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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.
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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:
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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.
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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 trade�marks 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 na�ture 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 circum�stances of a particular
case, be considered to be calculated to deceive the class of
persons for whom the goods are ordinarily or primarily
in�tended.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
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