By Thein Thein Win
Myanmar, also called the “Golden Land”, is known for its many ancient golden pagodas, sacred Buddhist monasteries and gilded monuments. Myanmar people adore yellow gold (“Shwe” in the Burmese language) with gold being a common investment and store of value. It is no surprise then that locals also use “Shwe” as a name not just for people but also as business names in the hopes that the person or business bearing the name would also be successful, special and have a propensity for wealth creation like its namesake. Seeing the popularity of “Shwe”, it would be interesting to see how “Shwe”-related trademarks in Myanmar will fare now that Myanmar has enacted its new Intellectual Property Laws – which includes the Trademark Law – in early 2019.
As we know, trademarks are used in order to distinguish the source of goods/services. So, a trademark needs to distinctive and not to be descriptive in order to be easily recalled amongst the existing ocean of trademarks.
A cursory observation of the shops in downtown Yangon will reveal many businesses with names using with the word “Shwe” (taken to mean “gold” or “golden”) as a trademark. While “Shwe” can be seen in the names of several famous restaurants – “Shwe Lar” (gold enters), “Shwe Kaung” (golden goodness), and “Shwe Palin” (golden throne) are a few examples, it is also very commonly used for goldsmith or jewellery shops to the point where some of the names are extremely similar to each other, such as “Shwe Sin” (pure gold) and “Shwe Sin Thant” (pure, clean gold), “Shwe Nan Daw” (golden palace) and “Shwe Nann Twinn” (golden palace grounds), and so on.
Under the new Trademark Act, these marks containing the word “Shwe” will face difficulty in securing registration as the law restricts marks which lack distinctiveness and merely contain a description of the kind and quality of the goods/services it is affixed on.
Even if the mark overcomes the objection and is accepted, there may be disclaimer on the descriptive word “Shwe” by the Registrar. This means that you may need to file an application with a voluntary disclaimer on the descriptive or generic word where the mark can only be protected as a whole but the owner cannot enjoy the exclusive rights to use the disclaimed word.
Business owners in Myanmar will however appreciate the new Trademark Act as they can now protect their market share against copycats. Having a registered trademark means that competitors are not allowed to use the same or a similar trademark in the same type of business.
The new Trademark Act also provides that a mark shall not be registrable if it misleads the public because it is similar or identical to a well-known mark, for goods or services similar or identical with that of said well-known mark. So, if the marks are identical or similar to earlier registered marks or well-known marks, the applicant needs to prove that there is no likelihood of confusion with these marks or there are substantial differences between the marks.
Even if a mark sought for registration is similar or identical to a registered well-known mark but is not applied on similar, identical or related goods or services, the trademark application may be rejected on the grounds of confusion with the well-known mark. Under the new Trademark Law, even if the examiner accepts your application, you may still face a trademark opposition by the owner of the well-known trademark. For example, if you decide to trademark the name “Shwe Nan Daw” for your fashion shop, people may think the goods in the shop are offered by the goldsmith “Shwe Nan Daw” because “Shwe Nan Daw” is a well-known brand in Myanmar.
In summary, trademark owners – whether in Myanmar or anywhere else around the world – need to ensure that their trademarks are not generic, descriptive, or copycats of famous brands. To truly strike gold with a trademark is to create one that is distinctive, attention grabbing, easy to remember and stands out from the sea of competitors in the same industry.
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