[1] protection mechanisms
Currently, there is still no specific trademark law in Myanmar giving a proprietary right to a mark upon registration and regulating the use and enforcement of trademark in Myanmar. To define and enforce the trademark right at the Courtroom, the first use and development of economic value of the trademark at local market are the most important consideration. The proof of use of trademark in the course of trade is often a weight in the judged for trademark infringement case.
Although, there is no regulation about claiming priority right for trademark basing on the earlier trademark application filed in other country, however, it is possible to reflect the earlier trademark right in the Trademark Declaration by claiming seniority from earlier trademark application field or registered in other countries. The seniority concept is not statutory rules, but it is aware from the importance consideration of the prior and first use of trademark in Court jurisdiction.
The multiple-class applications are available in Myanmar with no limitation of goods or/and services in each class. Although, there are no statutory requirements on classification of goods or services for which the trademark is applied in Myanmar, according to our reliable experiences, in order to protect effectively the trademark rights in case of dispute, infringement, passing off before the court caused by the ambiguous scope of protection of the registered mark, it is advisable that the goods/services should be classified in accordance with the Alphabet list of International Nice Classification 10th edition in such manner that the scope of protection of the applied trademark is determined clearly by properly classifying goods that are claimed in the trademark registration.
[2] registration practice
Although there is neither Trademark Law or likewise nor Trademark Office in Myanmar, in practice, trademarks can be enforceable in Court under section 54 of the Specific Relief Act by filing a Declaration of Ownership for Trademark [“Trademark Declaration”] at the office of the Sub-registrar of Deeds and Assurances in Yangon and then followed by Cautionary Notice. Such registered Trademark Declaration is considered as "registration". The registration alone does not give the declarant [registrant] the right to ownership, but registration provides the declarant with the corroborative evidence of use if action has to be taken in the courts of law regarding ownership. Registration may constitute prima facie evidence for the proprietor in a criminal or civil proceeding against an infringer. In addition, the registration is a relevant evidence for purpose of determining the date since which the registrant claims his trademark right. Once registered, the registration in coordination with the proof of first use allows trademark owner to sue third parties for infringement of his trademark right in litigation at the Court.
[3] opposition & cancellation
The statutory proceedings against the registration such as opposition and cancellation proceedings are available in Myanmar at present. However, the opposition/cancellation procedure of trademark registration cannot be done at Registry Office in Myanmar like other countries. Any claim for opposition or cancellation shall be filed a law suit before the court.
Certificate of trademark registration in Myanmar can be declared to be cancelled on the request of a third party, including on the basis of a counterclaim in infringement proceedings, in the following circumstances:
A cancellation on prior use can be made if the opposer can provide evidences showing that he is the first user of the mark in anywhere, and of course it will be better if the market includes Myanmar. According to the case laws of the Myanmar Court, the first user of the mark is very important.
A trademark shall be declared invalid where the Applicant of such mark was acting in bad faith when he filed the application for trademark either.
| SUMMARY | [+] |
| PRACTICE | [+] |
| OUTSTANDING ISSUES | [+] |
