PUBLICATION

Direction 13
            Trademarks may be registered under section 18(f) of the Registration Act, in Register Book 4, by means of a declaration for each trademark. 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 or some predecessor in his business. A trademark should have one or more invented words and may be registered in respect of particular goods or classes of goods.

           Registering Officers should refuse registration, if the Mark is likely to be on moral or legal grounds objectionable or likely to hurt the religious susceptibilities of any class of citizens of Myanmar.Registration should, for example, be refused where the document lends itself to use as an instrument of fraud, or is obscure. Colourable imitation of a currency note should also be refused for registration. And under no circumstances should the image bearing the image of General Aung San* be registered."

           Under the above Direction a trademark has to be registered by means of a declaration of ownership, which is a solemn statement of facts made by the declarant and usually attested by a Notary Public or a Magistrate or some Judicial Officer. Such a declaration usually states the rights of the declarant to the trademark, and a specimen of the trademark or label concerned is usually attached to the declaration. Although the mere fact of registration is not conclusive proof of the ownership or user of the trademark, nonetheless it may be prima facie evidence of ownership or user and the ability to produce a registered document is certainly a help in a criminal or civil court proceeding.

           In the process of registering a trademark, the owner shall mention the following facts in the declaration submitted for registration:

(a) The said trademark is being actively used for which specific services or goods, he wishes to market in
     Myanmar;
(b) The said trademark has been created by him from his original idea;
(c) The said trademark is neither imitation nor fraudulent copy of a trademark owned by any other person;
(d) To his knowledge, no person has manufactured and distributed any goods of the same type using the said
     trademark.

The registration of a trademark by means of a Declaration is usually followed by publication of a cautionary notice in daily newspapers, usually stating that any fraudulent imitation,unauthorized use or infringement of the said trademark will be dealt with according to law.

Registration of a Foreign Trademark by Declartion of Ownership
             As Myanmar does not have a Trademark Registration Act, foreign trademarks are also registered under the Registration Act and trademark cautionary notices are advertised in the daily newspaper through their Myanmar Trademark Lawyers. Wordmarks are especially advertised in Myanmar with pronunciation, which is a transliteration. In practice, the following documents are ,essentially required.

(1) A Special Power of Attorney signed by the owner of the trademark in the presence of the Notary Public and two witnesses, with the certificate endorsed by the ,Myanmar Embassy or a Consul or Embassy Official.
(2) A dozen representations of the trademark.
(3) The Declaration of Ownership of Trademark including Stamp Duty. Usually the Special Power of Attorney is differently legalized according to the country's legal system.

Effectiveness of Trademark Registration
          In Myanmar, registration of Declaration of Ownership of trademark under the Registration Act, by itself can give no legal protection to the proprietor. The Registration Act applies to the registration of deeds only and no more. A common law action is purely factual, relying entirely on the evidence produced before the court and in no way depends on whether the trademark in question is registered or not under the registration Act aforesaid.

          Registration of Trademark under the Registration Act will only be a relevant factor for the purpose of determining the date since which trademark owner had intended to claim the trademark as his, and will not by itself give him a right of property in that trademark 4, Although the mere fact of registration is not conclusive proof of the ownership or user of the trademark, nonetheless it may be prima facie evidence of ownership or user and the ability to produce a registered document may be of some help in a passing off case.

Time from which Registered document operates
          According to the Section 47 of the Registration Act,a registered document shall operate from the time from which it would have commenced to operate if no registration there of had been required or made, and not from the time of its registration.
 

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* Past National Leader of Myanmar
4. U Kyaw v. U Ba Aye 1962, Burma Law Reports (Chief Court) p.187
 

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