ၊ ဒါေပမဲ့ ျမန္မာျပည္မွာေတာ့ ဥပေဒဆိုတာဘယ္ကိုေရာက္ေနၿပီလဲ မသိရေလာက္ ေအာင္ပါဘဲ! တရားတေဘာင္အျဖစ္မေရာက္ရွိက်တာက ဘာလိုေျပာရမလဲ မသိေအာင္ပါဘဲ! ေကာ္ပီရိုက္လုပ္စား ေနတာကိုက ပံုမွန္အလုပ္ေတြလိုျဖစ္ေနပါတယ္၊ IT ႏွင့္ပတ္သက္တဲ့ ေဆာ့လ္၀ဲေခြေတြ အစ အဆိုးဆံုးက ျမန္မာဗီဒီေခြေတြ အဆံုးျဖစ္ေနက်ေတာ့ မူပုိင္ထုတ္လုပ္သူေတြႏွင့္ အဆိုေက်ာ္ေတြ ဆိုရင္ လမ္းေဘးဆိုင္ ေတြကိုေရာက္ေနတာၾကည့္လိုက္ရင္ ရင္ႏွာစရာေတြပါဘဲ! ကိုယ္သူငယ္ခ်င္း အဆိုေတာ္ေတြ ေတာ္ေတာ္ မ်ားမ်ားလဲပါတယ္ေလ! ေခတ္ပ်က္ႀကီးက ိုေရာက္ေနက် တယ္ေလ (IT နည္းပညာထြန္းကားလာတာကိုက ေကာင္းတာေတြရသလို မေကာင္းတဲ့အခ်က္ေတြပါဘဲ)
Design
There is no practical position of protecting patents and design per se in Myanmar although there has been the Science and Technology Development Law since 1994. The Ministry of Science and Technology was newly established in Myanmar as the focal point ministry, but, till now, there has not yet been Myanmar Patent Office.
At the present, the Office of the Attorney-General is drafting the bills on the IP laws in compliance with the TRIPS Agreement due to the fact that Myanmar is a member of WTO, ASEAN, and at the latest, WIPO in 2001.
In this interim period, design may be registered under section 18(f) of the Registration Act. A design may be registered with the Registry of Deeds and Assurances by means of declaration which is a solemn statement of facts made by the patent owner. Publication of cautionary notice in a local designated newspaper based on registration is the sole process to remind the public for any possible passing-off and infringement of the right of design ownership during the period of lack of promulgated law, rules and regulations involved.
| Patent and Trademark Law and Practice in Myanmar | ||
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Myanmar trademark and patent law(21 texts)
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The Role of Trademarks in Myanmar:
A Glance at the Trademark Registration System of Myanmar
Introduction
In this highly competitive era, Intellectual Property (“IP”) becomes one of the engines that influences and drives the national economy. Being one of the commercial ironies, legal monopoly characterizing ownership of Intellectual Property is typically a statutory right in the commercial practices. Intellectual Property Rights (“IPRs”) such as copyright and related rights, trademarks, geographical indications, patents, layout-designs of integrated circuits and industrial designs are protected. The protection of IPRs is meant for the following purposes:
1.To encourage and reward creative works;
2.To provide incentive for technological innovations;
3.To stimulate and ensure fair competition among producers;
4.To protect consumers by enabling them to make informed choices between various goods and services; and
5.To facilitate the transfer of technology in the form of foreign direct investment, joint ventures and licensing.
Under art 15.1 of the Trade Related Aspects of Intellectual Property Rights (“TRIPS”) Agreement of the World Trade Organization (“WTO”), “trademark” is defined as “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 trademark protection”. These signs could be words including personal names, letters, numerals, figurative elements and combination of colors as well as any combination of signs. There is no limitation on the type of signs that can constitute trademarks. The emphasis is on distinctiveness. While typically most trademarks are word marks or logos, there have also been registrations of shapes and colors and some countries have allowed the registration of sounds and, more recently, smells.
Furthermore, art 16.1 of the TRIPS Agreement provides that “the owner of a registered trademark shall have the exclusive right to prevent all third parties not having the owner’s consent from using in the course of trade identical or similar signs for goods or services identical or similar to these in respect of which the trademark is registered where such use would result in a likelihood of confusion”.
The trademark registration system is necessary to protect producers from unfair competition from other producers seeking to free ride on the goodwill earned by the trademark owner. Trademarks, therefore, help consumers to reliably identify and purchase a product or service which they prefer because of its nature, quality or other characteristic that consumers have come to expect on the basis of previous purchases or advertising. Hence, trademarks protect an undertaking as well as the consumers against confusion and deceptive practices.
International and Regional Efforts towards IPRs
With the goal to reduce distortions and impediments to international trade, to promote effective and adequate protection of IPRs, and to ensure that measures and procedures to enforce IPRs do not themselves become barriers to legitimate trade, the Agreement on TRIPS becomes an Annex 1 C of the WTO Agreement of 15 April 1994, which is entered into force on 1 January 1995.1 The TRIPS Agreement is an integral Part of the WTO Agreement,2 and is binding on each member of the WTO from the date the WTO Agreement becomes effective for it. However, it gave original members transitional periods which differ according to their stages of development, to bring themselves into compliance with its rules.
To facilitate the implementation of the TRIPS Agreement, the WTO concluded with WIPO an agreement (“Agreement”) on co-operation between the two organisations in 1994, which came into force on 1 January 1996. The Agreement provides for co-operation in three main areas, namely: (i) notification of, access to and translation of national laws and regulations; (ii) implementation of procedures for the protection of national emblems; and (iii) technical co-operation.
Similarly, the Association of Southeast Asian Nations (“ASEAN”) is fully aware of the crucial role of IP and IPRs in social, economic and technological progress, and hence in broad-based development and poverty reduction within the region. The ASEAN Framework Agreement on Intellectual Property Cooperation was signed in Thailand on 15 December 1995 and the ASEAN IPR Action Plan 2004-2010 was designed to build on the progress which has been achieved in collaboration among ASEAN governments, ASEAN dialogue partner countries and institutions, and civil society organisations.
There are several successful outcomes. One of these outcomes is that the Experts Group on Trademark has finalized the ASEAN Filing Form for Trademarks and the Notes for the Completion of the Application.3 Despite its inherent complexities, member countries have continued their efforts in the harmonization of the trademark filing requirements. This is a process of significant importance towards the establishment of a regional filing system.
Member countries have also made substantive progress in ensuring the conformance of their IP legislations to the TRIPS Agreement. Concerted efforts have also been made to better monitor, enforce and prosecute IPR infringements. ASEAN continues its active co-operation in the IP sector with the Dialogue Partners, donor countries and agencies and private sector organisations.4
Current Status of IPRs in Myanmar
The legal system of Myanmar isaunique one because it is based on the Common Law Legal System and various customary laws of the land. Several Laws were enacted during the colonial period in the early 19th century, including the Copyright Act and Myanmar Patents and Design (Emergency Provision Act) for the protection of IPRs. At present, among the existing relevant laws that can be enforced on IPRs are the laws dealing with both criminal and civil action which are as follows:
•The Code of Civil Procedure (1808)
•The Myanmar Penal Code of 1860 (Indian Act XLV. 1860)
•The Myanmar Merchandise Marks Act (1889)
•The Code of Criminal Procedure (1898)
•The Registration Act No. 16 of 1908 on basic registration system for trade marks (1908)
•The Copyright Act of 1911 (1914)
•The Land Customs Act (1924)
•The Specific Relief Act 1877, as last amended up to Act No. 3 of 1954 (1958)
•The Sea Customs Act No. 8 of 1878, as amended up to Act 1962 (1962)
•The National Drug Law No. 7 of October 30, 1992 (1992)
•Science and Technology Development Law No. 5 of June 7, 1994 (1994)
•The Computer Science Development Law No. 10 of September 20, 1996 (1996)
•The Traditional Drug Law No. 7 of July 7, 1996 (1996)
•The Television and Video Law No. 8 of 1996 (1996)
•The National Food Law, No. 5 of March 3, 1997 (1997)
•The Protection and Preservation of Cultural Heritage Regions Law No. 9 of September 10, 1998 (1998)
•Electronic Transactions Laws (2004)
The Republic of the Union of Myanmar, being a founding member of the WTO, became an ipso factomember of the TRIPS Agreement. Likewise, Myanmar is a Member of WIPO and ASEAN. Being a member state, Myanmar is now endeavoring in drafting IP Laws in accordance with the TRIPS Agreement by the Office of the Attorney-General with the co-operation of the ministries concerned and experts from various sectors and thus, the new IPRs Laws will be promulgated in the near future. It is also a transition period to set up IP Offices in Myanmar.
Under the WIPO and WTO Joint Initiative on Technical Cooperation for Least-Developed Countries,5 WIPO not only offered Myanmar IP Lawyers passage to Geneva for discussion on the IP related laws but also sent an expert mission for IP legislative advices on the drafted Myanmar IP laws. To date, six IP related Seminars were already held in Myanmar as follows:
1.WIPO National Seminar on Trademark and Franchising (March 2011).
2.WIPO National Seminar on Intellectual Property (May 2010).
3.WIPO National Seminar on the Role of the Copyright System in Promoting the Publishing Industry (Sep 1 to Sep 3, 2008).
4.National Seminar on Copyright and Related Rights in the Creative Industries (May 16 to May 17, 2006).
5.WIPO National Workshop on the Implementation of the Agreement on Trade-Related Aspects of Intellectual Property Rights (the TRIPS Agreement) (Jun 28 to Jun 29, 2004).
6.WIPO National Seminar on Intellectual Property (Oct 22 to Oct 23, 1997).
The Role of Trademarks in Myanmar
It can be said that there is still neither particular statute nor law on trademark nor specific provision regarding registration of trademark in Myanmar today. However, the Penal Code6 defines trademark as “A mark used for denoting that goods are the manufacture on merchandise of a particular person”. Likewise, the Private Industrial Enterprise Law provides that “the business is not allowed to distribute or sell his goods without trademark”. Trademarks may be registered under the s 18(f) of the Registration Act, by means of a declaration of each trade mark but trademark registration is not compulsory.
Although the mere fact of registration is not conclusive proof of the ownership or user of the trademark, it may be prima-facieevidence of ownership or user and the ability to produce a registered document may be of some help in a criminal or civil proceeding. The term “prior in use” prevails the registration status according to the case Law of Myanmar. Therefore, in order to obtain exclusive right of the trademark owner and protect their trademark rights, specific trademark registration system is needed in practice as one of the current issues in Myanmar.
The Trademark Registration System of Myanmar
A trademark or service mark can be registered at the Township Offices of the Settlements and Land Records Department under the Ministry of Agriculture and Irrigation throughout Myanmar. Generally, it is based on the place of origin of a product. For example, if a product is produced in Thanlyin Township of Yangon Region, trademark registration should be taken place at Thanlyin Township Office of Yangon Region. However, in such a case that this trademark owner registers a trademark in another township, the Registry Officer shall make an enquiry to the place of origin of that product in order to make sure that there is no objection on this trademark registration and is not used for counterfeiting activities.
For an applicant to be eligibleto apply for a trademark or service mark, the applicant must satisfy the following requirements: an applicant and/or agent should be a Myanmar nationality; an applicant must be an inventor or a juridical person with contact address within the Republic of the Union of Myanmar; and foreign trademark owners can also apply through its Myanmar agent. Therefore, a foreign trademark owner must appoint an agent to act on behalf of him by means of a Special Power of Attorney.
The documents that are to be submitted for filing an application for the trademark registration are the:
1.Declaration of Ownership of Trademark (“DOT”) executed by the applicant (for new trademark); and
2.any Declaration which was previously registered in Myanmar prior to this registration.
These documents must be attached with copies of Special Power of Attorney executed by the applicant. The registration process can take place from one day (if documents are in order) to a month (if there are additional requirements). The declaration shall contain the name of the company, individual or firm represented in a special or particular manner and the signature of the applicant for registration. A trademark should have one or more created words and may be registered in respect of particular goods or classes of goods.
Registry officers can refuse the application for registration 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. Application for registration should also be refused where, for example, if the document is used as an instrument of fraud or is obscure. Imitation of a currency note should also be refused for registration.
The Registration is usually followed by an advertisement or announcement in the daily newspaper, usually stating that any fraudulent limitation or unauthorised use of or infringement of the said trademark shall be dealt with accordingly.Figure 1: An Example of Cautionary Notice
(in English)
Validity period of trademark registration is not prescribed by existing Myanmar laws. However, as per current well-established practice, a trademark is to be renewed in one of these three options:
1.By re-registration once every three years after first registration; or
2.By republication once every three years after first publication; or
3.By the way of both re-registration and re-publication aiming at preventing against the possible infringers and showing his constant interest upon the mark.
Besides, if there were any material changes such as proprietor’s name, device, address or covered goods or services to the registered mark, it used to be registered as a fresh trademark
.
Trademark search is a preliminary status of the trademark registration process. In Myanmar, however, an official trademark search facility has not been established yet. The proposed trademark owner conducts a private search, mostly in newspapers. Assignment of the trademark rights from original proprietor as an assignment to another person as an assignee could be lawfully done under s 18 (d) of the Registration Act.
Settlement on Infringement Cases
There are isolated provisions in various statutes, which are related to trademark. Currently, IPRs infringement cases are handled by the Township/District/State or Regional Courts and the Supreme Court. Disputations are amicably solved by negotiations or conciliations and with the intervention of a third party which may sometimes take place.
Under the Specific Relief Act, any person entitled to any rights as to any property, including intellectual property, may institute a suit against any person denying, or interested to deny, his title to such right. The Court may in its discretion make therein, a declaration that he is so entitled. In addition, the plaintiff, under the said Act, may also claim a decree for a perpetual injunction.
An action for infringement of the trademark is maintained by means of a civil suit under the “Specific Relief Act” that authorises the Court of Law to grant a perpetual injunction against the infringer. In addition to the civil litigation, counterfeiting a trademark and selling goods with counterfeit trademark are punishable criminal action under the Penal Code. Punishments range from fine to three years imprisonment added with a court order of seizure and destruction of infringing articles and goods. Further, the Penal Code enforcement actions of trademark infringement cases are handled by the Myanmar Merchandise Act and the Sea Customs Act respectively. The Myanmar Merchandise Marks Act supplements relevant provision in the Penal Code which prescribes penalty for applying a false trade description. In particular, penalties for selling goods to which a false trade description is applied and unintentional contravention of the law relating to marks and descriptions are prescribed in ss 7 and 8, respectively. Section 15 of the said Act provides that no prosecution shall commence after the expiration of three years next after the commission of the offence, or one year after the first discovery thereof by the prosecutor, whichever expiration first happens. The “Sea Customs Act” prohibits export or import by land or sea of goods having applied a counterfeit trademark.
In the settlement of disputes relating to IP infringements, the Civil Procedure Code plays an important role in Myanmar. Under the said Code, there are some effective procedures for the right decision and speedy disposal of the suits. Under the Civil Procedure Code, every allegation of fact in the plaint, if it is not denied specifically or by necessary implication, or stated not to be admitted, in the written statement of the defendant, shall be deemed to be admitted, except as against a person under disability.
Conclusion
The legal environment plays a crucial role on a macro level for the implementation of the TRIPS Agreement and protection of IPRs. In the developing and least-developed countries, it is generally not easy in practice to implement the minimum standards of the TRIPS Agreement in the national legislation. In this regard, experience and expertise as well as technical assistance are essential. As a signatory member of International Agreements and Treatises, Myanmar needs to enhance its IP regime by promulgating and implementing the IP Laws in accordance with the TRIPS Agreement to develop national economy and then, comply with the transparency obligation by notifying its laws and regulations according to art 63.2 of the TRIPS Agreement. At the same time, it is important to subject these laws, rules and regulations for periodic review in order to improve and align them in accordance with the needs of Myanmar in a rapidly changing global trend.
With a longer transition period for LDCs, Myanmar should take this opportunity to enhance technical co-operation, capacity building and education for its competent authorities through the co-operation of developed country members, international organisations such as the WTO, WIPO and regional organisations such as ASEAN.
Finally, with the provision of the technical and logistical assistance from the WTO, WIPO and other relevant international and regional organisations in the drafting process of IP legislative instrument, it is expected that IP laws would be promulgated soon in compliance with current international legal norms and principles in every aspect while keeping yet its own characteristics of Myanmar’s legal system.
► Shwe Zin Ko
Directorate of Trade
Ministry of Commerce
Myanmar
E-mail: shiroiyurn@gmail.com
References
1Agreement on Trade-related Aspects of Intellectual Property Rights. Annex 1 C. Retrieved August 24, 2011, from http://www.wto.org/english/docs_e/legal_e/legal_e.htm#TRIPs
2Hairani Saban Hardjoe. Class lectures of Intellectual Property – Systems, Governance & Management. 13-17 June 2011. Yangon, Myanmar
3Kyay Hmone Daily Newspaper.
4Professor Kyi Thwin, Ministry of Science and Technology. Retrieved August 24 2011, fromhttp://www.wipo.int/edocs/mdocs/aspac/en/wipo_inn_tyo_09/wipo_inn_tyo_09_ref_myanmar.pdf
5The Association of Southeast Asian Nations. Retrieved August 24 2011, from http://www.asean.org/19084.htm
6World Intellectual Property Organization. Retrieved August 23 2011, from http://www.wipo.int/treaties/en/Remarks.jsp?cnty_id=111C
7World Intellectual Property Organization. Retrieved August 24 2011, from http://www.wipo.int/wipolex/en/details.jsp?id=6180
8World Intellectual Property Organization. Retrieved August 25 2011, from http://www.wipo.int/wipolex/en/details.jsp?id=6176
9World Trade Organization. Course Modules of trade-related aspects of intellectual property rights.
Notes
1 First, the TRIPS Agreement sets the standards by requiring compliance with the substantive obligations of the main conventions of the WIPO, the Paris Convention and the Berne Convention in their most recent versions. With the exception of the provisions of the Berne Convention on moral rights, all the main substantive provisions of these two conventions are incorporated by reference and thus come obligations under the TRIPS Agreement between members.
2 Part I of the TRPS Agreement sets out general provisions and basic principles of the Agreement, such as national treatment and most-favoured-nation treatment, and exhaustion of IPRs. Part II of the Agreement sets out the minimum standards of intellectual property protection to be provided by each Member. It covers trademarks including service marks. Part III of this Agreement deals with domestic procedures and remedies for the enforcement of IPRs. Part IV of the Agreement contains general rules on procedures related to the acquisition and maintenance of IPRs. Part V of the Agreement deals with dispute prevention and settlement. Part VI of the Agreement contains provisions on transitional periods, transfer of technology and technical co-operation. Part VII deals with institutional arrangements and certain cross-cutting matters such as the protection of existing subject matter.
3 Including list of ethnic goods and services, represent important steps forward in the regional co-operation in IP. These achievements, together with the completed ASEAN Common Form and the consolidated ASEAN.
4 Including the ASEAN Intellectual Property Association, the International Trademark Association, Office for Harmonization in the Internal Market (“OHIM”), WIPO, Australia, EU, and Japan Patent Office.
5 The WIPO and WTO Joint Initiative on Technical Cooperation for Least-Developed Countries was launched in 2001 with the aim of helping LDC Members of the WTO comply with their obligations under the TRIPS Agreement and make best use of the intellectual property system for their economic, social and cultural development. It is open to other LDCs as well.
6 The Penal Code of Myanmar also known as Indian Penal Code (Act XLV. 1860, published on 1st May 1861) because the 1860 Indian Penal Code was inherited in Myanmar when Myanmar was part of India.
http://www.lawgazette.com.sg/2012-01/305.htm
A Glance at the Trademark Registration System of Myanmar
Introduction
In this highly competitive era, Intellectual Property (“IP”) becomes one of the engines that influences and drives the national economy. Being one of the commercial ironies, legal monopoly characterizing ownership of Intellectual Property is typically a statutory right in the commercial practices. Intellectual Property Rights (“IPRs”) such as copyright and related rights, trademarks, geographical indications, patents, layout-designs of integrated circuits and industrial designs are protected. The protection of IPRs is meant for the following purposes:
1.To encourage and reward creative works;
2.To provide incentive for technological innovations;
3.To stimulate and ensure fair competition among producers;
4.To protect consumers by enabling them to make informed choices between various goods and services; and
5.To facilitate the transfer of technology in the form of foreign direct investment, joint ventures and licensing.
Under art 15.1 of the Trade Related Aspects of Intellectual Property Rights (“TRIPS”) Agreement of the World Trade Organization (“WTO”), “trademark” is defined as “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 trademark protection”. These signs could be words including personal names, letters, numerals, figurative elements and combination of colors as well as any combination of signs. There is no limitation on the type of signs that can constitute trademarks. The emphasis is on distinctiveness. While typically most trademarks are word marks or logos, there have also been registrations of shapes and colors and some countries have allowed the registration of sounds and, more recently, smells.
Furthermore, art 16.1 of the TRIPS Agreement provides that “the owner of a registered trademark shall have the exclusive right to prevent all third parties not having the owner’s consent from using in the course of trade identical or similar signs for goods or services identical or similar to these in respect of which the trademark is registered where such use would result in a likelihood of confusion”.
The trademark registration system is necessary to protect producers from unfair competition from other producers seeking to free ride on the goodwill earned by the trademark owner. Trademarks, therefore, help consumers to reliably identify and purchase a product or service which they prefer because of its nature, quality or other characteristic that consumers have come to expect on the basis of previous purchases or advertising. Hence, trademarks protect an undertaking as well as the consumers against confusion and deceptive practices.
International and Regional Efforts towards IPRs
With the goal to reduce distortions and impediments to international trade, to promote effective and adequate protection of IPRs, and to ensure that measures and procedures to enforce IPRs do not themselves become barriers to legitimate trade, the Agreement on TRIPS becomes an Annex 1 C of the WTO Agreement of 15 April 1994, which is entered into force on 1 January 1995.1 The TRIPS Agreement is an integral Part of the WTO Agreement,2 and is binding on each member of the WTO from the date the WTO Agreement becomes effective for it. However, it gave original members transitional periods which differ according to their stages of development, to bring themselves into compliance with its rules.
To facilitate the implementation of the TRIPS Agreement, the WTO concluded with WIPO an agreement (“Agreement”) on co-operation between the two organisations in 1994, which came into force on 1 January 1996. The Agreement provides for co-operation in three main areas, namely: (i) notification of, access to and translation of national laws and regulations; (ii) implementation of procedures for the protection of national emblems; and (iii) technical co-operation.
Similarly, the Association of Southeast Asian Nations (“ASEAN”) is fully aware of the crucial role of IP and IPRs in social, economic and technological progress, and hence in broad-based development and poverty reduction within the region. The ASEAN Framework Agreement on Intellectual Property Cooperation was signed in Thailand on 15 December 1995 and the ASEAN IPR Action Plan 2004-2010 was designed to build on the progress which has been achieved in collaboration among ASEAN governments, ASEAN dialogue partner countries and institutions, and civil society organisations.
There are several successful outcomes. One of these outcomes is that the Experts Group on Trademark has finalized the ASEAN Filing Form for Trademarks and the Notes for the Completion of the Application.3 Despite its inherent complexities, member countries have continued their efforts in the harmonization of the trademark filing requirements. This is a process of significant importance towards the establishment of a regional filing system.
Member countries have also made substantive progress in ensuring the conformance of their IP legislations to the TRIPS Agreement. Concerted efforts have also been made to better monitor, enforce and prosecute IPR infringements. ASEAN continues its active co-operation in the IP sector with the Dialogue Partners, donor countries and agencies and private sector organisations.4
Current Status of IPRs in Myanmar
The legal system of Myanmar isaunique one because it is based on the Common Law Legal System and various customary laws of the land. Several Laws were enacted during the colonial period in the early 19th century, including the Copyright Act and Myanmar Patents and Design (Emergency Provision Act) for the protection of IPRs. At present, among the existing relevant laws that can be enforced on IPRs are the laws dealing with both criminal and civil action which are as follows:
•The Code of Civil Procedure (1808)
•The Myanmar Penal Code of 1860 (Indian Act XLV. 1860)
•The Myanmar Merchandise Marks Act (1889)
•The Code of Criminal Procedure (1898)
•The Registration Act No. 16 of 1908 on basic registration system for trade marks (1908)
•The Copyright Act of 1911 (1914)
•The Land Customs Act (1924)
•The Specific Relief Act 1877, as last amended up to Act No. 3 of 1954 (1958)
•The Sea Customs Act No. 8 of 1878, as amended up to Act 1962 (1962)
•The National Drug Law No. 7 of October 30, 1992 (1992)
•Science and Technology Development Law No. 5 of June 7, 1994 (1994)
•The Computer Science Development Law No. 10 of September 20, 1996 (1996)
•The Traditional Drug Law No. 7 of July 7, 1996 (1996)
•The Television and Video Law No. 8 of 1996 (1996)
•The National Food Law, No. 5 of March 3, 1997 (1997)
•The Protection and Preservation of Cultural Heritage Regions Law No. 9 of September 10, 1998 (1998)
•Electronic Transactions Laws (2004)
The Republic of the Union of Myanmar, being a founding member of the WTO, became an ipso factomember of the TRIPS Agreement. Likewise, Myanmar is a Member of WIPO and ASEAN. Being a member state, Myanmar is now endeavoring in drafting IP Laws in accordance with the TRIPS Agreement by the Office of the Attorney-General with the co-operation of the ministries concerned and experts from various sectors and thus, the new IPRs Laws will be promulgated in the near future. It is also a transition period to set up IP Offices in Myanmar.
Under the WIPO and WTO Joint Initiative on Technical Cooperation for Least-Developed Countries,5 WIPO not only offered Myanmar IP Lawyers passage to Geneva for discussion on the IP related laws but also sent an expert mission for IP legislative advices on the drafted Myanmar IP laws. To date, six IP related Seminars were already held in Myanmar as follows:
1.WIPO National Seminar on Trademark and Franchising (March 2011).
2.WIPO National Seminar on Intellectual Property (May 2010).
3.WIPO National Seminar on the Role of the Copyright System in Promoting the Publishing Industry (Sep 1 to Sep 3, 2008).
4.National Seminar on Copyright and Related Rights in the Creative Industries (May 16 to May 17, 2006).
5.WIPO National Workshop on the Implementation of the Agreement on Trade-Related Aspects of Intellectual Property Rights (the TRIPS Agreement) (Jun 28 to Jun 29, 2004).
6.WIPO National Seminar on Intellectual Property (Oct 22 to Oct 23, 1997).
The Role of Trademarks in Myanmar
It can be said that there is still neither particular statute nor law on trademark nor specific provision regarding registration of trademark in Myanmar today. However, the Penal Code6 defines trademark as “A mark used for denoting that goods are the manufacture on merchandise of a particular person”. Likewise, the Private Industrial Enterprise Law provides that “the business is not allowed to distribute or sell his goods without trademark”. Trademarks may be registered under the s 18(f) of the Registration Act, by means of a declaration of each trade mark but trademark registration is not compulsory.
Although the mere fact of registration is not conclusive proof of the ownership or user of the trademark, it may be prima-facieevidence of ownership or user and the ability to produce a registered document may be of some help in a criminal or civil proceeding. The term “prior in use” prevails the registration status according to the case Law of Myanmar. Therefore, in order to obtain exclusive right of the trademark owner and protect their trademark rights, specific trademark registration system is needed in practice as one of the current issues in Myanmar.
The Trademark Registration System of Myanmar
A trademark or service mark can be registered at the Township Offices of the Settlements and Land Records Department under the Ministry of Agriculture and Irrigation throughout Myanmar. Generally, it is based on the place of origin of a product. For example, if a product is produced in Thanlyin Township of Yangon Region, trademark registration should be taken place at Thanlyin Township Office of Yangon Region. However, in such a case that this trademark owner registers a trademark in another township, the Registry Officer shall make an enquiry to the place of origin of that product in order to make sure that there is no objection on this trademark registration and is not used for counterfeiting activities.
For an applicant to be eligibleto apply for a trademark or service mark, the applicant must satisfy the following requirements: an applicant and/or agent should be a Myanmar nationality; an applicant must be an inventor or a juridical person with contact address within the Republic of the Union of Myanmar; and foreign trademark owners can also apply through its Myanmar agent. Therefore, a foreign trademark owner must appoint an agent to act on behalf of him by means of a Special Power of Attorney.
The documents that are to be submitted for filing an application for the trademark registration are the:
1.Declaration of Ownership of Trademark (“DOT”) executed by the applicant (for new trademark); and
2.any Declaration which was previously registered in Myanmar prior to this registration.
These documents must be attached with copies of Special Power of Attorney executed by the applicant. The registration process can take place from one day (if documents are in order) to a month (if there are additional requirements). The declaration shall contain the name of the company, individual or firm represented in a special or particular manner and the signature of the applicant for registration. A trademark should have one or more created words and may be registered in respect of particular goods or classes of goods.
Registry officers can refuse the application for registration 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. Application for registration should also be refused where, for example, if the document is used as an instrument of fraud or is obscure. Imitation of a currency note should also be refused for registration.
The Registration is usually followed by an advertisement or announcement in the daily newspaper, usually stating that any fraudulent limitation or unauthorised use of or infringement of the said trademark shall be dealt with accordingly.Figure 1: An Example of Cautionary Notice
(in English)
Validity period of trademark registration is not prescribed by existing Myanmar laws. However, as per current well-established practice, a trademark is to be renewed in one of these three options:
1.By re-registration once every three years after first registration; or
2.By republication once every three years after first publication; or
3.By the way of both re-registration and re-publication aiming at preventing against the possible infringers and showing his constant interest upon the mark.
Besides, if there were any material changes such as proprietor’s name, device, address or covered goods or services to the registered mark, it used to be registered as a fresh trademark
.
Trademark search is a preliminary status of the trademark registration process. In Myanmar, however, an official trademark search facility has not been established yet. The proposed trademark owner conducts a private search, mostly in newspapers. Assignment of the trademark rights from original proprietor as an assignment to another person as an assignee could be lawfully done under s 18 (d) of the Registration Act.
Settlement on Infringement Cases
There are isolated provisions in various statutes, which are related to trademark. Currently, IPRs infringement cases are handled by the Township/District/State or Regional Courts and the Supreme Court. Disputations are amicably solved by negotiations or conciliations and with the intervention of a third party which may sometimes take place.
Under the Specific Relief Act, any person entitled to any rights as to any property, including intellectual property, may institute a suit against any person denying, or interested to deny, his title to such right. The Court may in its discretion make therein, a declaration that he is so entitled. In addition, the plaintiff, under the said Act, may also claim a decree for a perpetual injunction.
An action for infringement of the trademark is maintained by means of a civil suit under the “Specific Relief Act” that authorises the Court of Law to grant a perpetual injunction against the infringer. In addition to the civil litigation, counterfeiting a trademark and selling goods with counterfeit trademark are punishable criminal action under the Penal Code. Punishments range from fine to three years imprisonment added with a court order of seizure and destruction of infringing articles and goods. Further, the Penal Code enforcement actions of trademark infringement cases are handled by the Myanmar Merchandise Act and the Sea Customs Act respectively. The Myanmar Merchandise Marks Act supplements relevant provision in the Penal Code which prescribes penalty for applying a false trade description. In particular, penalties for selling goods to which a false trade description is applied and unintentional contravention of the law relating to marks and descriptions are prescribed in ss 7 and 8, respectively. Section 15 of the said Act provides that no prosecution shall commence after the expiration of three years next after the commission of the offence, or one year after the first discovery thereof by the prosecutor, whichever expiration first happens. The “Sea Customs Act” prohibits export or import by land or sea of goods having applied a counterfeit trademark.
In the settlement of disputes relating to IP infringements, the Civil Procedure Code plays an important role in Myanmar. Under the said Code, there are some effective procedures for the right decision and speedy disposal of the suits. Under the Civil Procedure Code, every allegation of fact in the plaint, if it is not denied specifically or by necessary implication, or stated not to be admitted, in the written statement of the defendant, shall be deemed to be admitted, except as against a person under disability.
Conclusion
The legal environment plays a crucial role on a macro level for the implementation of the TRIPS Agreement and protection of IPRs. In the developing and least-developed countries, it is generally not easy in practice to implement the minimum standards of the TRIPS Agreement in the national legislation. In this regard, experience and expertise as well as technical assistance are essential. As a signatory member of International Agreements and Treatises, Myanmar needs to enhance its IP regime by promulgating and implementing the IP Laws in accordance with the TRIPS Agreement to develop national economy and then, comply with the transparency obligation by notifying its laws and regulations according to art 63.2 of the TRIPS Agreement. At the same time, it is important to subject these laws, rules and regulations for periodic review in order to improve and align them in accordance with the needs of Myanmar in a rapidly changing global trend.
With a longer transition period for LDCs, Myanmar should take this opportunity to enhance technical co-operation, capacity building and education for its competent authorities through the co-operation of developed country members, international organisations such as the WTO, WIPO and regional organisations such as ASEAN.
Finally, with the provision of the technical and logistical assistance from the WTO, WIPO and other relevant international and regional organisations in the drafting process of IP legislative instrument, it is expected that IP laws would be promulgated soon in compliance with current international legal norms and principles in every aspect while keeping yet its own characteristics of Myanmar’s legal system.
► Shwe Zin Ko
Directorate of Trade
Ministry of Commerce
Myanmar
E-mail: shiroiyurn@gmail.com
References
1Agreement on Trade-related Aspects of Intellectual Property Rights. Annex 1 C. Retrieved August 24, 2011, from http://www.wto.org/english/docs_e/legal_e/legal_e.htm#TRIPs
2Hairani Saban Hardjoe. Class lectures of Intellectual Property – Systems, Governance & Management. 13-17 June 2011. Yangon, Myanmar
3Kyay Hmone Daily Newspaper.
4Professor Kyi Thwin, Ministry of Science and Technology. Retrieved August 24 2011, fromhttp://www.wipo.int/edocs/mdocs/aspac/en/wipo_inn_tyo_09/wipo_inn_tyo_09_ref_myanmar.pdf
5The Association of Southeast Asian Nations. Retrieved August 24 2011, from http://www.asean.org/19084.htm
6World Intellectual Property Organization. Retrieved August 23 2011, from http://www.wipo.int/treaties/en/Remarks.jsp?cnty_id=111C
7World Intellectual Property Organization. Retrieved August 24 2011, from http://www.wipo.int/wipolex/en/details.jsp?id=6180
8World Intellectual Property Organization. Retrieved August 25 2011, from http://www.wipo.int/wipolex/en/details.jsp?id=6176
9World Trade Organization. Course Modules of trade-related aspects of intellectual property rights.
Notes
1 First, the TRIPS Agreement sets the standards by requiring compliance with the substantive obligations of the main conventions of the WIPO, the Paris Convention and the Berne Convention in their most recent versions. With the exception of the provisions of the Berne Convention on moral rights, all the main substantive provisions of these two conventions are incorporated by reference and thus come obligations under the TRIPS Agreement between members.
2 Part I of the TRPS Agreement sets out general provisions and basic principles of the Agreement, such as national treatment and most-favoured-nation treatment, and exhaustion of IPRs. Part II of the Agreement sets out the minimum standards of intellectual property protection to be provided by each Member. It covers trademarks including service marks. Part III of this Agreement deals with domestic procedures and remedies for the enforcement of IPRs. Part IV of the Agreement contains general rules on procedures related to the acquisition and maintenance of IPRs. Part V of the Agreement deals with dispute prevention and settlement. Part VI of the Agreement contains provisions on transitional periods, transfer of technology and technical co-operation. Part VII deals with institutional arrangements and certain cross-cutting matters such as the protection of existing subject matter.
3 Including list of ethnic goods and services, represent important steps forward in the regional co-operation in IP. These achievements, together with the completed ASEAN Common Form and the consolidated ASEAN.
4 Including the ASEAN Intellectual Property Association, the International Trademark Association, Office for Harmonization in the Internal Market (“OHIM”), WIPO, Australia, EU, and Japan Patent Office.
5 The WIPO and WTO Joint Initiative on Technical Cooperation for Least-Developed Countries was launched in 2001 with the aim of helping LDC Members of the WTO comply with their obligations under the TRIPS Agreement and make best use of the intellectual property system for their economic, social and cultural development. It is open to other LDCs as well.
6 The Penal Code of Myanmar also known as Indian Penal Code (Act XLV. 1860, published on 1st May 1861) because the 1860 Indian Penal Code was inherited in Myanmar when Myanmar was part of India.
http://www.lawgazette.com.sg/2012-01/305.htm
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2011 Myanmar Special Economics Zone Law (Myanmar Version)
2011 Myanmar Special Economic Zone Law (English Version)
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