ASEAN INTELLECTUAL PROPERTY ASSOCIATION

IP guides in Myanmar

Overview
Trademarks
Patents and Designs
Copyright
Television and Video Law, 1996
Science and Technology Development Law, 1994
Computer Science Development Law, 1996

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Overview

Myanmar joined WTO in 1994, became a member of ASEAN in 1997 and of WIPO in 2001, it has become responsible to observe and be in compliance with the provisions of relevant treaties of such organizations, particularly, TRIPS Agreement and the ASEAN Framework Agreement on Intellectual Property. Myanmar has obtained special exemption of time preparation to apply the TRIPS Agreement till July 2013. Meanwhile, the Attorney-General Office, with the close cooperation of Ministry of Science and Technology that is designated as the focal point ministry to handle the Intellectual Property matters, is drafting the IP laws to have wide and efficient protection and promotion, being demanded by the regional and global IP regimes.

Before existence of the new IP laws, the IP laws in force in Myanmar are observed in the followings:

Trademark

- Substantive Law

  • Nil

- Related Laws

  • Penal Code (1860)
  • Merchandise Marks Act (1889)
  • Specific Relief Act (1877)
  • Sea Customs Act (1878)
  • Registration Act (1908)
  • Private Industrial Enterprise Law (1990)
  • Control of Money Laundering Law (2002)


Patent

- Substantive Law

  • Nil

- Related Laws

  • Specific Relief Act (1877)
  • Merchandise Marks Act (1889)
  • Patent and Design (Emergency Provisions) Act (1946)
  • Science and Technology Development Law (1994)


Industrial Design

- Substantive Law

  • Nil

- Related Laws

  • Specific Relief Act (1877)
  • Myanmar Copyright Act (1914)
  • Patent and Design (Emergency Provisions) Act (1946)
  • Science and Technology Development Law (1994)

Copyright

- Substantive Law

  • Myanmar Copyright Act (1914)

- Related Laws

  • Specific Relief Act (1877)
  • Sea Customs Act (1878)
  • Merchandise Marks Act (1889)
  • Television and Video Law (1996)
  • Motion Picture Law (1996)
  • Control of Money Laundering Law (2002)

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Trademarks

No Trademark Act is established in Myanmar, however, an established practice has well developed for the evidentiary assertion of the rights of trademark ownership. Trademark may be registered under Section 18 (f) of the Registration Act (Myanmar Deeds and Assurances Registration Act) as per the Direction 13 of the said Act. A trademark may be registered with the Registry of Deeds and Assurances by means of declaration that is a solemn statement of facts made by the trademark owner. Despite the fact that registration is not a conclusive proof of the ownership, it becomes a prima facie evidence of ownership and may be of certain help in the criminal and civil proceedings.

In the absence of specific Trademark Law, by observing a series of case laws and prevailing practices in Myanmar a person aggrieved by the infringement of his trademark can have two remedies open to him: (1) he can institute criminal proceedings under Penal Code and/ or (2) he can bring an action for an injunction and damages. Since 1968, law suits not only for passing-off but for infringement of trademarks are maintainable. The obtainable relieves in these actions are injunctions (both temporary and perpetual injunction inclusive), damages and other ancillary remedies.

In Penal Code, Sections 478 to 489 in Chapter 18 provide definitions of trademark; property mark; using false marks and punishment for making, using and possessing such marks. In these proceedings, the defendant is liable to be fined and/ or imprisoned if found guilty.

Myanmar Merchandise Marks Act empowers the Court, inter alia, to confiscate all goods and things involved in the commission of offences. Forfeiture of goods, providing in this Act is: When a person is convicted under Section 482 of Penal Code of using a false trademark, or under section 486 of that Code of selling or exposing or having in possession for sale or any purpose of trade or manufacture any goods or things with a counterfeit trademark applied thereto, or under Section 487 or Section 488 of that Code of, or making use of a false mark or under Section 6 or 7 of this Act of applying a false trade description to goods or of selling, or exposing or having in possession for sale or any purpose of trade or manufacture, any goods or things to which a false trade description is applied, or is acquitted on proof of the matter or matters specified in Section 486 of Penal Code or Section 7 or Section 8 of this Act, the Court convicting or acquitting him may direct the forfeiture to the State of all goods and things by means of, or in relation to, which the offence has been committed or, but for such proof as aforesaid, would have been committed.

In Sea Customs Act, Section 18 prescribes that the importation into the country by land or sea of goods having applied thereto a counterfeit trademark within the meaning of the Penal Code or a false trade-description within the meaning of the Merchandise Marks Act and goods made or produced beyond the limits of the Union of Myanmar and having applied thereto any name or trademark being, or purporting to be, the name or trademark of any person who is a manufacturer, dealer or trader in the Union of Myanmar, is prohibited. The offences and penalties of importation and exportation on any goods prohibited or restricted by or under Chapter IV of the Act are provided in the Act.

Let us turning our attention on the remedy which are usually granted in suits concerning with infringement of trademark. Our Courts have been trying civil suits after the Code of Civil Procedure India Act V 1908 (1st Jan 1909) was adopted from India. Section 9 in Part 1 of this Code empowered jurisdiction which reads: “The Courts shall (subject to the provisions herein contained) have jurisdiction to try all suit of a civil nature excepting suits of which their cognizance is either expressly or impliedly barred. Explanation. - A suit in which the right to property or to an office is contested in a suit of a civil nature, notwithstanding that such right may depend entirely on the decision of questions as to religious rites or ceremonies.”

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Patents and Designs

Burma Patents and Designs Act, 1939 was first introduced to Myanmar and then enacted Burma Patents and Designs Act, 1945 after the first one expired. The 1945 Act was repealed in 1993 and Burma Patents and Designs (Emergency Provisions Act), 1946 is still existing in Myanmar with no legal essence as to operation of Patents and Designs. This is the time when the new and advanced Patents and Designs law is being drafted by the government under the guidance and assistance of WIPO. During the lack of a specific Statute, patents and designs may be registered under the existing Registration Act.

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Copyrights

Chapter III of Myanmar Copyright Act, 1914 prescribes penalties for the certain offences in the manner that:

(a) knowingly making for sale or hire any infringing copy of a work in which copyright subsists;
(b) knowingly selling or letting for hire or by way of trade exposes or offers for sale or hire any infringing copy of any such work;
(c) knowingly distributing infringing copies of any such work, either for the purposes of trade or to such an extent as to affect prejudicially the owner of the copyright;
(d) knowingly by way of trade exhibits in public any infringing copy of any such work;
(e) knowingly importing for sale or hire into the Union of Myanmar any infringing copy of any such work;
(f) knowingly making or having in possession any plate for the purpose of making infringing copies of any work in which copyright subsists;
(g) Knowingly and for private profit causing any such work to be performed in public without the consent of the owner of the copyright.

Above penalties may not be reasonable so as to balance offences and punishments nowadays. However, owner of the copyright is entitled to all remedies in terms of injunction or interdict also under The Specific Relief Act despite the fact that he takes criminal action against the offender under Myanmar Copyright Act. Moreover, the Court before which any of the foregoing is examined may, whether the alleged offender is convicted or not, order that all copies of the work or all plates in the possession of the alleged offender, which appear to it to be infringing copies, or plates for the purpose of making infringing copies be destroyed or delivered up to the owner of the copyright, or otherwise dealt with as the Court may think fit.

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Television and Video Law, 1996

The offender who commits the offences: copying, distributing, hiring or exhibiting for commercial purpose a censor-certificated video tape, without the permission of the License Holder may be punished with imprisonment extending up to three years or with fine extending up to Kyat 100,000 or with both under Section 33 of this law. Despite the fact that this punishment may be deterrent to the offender, recourse of owner of the copyright to civil litigation is not barred.

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Science and Technology Development Law, 1994

This law especially involves the transfer of technology in the filed of science and industry. Under this law, every contract for transfer of technology must be registered and failing of it will not have a right to institute a suit based on it.

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Computer Science Development Law, 1996

Penalties for illegal imports and exports of any type of computer software or any information prescribed by Myanmar Computer Science Development Council are defined in section 36 of Computer Science Development Law.

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