|
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.
|
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. "
--------------------------------------------------------------------------------
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
|
