Trademark Definition under Criminal Law
          Section 478 of the Myanmar Penal Code defines Trade Mark as a mark used for denoting that goods are the manufacture or merchandise of a particular person.

          In order to be a Trade Mark, within the meaning of section 478 of the Myanmar Penal Code the mark must be "distinctive" in the sense of being adapted to distinguish the goods of the proprietor of the Trade Mark from those of other persons. Where the mark merely describes the quality or origin of the article and is such as is commonly used in the trade, to define goods of particular kind, it is not distinctive 1.
          What is a distinctive mark has been defined by Lord Halsbury whose well known definition quoted in Gaw Kan Lye v. Saw Kyone Saing 2 is as follows:

         'Distinctive' means distinguishing a particular person's goods from somebody else's - not a quality attributed to the particular article, but distinctive in that respect that it is a manufacture of his, distinguished from somebody else's. If a mark merely describes the quality or origin of an article, such a descriptive mark is, obviously, not capable of distinguishing the goods of one maker from those of others, e.g. 'Pain�killer' and 'Gripe Water' for medicines,' Malted Milk' and' Madras Curry Powder' for articles of diet."

          It has been held in J.Petley & Son v. S.Ah Kyun 3 that the style of the "get up" of the boxes or packages in which goods are retailed does not constitute a "Trade Mark" as defined in section 478 of the In�dian Penal Code.

Trademark Definition under Civil Law
          There being no Trademark Act, Trademarks are not defined un� der Myanmar Civil Law. However in a broad sense "Trademark" is widely understood in this country. Even under the Myanmar Penal Code, words can constitute a trademark.

          In Myanmar it does not really matter whether a particular brand or label used by a particular manufacturer constitute a trademark in the strict legal sense. For example the manufacturer may use a particular colour combination only without any particular mark, e.g. Lever's Car�bolic Soap. In such a case anyone who imitates the particular colour combination on that soap would be liable in an action for passing-off even if there is no particular mark on the label.

          In Myanmar there is nothing to prevent a person who has invented a particular colour combination to distinguish his goods from registering it or from calling it a trademark. ,As a matter of fact, many manufacturers usually register the entire label attached on the goods although within that label they may have a particular device which is called a trademark. Thus the whole label will be a trademark and not the particular device in it. The word "trademark" is in fact loosely used in Myanmar .


 

Acquisition of Trademark right without registration
          Unlike the system existing in some European countries which require a trademark to be registered in order to be protected; the Union of Myanmar recognizes acquisition of trademark rights without registration, similar to the system adopted by the United Kingdom, the United States of America and a number of other countries. Typically, this concept is based not on a statute but on common law; which is to say that precedences are established through Court decisions.

Acquisition of exclusive right of use through past use
          As in many other countries, in Myanmar it is sufficient that a trademark is used in order to acquire the exclusive right of use.

Registration does not automatically give exclusive right of use
          In Myanmar there is no law or statute established for the registration of trademarks and no authorities exist from which an exclusive right to a particular trademark can be obtained. The right to a trademark depends upon the general principles of common law.

 

Registration of a Local Trademark by Declaration of Ownership
          A trademark owner may, if he desires, register his trademark at the Office of the Registrar of Deeds under the Registration Act by means of a declaration of ownership. In fact, most of the prominent trademark owners and also Government Enterprises register their trademarks under the Registration Act, and thereafter advertise a cautionary notice in daily newspapers to protect their trademarks.
As already stated, there is no Trademark Registration Act in Myanmar. And therefore- registration of a trademark is not compulsory. However registration of declaration of ownership of Trademark under the Registration Act is certainly beneficial. Direction 13 of the Registration Act provides for the registration of Trademarks under section 18 (f) of the Registration Act:-

--------------------------------------------------------------------------------
A. Khunjalam and Two others v. T.C. Mohamed 1949, Burma Law Reports p. 650
1939, Rangoon Law Reports p.488
(1903-4), 2 Lower Burma Rulings p.159
 

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