Trademarks have evolved into one of the most significant tools for protecting intellectual property rights in today’s competitive economy. According to the WIPO, a trademark is any sign or any combination of signs used to differentiate one’s goods or services from those offered by others.
In addition to trademarks, their service marks, collective marks, certified marks, well-known marks, etc. They are a form of preserving intellectual property rights and prohibiting other enterprises from adopting identical or similar marks that confuse customers.
These marks not only differentiate and separate identical items or services on the market, but they also authenticate the quality of the goods/services.
To defend a mark effectively, governments create laws and regulations that are both national context compatible and fulfil international standards. While policymakers seek to preserve firms’ and their owners’ intellectual property rights, they must also manage to combat infringement, which has become a widespread problem and a threat to the economy.
Myanmar, like other countries, enacted the Trademark Law in 2019, which came into force in April 2023. Prior to the implementation of Trademark Law 2019, the country followed a first-to-adopt (first-to-use) system, particularly through Registration Act 1908. By the time Trademark Law 2019, Myanmar has transitioned to a first-to-file system, providing and strongly protecting exclusive trademark owner’s rights. The law incorporates proactive steps to mitigate risks of infringement and strengthen the legal framework.
The Myanmar Ministry of Commerce is primarily responsible for issues regarding intellectual property within the country. Additionally, under Chapter 20 of Myanmar Trademark Law 2019, the Supreme Court of the Union may establish the Intellectual Property Court to oversee and judge on the criminal or civil issues involving intellectual property.
Trademark infringement happens when identical or similar trademarks are utilised without the owners’ permission.
In Myanmar, according to the law, the Intellectual Property Court considers that a protected mark is infringed when a person uses an identical or similar mark that confuses consumers in the course of business without the trademark owner’s permission. Furthermore, if a person uses a registered well-known mark on unrelated products, goods or services without the owner’s permission, his action establishes a link between the owner of a registered well-known mark and goods or services used. In addition, the court will consider infringement if a person’s action negatively impacts the interest of the registered well-known mark’s owner.
Trademark infringement in Myanmar is a serious violation, as the owner of the trademark may file both criminal and civil proceedings against the infringer. The court ordered many provisional measures, including but not limited to
- Order to block the entry of products bearing infringing marks into commerce channels, despite the fact that the imported items had already paid leviable duties to the Customs Department and passed customs clearance;
- Order to alter, revoke or confirm the relevant customs department’s suspension order;
- Order seeking an injunction and payment to the right holder of either pre-determined damages or profits obtained by the infringer, or both;
- An order to pay the expenses, including legal charges and attorney’s fees;
- Disposal or destruction of the products containing infringing marks without paying compensation.
In terms of civil and criminal punishment for violating the law and trademark infringement, imprisonment would last between one to ten years. The minimum fine is MMK two million with a maximum of MMK ten million.
As previously stated above, although the rights of the registered trademark owner are legally protected, it is crucial that the owner fully understands the scope of those rights. Furthermore, the trademark owner should establish measures to prevent counterfeiting and infringement in a timely and effective manner.
The following measures are recommended:
- Monitoring: Regularly monitor any new applications filed to register trademarks that are confusingly similar to the registered trademark.
- Filling a notice of opposition: if such an application is detected, notice of opposition should be filed within the specified period in accordance with Myanmar Trademark Law.
- Establish Trademark Usage Guideline: Development and implement trademark usage guidelines for marketing and branding activities to ensure proper and consistent use.
- Maintaining Renewal: Ensure timely renewal of trademark registrations to keep protection active.
It is worth noting that trademark registration alone does not fully prevent infringement. Long-term management and proactive enforcement in accordance with the provisions of Myanmar Trademark Law, regional and international practices are essential.