Enforcement and Border Control Measures
Myanmar is the largest country in the Southeast Asian mainland and is bordered by India, Bangladesh, Thailand, Laos and China. Geographically, Myanmar is strategically located to make trade deals with the two most populous countries and fastest growing markets in the world, India and China. Currently, the Myanmar Customs Department authorizes border control measures and scrutinizes the flow of counterfeit goods and marks into the country. To officially ensure that only goods using genuine trademarks are allowed to pass through in cross-border trade, the Myanmar Customs Department accepts the recordal of trademark registrations.
The recorded trademarks at the Customs Department can be used as evidence at the border when custom officers inspect the respective goods. Action can be taken against the export or import of goods by land or sea bearing counterfeit marks and infringers will be sentenced under the Sea Customs Act. Custom officers inspect goods wherein there is reasonable suspicion and investigate based on information obtained from the public. They supervise the prevention of counterfeit marks and illegal goods through the border and detain goods with counterfeit marks or suspected counterfeit goods.
At present, Intellectual Property (IP) rights infringement cases are handled by the Customs although there is no specific trademark law for right holders or owners to take action against infringers. So, the right holders or owners can only rely on the limited and undetailed specified section under the Penal Code for offences and penalties, and use mediation to resolve their IP disputes when facing problems of trademark ownership.
Meanwhile, Myanmar has enacted a new trademark law and the related regulations and procedures will follow soon. Soon brand owners will need only to get their trademark registered to be able to get criminal or civil enforcement of their trademark at the border.
The Extent of Trademark Rights Enforcement Under the New Trademark Law
If the right holders or owners suspect that goods using counterfeit marks are being imported into Myanmar, they can apply to the Director General of the Customs Department with the required documents in order to issue a suspension order for the said goods. Thereafter, the Director General will notify the right holder on whether the application is accepted or rejected.
If it is found that the goods are imported using a counterfeit mark, the goods will be suspended from freely entering into the course of trade, and where the IP Court decides that the goods are indeed using the counterfeit mark, the importer must pay the costs for the detainment, destruction and removal of the said goods to the Customs Department. If the IP Court decides that the goods are not using the counterfeit mark, the applicant must pay the damages to the importer for wrongful suspension and temporary detainment.
The right holders or owners can request a civil or criminal suit for action at the IP Court when any other person exploits any rights without the permission of the trademark owner, or any other person infringes the trademark right or misleads the public.
The IP Court will decide whether to impose a fine as compensation to the aggrieved party or sentence the infringer to a term of imprisonment for any offences under the new trademark law. Where there is no exact statement in this law in relation to the action taken for the infringement of trademark rights, the IP Court will apply the Evidence Act, Criminal Code of Procedure, Civil Code of Procedure and other related prescriptions under the existing laws. The offences and penalties mentioned in the new law will be much more effective in the prevention of the potential infringement of trademark rights.
How Can Brand Owners Protect Their Trademark Rights?
Whether you are a local brand owner or a foreign brand owner with business interests in Myanmar, or a foreign business intending to export into Myanmar or considering opening a branch in Myanmar, you need to register your trademark at the Registry of Deeds in Myanmar first, as the new trademark law has yet to come into effect.
Before filing the trademark, make sure you conduct linguistic checks on your mark to ensure it is not offensive in the local language and also conduct trademark searches to avoid infringing trademark rights belonging to others.
After the trademark search and registration, whereby you will receive a Declaration of Ownership of the trademark, you need to publish a Cautionary Notice in the local newspaper. The new trademark law states that all marks (registered or unregistered) have to be registered again under the new system which will follow the first-to-file rule. It means that if you are the first to file the marks at the IP office, you can acquire the ownership of these marks.
The reason why you need to register your mark at the Registry of Deeds instead of waiting to file under the new law is because prior registration and the publication process can help you to warn the potential infringers and to stop potential infringement. It is also concrete evidence of continuous use of the marks in good faith if someone files an application before you do, when the transition takes effect. Prior registered marks can also obtain some rights under the new law, whereby your prior trademark certificate can be submitted as evidence.
And finally, once the registration process is completed, and you have received the Declaration of Ownership and published the Cautionary Notice, don’t forget to record your trademark with the Myanmar Customs Department to make sure that only authentic goods with genuine trademarks are allowed to pass through the border!
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