South-East Asia IPR SME Helpdesk

Myanmar

  

THE FACTS: Business in country for EU Companies

SIZE of Market

  • EU exports in goods to Myanmar in 2015: EUR 548 million
  • EU imports in goods from Myanmar in 2015: EUR 675 million
  • Total trade in goods in 2015: EUR 1,223 million
  • EU exports in services to Myanmar in 2014: EUR 312 million
  • EU imports in services from Myanmar in 2014: EUR 183 million
  • Total trade in services in 2014: EUR 495 million 
  • Myanmar GDP in 2015: EUR 60.4 billion 
  • Myanmar GDP growth in 2015: 7.0% 

In 2015, Myanmar ranked 100th among the EU’s trading partners. Conversely, the EU is Myanmar’s 6th largest trading partner overall (accounting for 3.6% of Myanmar’s total external trade in 2015), following China, Thailand, Singapore, Japan and India. 

Challenges include:

  • Government inefficiencies, corruption and transparency;
  • Unclear legal, judicial and bureaucratic systems;
  • Large need for infrastructure and skilled labour.

Key INDUSTRY SECTORS - 2015 (Source: DG Trade)

  • EU exports to Myanmar are dominated by i) Machinery and appliances (32.8%); ii) Transport equipment (21.4%) and iii) Products of the chemical or allied industries (18.6%).
  • EU imports from Myanmar are dominated by i) Textiles and textile articles (62.6%), ii) Vegetable products (14.0%) and (iii) Pearls, precious metals and articles thereof (6.9%).

 

IPR in country for SMEs: BACKGROUND

Intellectual Property Rights for SMEs: Why is this RELEVANT to you?

Intellectual Property Rights (IPR), as intangible assets, are a key factor in the competitiveness of businesses in the global economy. IP is a primary method for securing a return on investment in innovation, and is particularly relevant to Small and Medium-sized Enterprises (see EC definition at http://ec.europa.eu/enterprise/policies/sme/facts-figures-analysis/sme-definition/index_en.htm) when they internationalise their business to areas such as South-East Asia. Not only is IP a way to help SMEs protect their innovations from competitors, IP assets can also be an important source of cash-flow for SMEs through licensing deals or selling IP, as well as a significant pull-factor when attracting investors.

Although SMEs often have limited time and resources, it is important to be aware of how IP can be valuable to businesses. IPR infringement is one of the most common concerns for businesses when dealing with South-East Asian countries, and could lead to loss of business, revenue, reputation and competitive advantage, both in South-East Asia and in core domestic markets, unless proactive steps are taken to protect IP and deter potential infringers.

EU SMEs generally used to having business dealings in other South-East Asian countries would have to take a different approach in protecting their IPR with respect to Myanmar as IP registrations are not yet available in the country.

Myanmar BUSINESS ENVIRONMENT

Myanmar is the second largest country in South-East-Asia with a population estimated to be over 60 million. Approximately 85% of the population is Buddhist. The national language is Burmese, though English is widely spoken for business in Yangon.

Due to Myanmar’s closed door policy, and its conservative approach to foreign investment developed through nearly five decades of military rule, foreign investments in Myanmar in the past were limited to a few sectors, such as transport equipment and machinery. Now the scenery is clearly changing and Myanmar is entering a new era of modernization. Most recently, on 18 October 2016, the Myanmar Investment Law 2016 (MIL) was enacted, consolidating the Foreign Investment Law 2012 and the Citizens Investment Law 2013, which will both be repealed upon the new law entering into force. In the past few years, foreign investors in Myanmar relied on the Foreign Investment Law 2012 and ministerial notifications, which were issued from time to time, for clarification on the scope of activities in which foreign investment is prohibited or restricted in the country. According to data released by the Directorate of Investment and Company Administration (DICA), foreign direct investment in Myanmar achieved a record high of USD 9.4 billion (approx. EUR 8.6 billion) in the 2015/16 fiscal year, which ended in March 2016.

Currently, foreign investors that wish to carry out business activities in Myanmar can incorporate a foreign owned limited liability company, register a branch of a foreign company, operate as a sole proprietor or establish a partnership.

Foreign investors wishing to form a company in Myanmar should do so under the Myanmar Companies Act 1914 (MCA). Following the enactment of the new MIL, foreign investors are required to obtain a permit from the Myanmar Investment Commission (MIC) if they wish to participate in the following business activities in Myanmar:

  • Businesses activities that are strategic for the country;
  • Capital intensive investment projects;
  • Projects which have a large potential impact on the environment and the local community;
  • Business activities which use state-owned land and buildings; and
  • Other business activities which are designated by the government to require the submission of a proposal to the MIC.

The MIL also expressly prohibits the following types of business activities in Myanmar;

  • Business activities which may bring hazardous or poisonous waste into the country;
  • Business activities which may bring technologies, medicines, flora and fauna and instruments which are still being tested abroad or which have not obtained relevant approvals for use, planting and cultivation except for investments made for the purpose of research and development;
  • Business activities which may affect the traditional culture and customs of the racial groups within the country;
  • Business activities which may affect public health;
  • Business activities which may cause significant damage to the natural environment and ecosystem; and
  • Business activities which manufacture goods or provide services that are prohibited in accordance with applicable laws

 

Registration under the MCA consists of two main steps: (i) the application for a Trade Permit; followed by (ii) registration with the Companies Registration Office. Registration solely under the MCA requires capital of USD 50,000 (approx. EUR 45,500) for services companies and USD 150,000 (approx. EUR 137,000) for manufacturing companies. DICA provides template forms for Memorandums of Association and Articles of Association, which cannot be altered without specific permission. Other documents required are passport copies of each of the company’s individual directors and shareholders and Board Resolutions of the shareholding company. A minimum of two directors and two shareholders are required.

Due to the nature of business activities of SMEs, an application for an MIC permit is not typically required. Nonetheless, pursuant to the new MIL, any investor can, upon the law entering into force, submit an “endorsement application” to the MIC to apply for the benefits provided under the MIL, which includes tax exemptions and customs relief.

Apart from incorporating a limited company as detailed above, foreign investors can also opt to open a Branch Office (BO) or a Representative Office (RO) under Section 27 of the MCA—both a branch office and an RO must obtain a permit and registration. The documents to be presented with the permit application include: (i) a company’s board resolutions to establish the office in Myanmar; and (ii) passport copies of the company’s individual directors and shareholders.

In an application to establish an RO in Myanmar, the directors need to sign an undertaking stating that they will not trade in the country. There are restrictions on revenue generating activities for both entities. An RO has a representative function of a foreign company in Myanmar. It can undertake market surveys and give advice to a local partner with whom your company would partner. It can also interact with clients here in Myanmar, provided that the advice activity is not revenue generating. A BO can act on a much broader scale and be directly involved in product quality control, for instance. Furthermore, there is no limit as to the number of employees a BO would hire. As to an RO, there can be a maximum of two employees. Due to the nature of BOs and ROs, and particularly the applicable restrictions on revenue generating activities, this option is commonly used only by foreign banks and insurance companies, and is less preferred by SMEs.

The legal environment in Myanmar is rapidly changing, with new laws constantly being introduced to replace its archaic legislative framework. The latest list of prohibited and restricted business activities for foreign investors can be found in the Myanmar Investment Commission’s list No. 26/2016, issued on 21 March 2016. With the enactment of the new MIL, which seeks to inject clarity into the existing investment framework and has been criticized as lacking transparency, more ministerial notifications and guidelines are expected to be released in the near future to administer the provisions under the new law.

How does Myanmar’s IP legal framework compare to INTERNATIONAL STANDARDS?

Myanmar’s legal framework for IPR is not yet up to international standards.

Myanmar is currently not a signatory to the Paris Convention for the Protection of Industrial Property or any other multilateral trade mark treaty. Although it is a WTO member, Myanmar is classified as a Least-Developed Country (LDC) and as such it is not required to apply almost any of the provisions of the WTO 'Agreement on trade-related aspects of intellectual property rights' (TRIPS) until at least 1 July 2021. As an LDC, Myanmar also enjoys the WTO TRIPS drug patent exemption, which has been extended until January 2033. Myanmar does have a commitment, however, to not discriminate in its treatment of national and foreign economic operators, or of different foreign ones. Myanmar’s IP laws are currently in the process of being drafted (this is being spearheaded by the Office of the Attorney-General in cooperation with the Ministry of Education, Science and Technology), and the previous government under President Thein Sein has issued draft laws for industrial designs, patents, trade marks, and copyright, inviting public opinion and consultations. These IP laws will have a significant impact on business, and they should make Myanmar a more attractive country for investment. This is because IP owners will be better able to protect their IP rights in the country. In particular, the Industrial Designs Bill provides for the establishment of an IP office and also specialised IP courts in Myanmar to carry out IP-related functions on behalf of the government and to adjudicate IP-related disputes respectively.

IP TIPS and WATCH-OUTS in Myanmar

  • Uncertainty on the general legal framework of the country can impact on ways to protect your IP.
  • Consider taking a specific approach to protect your IPR in relation to Myanmar as IP registrations are not yet available in the country. Therefore, you would need to create an ad hoc strategy to protect your IP in the country.
  • It is recommended to seek the advice of local experts to follow policy and legal developments and plan a proper strategy for your business growth in Myanmar.

IP Rights in country: THE BASICS

A. Copyrights

WHAT are Copyrights?

Copyright is a legal term used to describe exclusive rights granted to authors, artists and other creators for their creations. These rights, generally, include: copying; publishing; translating; adapting and altering; distributing; etc. and are granted automatically following the creation of the work.

Copyrights in Myanmar: What you need to know

Copyright for written work, film, music or software may be difficult for foreign companies to enforce in Myanmar under the current Myanmar Copyright Act of 1914 (CA 1914). Copyrights from other countries are not recognized in Myanmar and there are no procedures for registering foreign copyrights in Myanmar. Notwithstanding its accession to the TRIPs Agreement, Myanmar has yet to implement national treatment principles into local laws. Myanmar is not a signatory to the Paris Convention for the Protection of Industrial Property, nor is it a signatory to the Berne Convention for the Protection of Literary and Artistic Works.

The CA 1914 provides and outlines copyright of original literature and dramatic and artistic work if: (a) in the case of a published work, the work was first published within Myanmar; and (b) in the case of an unpublished work, the author was a citizen of Myanmar or “within” Myanmar when the work was created.

According to the CA 1914, infringement of copyright is actionable in both criminal and civil courts. The owner of the copyright may be able to appeal to the courts to institute criminal proceedings against the infringer under the Act. Punishment with regards to infringement consists of a fine not exceeding Kyats 500 (approximately EUR 0.38), but this is expected to increase. Making or possessing plates for the purpose of producing counterfeit copies shall be punishable with a fine, which is also up to a maximum of Kyats 500 (approximately EUR 0.38). For any subsequent offence the penalty is imprisonment for up to one (1) month or a fine to a maximum of Kyats 1,000 (approximately EUR 0.76), or both.

In Myanmar no specific mechanisms exist for search, seizure and disposal of property relating to copyright. However, the general provisions of the Criminal Procedure Code relating to search, seizure and disposal of property can be applied. Sections 101 – 103 allow for any search to be made in the presence of at least two witnesses who are respectable inhabitants of the locality and will be required to sign the list to attest to its accuracy. The proprietor of the place searched may be present during the search.

However, based on the latest Copyright Bill issued in July 2015, which implements national treatment, copyright protection will cover works created by nationals of other state members that adhere to treaties or conventions related to copyright. The protection will principally last for the lifetime of the creator and an additional fifty (50) years after his or her death. The infringement of copyright is considered both a criminal and civil offence.

How LONG does legal protection last?

In relation to domestic copyrights recognised under the CA 1914, the duration of the protection for literature and, dramatic, musical and artistic work under copyright lasts the life of the author and fifty (50) years after his/her death. However, in any case where the sound can be mechanically reproduced, the original piece of work will only be protected for fifty (50) years after creation.

HOW do I register?

Currently, there is no registration procedure in Myanmar. Copyright protection under the CA 1914 arises automatically at the time of the creation of a recognised work.

Copyrights TIPS and WATCH-OUTS in Myanmar

  • Copyrights from other countries are not recognized and there are no procedures for registering foreign copyrights in Myanmar.
  • There may be strategies to protect IP in lieu of traditional copyright rules and companies should determine whether some combination of trade mark rules and existing laws such as the Television and Video Law of 1996 may be used to protect certain rights.

 

B. Patents and Industrial Designs

WHAT are Patents and Industrial Designs?

A patent is a right granted to the owner of an invention to prevent others from making, using, exploiting, importing or selling the invention without his permission. A patent may be obtained for a product or a process that gives a new technical solution to a problem or a new method of doing things, the composition of a new product, or a technical improvement on how certain objects work.

An industrial design protects a specific appearance of a product embodied by three-dimensional configurations, lines, colours, or a combination of these elements. In order for an industrial design to be granted, the design must be new, creative and have an industrial application.

Patents and Industrial Designs in Myanmar: What you need to know

Although the Burma Patents and Designs (Emergency Provisions) Act 1946 came into force upon the repeal of the Burma Patents and Designs Act 1945 in 1993, there is presently no law in operation on patents and industrial designs, while only draft laws are pending approval. This means that production, commercial use and trade in goods is possible without permission of the people/ companies who may hold the patents or design rights outside Myanmar.

Consequently, in order to seek protection for their products, most entrepreneurs have to invest large amounts in protecting their trade marks through the means locally available in Myanmar so that they can protect at least their brand reputation and goodwill from illegal action related to their products and businesses. Owners of design rights may also seek to rely on passing off in enforcing their design rights in Myanmar, although the efficacy of the courts in hearing design-related passing-off cases remains to be seen.

With regard to pharmaceutical products, the National Drug Law has been promulgated since October 1992 and notifications were issued in August 1993 pertaining to drug registration, drug manufacturing, importing, selling and distribution, labelling and advertisements. In January 1995, The Food and Drug Administration Department was established under the Ministry of Health. There are two committees, namely the Drug Advisory Committee, to supervise drug registration matters, and the Central Food and Drug Supervisory Committee, to supervise drug manufacturing and importation.

There are currently drafts of the Patent Law and Industrial Designs Law, issued in July 2015, which are summarized below:

Draft Patent Law

Chapter 5 of the draft patent law holds that a patent must be novel, have an inventive step, and be industrially applicable. The term of a patent is twenty (20) years from the date of the patent application, and annuity fees are to be paid to the registrar for the prescribed periods to maintain the patent registration. Any court proceedings relating to patents will follow the provisions that are enacted for IP courts under the law on industrial designs (see paragraph below).

Draft Industrial Design Law

According to the present draft law, to be eligible for protection, industrial designs must be original and novel. The term of a registered industrial design will be five (5) years from the application date, and it could be renewed for two (2) additional terms of five (5) years each. The maximum duration of a registered industrial design will be fifteen (15) years.

As mentioned above, the Industrial Designs Bill provides for the establishment of an IP office and IP courts, which will serve as the executive and judicial arms in the administration and enforcement of IP rights in Myanmar.

Patents and Industrial Designs TIPS and WATCH-OUTS in Myanmar

  • There is presently no functioning system of patent and design protection in Myanmar. Companies should be aware of this limitation and discuss with counsel what strategies may be available.
  • In order to seek protection for your products, you can consider emphasising trade mark protection in Myanmar to protect your brand reputation and goodwill from illegal action related to your business.

 

C. Trade Marks

WHAT are Trade Marks?

There is still neither a particular statute nor a law on trade marks nor specific provisions regarding registration of trade marks in Myanmar today. However, the Penal Code 1860 defines a trade mark as “a mark used for denoting that goods are the manufactured merchandise of a particular person”. References to trade marks can also be found in various legislation, such as the Criminal Procedure Code, the Private Industrial Enterprise Law and the Merchandise Marks Act.

Trade Marks in Myanmar: What you need to know

A company may acquire a right of property in a mark in Myanmar by using it on - or in connection with - the company’s goods or services, if it can be shown that the public understands the mark to indicate goods made by a particular manufacturer or sold by a particular company/merchant. This understanding would accumulate goodwill in such a mark.

While there is no trade mark registration legislation in Myanmar, a practice has developed by which the person purporting to be the trade mark owner may make a Declaration of Ownership with respect to that trade mark and register that Declaration with the Office of Registration of Deeds in Yangon or Mandalay under the Registration Act 1908. Once the Declaration is registered, it is customary and advisable to publish a Cautionary Notice in local newspapers warning people not to infringe that trade mark.

Enforcement can thereafter be pursued (a) under Sections 478- 480 of the Myanmar Penal Code; (b) against infringement under Section 54 of Myanmar’s Specific Relief Act and under the Myanmar Merchandise Marks Act and (c) under the common law tort of passing off. The ‘law of passing off’ essentially prevents other traders from unfairly riding on the reputation and success that SMEs have built for their trade mark. Three factors need to be proved before a claim of passing off can succeed: (i) that a company has established a connection to their trade mark through actual use within Myanmar; (ii) that the defendant has made a misrepresentation to the public that his goods or services are in some way associated or connected with them; (iii) as a result, the company has suffered damage to its brand’s reputation due to such misrepresentation by the defendant.

Myanmar generally relies on the principles of the system of common law. The registration of a Declaration of Ownership of a trade mark can be used as a relevant factor for the purpose of determining when the SMEs intend to claim the ownership of the trade mark, but this will not by itself give a full right of property in that trade mark. Thus, as with common law trade marks in other jurisdictions, a Myanmar trade mark needs to have established a reputation or “use” in Myanmar in order to be enforceable. SMEs shall be aware that they should actually use the trade mark within the territory. A registration of a Declaration of Ownership and publishing a Cautionary Notice do not automatically give the owner of a trade mark the necessary “use” in Myanmar or vest rights of that trade mark.

Registration of a Declaration of Ownership of a trade mark can be refused under the following circumstances:

  • Where the trademark is likely to be objectionable on moral or legal grounds;
  • Where the trademark is likely to hurt the religious susceptibilities of any class of citizens of Myanmar;
  • Where the Declaration of Ownership of the trademark lends itself to be used as an instrument of fraud or is obscure;
  • Where the trademark is a colorable imitation of a currency note; or
  • Where the trademark bears the image of General Aung San.

The draft Trademark Law issued in July 2015

Based on the current Trademarks Bill issued in July 2015, the term of a registered trade mark will be ten (10) years from the filing date, and can be perpetually renewed for additional ten (10) year terms. Furthermore, both domestic and foreign owners of marks could apply for trade mark registration under this law. Court proceedings will be under the jurisdiction of IP courts which are expected to be created in accordance with the provisions in the Industrial Designs Bill.

Importantly, trade mark owners who have registered a Declaration of Trade Mark Ownership with the Office of Registration of Deeds under the Registration Act before this law comes into force will have to apply for a new registration under the new law, and there will be no transitional period. International trade mark owners are also able to claim priority over their international trade marks.

How LONG does legal protection last?

There is no trade mark registration available in Myanmar at present. The “registrations” of Declaration of Ownership are, in practice, valid for three (3) years from the date of registration and may be “renewed” by reregistering a Declaration and re-publishing a Cautionary Notice.

HOW do I register?

declaration in the prescribed form must be completed by the person purporting to be the trade mark owner for each trade mark, and must be executed before a Notary Public.

description of the goods or services on or in connection with which the trade mark is used and a clear representation of the mark must be included in the Declaration.

power of attorney must be executed (by the same party who signs the Declaration) appointing local counsel to be the attorney of the trade mark owner for the purposes of registering the Declaration(s) at the Office of Registration of Deeds.

A non-compulsory cautionary notice (which may include details of more than one mark) should be published in local newspapers, either in the English language, Myanmar language or both.

WHO can register?

Citizens of Myanmar and foreigners.

Which LANGUAGES can I use?

For foreign applicants, the Declarations of Ownership and Power of Attorney are submitted in English, and must be accompanied by a translation in Burmese. Cautionary Notices can be published in English, Burmese or both.

How much does it COST?

Registration fees:

1) Official fee (including stamp duty): Kyats 8,000 (approximately EUR 6.10)

2) Agent fee: Kyats 130,000 to Kyats 520,000 (approximately EUR 100 to EUR 400)

 

Trade Marks TIPS and WATCH-OUTS in Myanmar

  • Myanmar’s existing system allows the recordal of your marks with the Office of Registration of Deeds under the Registration Act.
  • The registration of a Declaration of Ownership of a trade mark by a person, though a relevant factor for the purpose of determining when he had intended to claim the trade mark as his/hers, will not by itself give him/her a right of property in that trade mark. The registration of the Declaration and publication of the Cautionary Notice only serve to establish prima facie “use” of the trade mark in Myanmar for evidentiary purposes in any future dispute or passing-off action. They do not in and of themselves create any legal or proprietary right to the relevant trade mark. It is important that you establish a reputation or “use” in Myanmar in order to enforce ownership.
  • Trade mark searches/inspections of the official register of Declarations are not currently permitted. However, because the Cautionary Notices are published in the newspaper, private collections of Cautionary Notices can be searched as a guide to whether a Cautionary Notice for a mark has been published.
  • In case of litigation, it will be sufficient in court to prove imitation if there exists a similarity between the two marks which could in certain circumstances be considered to be conceived to deceive the consumers.
  • A trade mark or name which is primarily descriptive of an article, of its composition or mode of manufacture, must be open to everyone and cannot be claimed for exclusive use by one trader.
  • An owner of a trade mark has no right to prohibit other persons from the use of such mark in connection with goods of a totally different character.

 

D. Geographical Indications (GIs)

There is currently no law on Geographical Indications (GIs) in Myanmar, while the current Trademark Bill, issued in July 2015, also contains a chapter on GIs. GIs may nonetheless be registered by way of a Declaration of Ownership, subject to the discretion of the Registrar at the Office of Registration of Deeds.

E. Trade Secrets

There is currently no law on trade secrets in Myanmar and no draft law is available in this respect. Trade secrets are typically governed by Non-Disclosure Agreements. In addition, Chapter IX of the Competition Law 2015, which will enter into force on 24 February 2017, prohibits the disclosure of confidential information, categorising it as an act of unfair competition.

Using CUSTOMS to Block Counterfeits

HOW can Customs help in protecting IP?

The Myanmar Customs Department is a governmental agency of the Ministry of Finance. Customs provide examination and investigation on goods imported and exported in accordance with existing laws, rules and regulations and take action against incompliance; they work in co-operation and co-ordination with other allied law enforcement agencies and support the development of trade and national economic development.

Customs in Myanmar: What you need to know

The Sea Customs Act 1878 prohibits export or import by land or sea of goods with a counterfeit trade mark. Under sections 170 and 171, a Customs officer is authorized to stop and search any person, vessel or vehicle on the grounds of reasonable suspicion.

WHAT can be registered?

Myanmar Customs Department provides a recordal system for trade marks upon application of the trade mark owner. Goods bearing the recorded trade mark imported by any party other than the local company granted with distributorship rights will be detained at customs.

In addition, the IPR holder may inform the customs of suspected importation of infringing goods by notifying Customs when he/ she is aware of specific import of counterfeits for Customs to take action.

How LONG does legal protection last?

Based on the current practice of the Myanmar Customs Department, a customs recordal is valid in perpetuity, and there is no requirement to renew it.

HOW do I register?

The requirements and procedures for voluntary recordal are as follows:

a) Application letter from the right holder or the authorized agent (law firm) addressed to the Director General, Myanmar Customs Department, Yangon;

b) Contract between local company (authorized distributorship) and the right holder;

c) Authorization letter of distributorship to the local company from the right holder / Distributorship agreement between local company and right holder (legalized and notarized at the nearest Myanmar embassy from the country of the right holder);

d) Trade mark sample;

e) Registered declaration of the ownership of trade mark in Myanmar;

f) Publication of cautionary notices in the newspaper;

g) Power of attorney from right holder to law firm (legalized and notarized at the nearest Myanmar embassy); and

h) Description of product.

The application should be delivered to the Dispatch Unit of customs. The application will be forwarded from the Director General to the Director of Import/ Export to the Staff Officer who will review the application.

Upon successful application, a notification of the protection from the importation of counterfeited goods will be issued to the applicant. If all required information/documentation have been provided, the application will be processed within one-two (1 – 2) weeks.

To our knowledge, the officers strictly require all documents listed above to approve the application and have rejected applications where item b) had been omitted due to sensitive commercial details included in the document.

CONTACT DETAILS

Myanmar Customs Department
No.132, Strand Road, Kyauktada Township, Yangon City, Myanmar.
Tel: 951-391435, Ext 150
Email: mcd.ygn@mptmail.net.mm

WHO can register?

Both local and foreign rights owners can submit a customs recordal application.

Which LANGUAGES can I use?

Applications must be submitted in Burmese. Foreign rights owners can submit applications in English, but they must be accompanied by a translation in Burmese.

How much does it COST?

The recordal application does not involve any fee. However, the application has to be affixed with a 1,000 MMK (approximately 0.70 EUR) stamp.

Customs TIPS and WATCH-OUTS in Myanmar

  • Right owners can submit an application of customs recordal, and they can notify customs officers to suspend the customs clearance of specific goods suspected of being counterfeit. Furthermore, Customs officers have ex-officio power to confiscate suspected counterfeit goods.
  • As IP owner, you should closely work with Customs and try and provide trainings on your goods to help Customs identify counterfeits to trigger the ex-officio action.

 

Myanmar Customs Department provides a recordal system for trade marks upon application of the trade mark owner.

 

ENFORCING your IP

Enforcing your IP

Besides Customs seizures, there are two (2) main avenues for enforcement in Myanmar: criminal enforcement and civil enforcement. In Myanmar, intellectual property rights are not subject to special codified legislation, and are resembled to general property rights. The enforcement avenues reflect the current system. Currently, IPR infringement cases are handled through a rather complicated judicial system with no less than 5 (five) judiciary levels: the Township, District, State or Regional Courts and the Supreme Court. It explains why disputes are usually amicably solved by negotiations or conciliations.

Criminal Enforcement

An effective strategy for enforcement of trade marks and protection of trade names is through criminal action under the Myanmar Penal Code 1860.

Criminal action under the Penal Code is possible against a person using a false trade mark or a counterfeit trade mark, making or possessing any instrument for counterfeiting a trade mark or selling goods marked with counterfeit trade marks (according to Sections 482, 483, 485 and 486 of the Penal Code). To initiate a criminal enforcement action, the rights owner or its authorised distributor must first lodge a police complaint, supported by a compiled dossier of evidence. Pursuant to the police’s investigation, a raid action can be carried out to seize the counterfeit goods.

The accused person can be exempted if he/she can prove the following:

  • The counterfeiting was done in innocence due to a lack of knowledge on how to differentiate between counterfeit and genuine products; and
  • Information identifying and disclosing to the authorities the main source of counterfeit goods.

Punishment ranges from a fine to three (3) years imprisonment. Additionally, the court may order the destruction of the seized goods, by drawing upon powers conferred by the Merchandise Marks Act.

Civil Enforcement

A trade mark owner can launch a civil suit against an infringer in Myanmar for trade mark infringement (under Section 54 of the Specific Relief Act) to obtain a permanent injunction. In addition, the owner may claim damages caused by such infringement. Under the Civil Procedure Code, when a complaint is filed and the accused does not expressly deny the allegation, this is deemed an admission (unless the accusation is made against a disabled person). This mechanism significantly expedites civil procedure in trade mark infringement cases in Myanmar.

To prove the 'actual use’ in Myanmar is very important to achieve a better right over a mark. According to the current practice, as theoretically more than one person can claim the ownership of the same mark, SMEs shall be aware that using a mark first and prior to another party, will be very helpful to establish IP rights over such mark. The Declaration of Ownership can be used as ‘prima facie evidence’ of ownership or use if a dispute is brought before the court. A declaration judgment is not available in Myanmar. In practice, the Myanmar court gives significant weight to the proprietorship of a trade mark by use. As a result, in case of a dispute, evidence of use becomes necessary to prove trade mark ownership to the court. Therefore, the relevant date would be the registration date of the Declaration and the first date of use of the mark in Myanmar.

IPRs infringement cases are handled by the Township, District, State or Regional Courts and the Supreme Court according to the amount requested for compensation. Disputes can also be amicably solved by negotiations or third party mediation.

However, under the Specific Relief Act, any person entitled to any rights to any property, including intellectual property, may start a lawsuit against any person denying, or interested in denying, his or her title to such right. The court may, upon its discretion, make a declaration that he or she is so entitled.

Passing Off

In common law countries such as Myanmar, rights owners can rely on passing off in enforcing their trade mark rights. The law of passing off allows a trader who has accumulated goodwill in a trade mark to take action against third parties who have misrepresented the latter’s unrelated goods as the trader’s goods, by taking advantage of the trader’s reputation in the trade mark, at the trader’s expense. An enforcement action lies where there is a tangible possibility of damages to some business or trading activity. It is not necessary to prove a fraudulent motive or representation of intentional harm but can also be caused by negligence. In terms of damages that can be claimed with such action, the "injured party" is generally entitled to nominal damages (generally in a very small amount) if no actual damage is proved.

IPRs infringement cases are handled by the Township, District, State or Regional Courts and the Supreme Court according to the amount requested for compensation. Disputes can also be amicably solved by negotiations or third party mediation.

Enforcement TIPS and WATCH-OUTS in Myanmar

  • In Myanmar, there is no system for registration of trade marks or for a statutory title to a trade mark. Thus, the rights of the parties setting up rival claims to ownership of a trade mark must be determined in accordance with the principle of common law based on ‘prior use’ rather than ‘first to file’.
  • To prove the 'actual use’ of a trade mark in a civil suit in Myanmar is very important to achieve a better right over a mark. According to the current practice, as theoretically more than one person can claim the ownership of the same mark, you shall be aware that using your mark first and prior to another party will be very helpful to establish IP rights over your mark.
  • Due to the rather complicated judicial system in Myanmar, when possible, it is recommended to solve your IP disputes amicably by negotiations or conciliations for the sake of efficiency and time saving. 
  • Criminal action under the Penal Code is possible against a person using a false trade mark or a counterfeit trade mark, making or possessing any instrument for counterfeiting a trade mark or selling goods marked with counterfeit trade marks.

 

RELATED LINKS and Additional Information

IPR Helpdesk Blog

TEAR-OUT supplement

Tear-out Supplement

There are two (2) main avenues for enforcement in Myanmar: criminal enforcement and civil enforcement. In Myanmar, intellectual property rights are not subject to special codified legislation, and are resembled to general property rights. The enforcement avenues reflect the current system. Currently, IPR infringement cases are handled through a rather complicated judicial system with no less than 5 (five) judiciary levels: the Township, District, State or Regional Courts and the Supreme Court. It explains why disputes are usually amicably solved by negotiations or conciliations.

Civil Litigation

IPR infringement cases are handled by the Township, District, State or Regional Courts and the Supreme Court according to the amount requested for compensation. The relevant documents to initiate a civil lawsuit in Myanmar would need to be drafted on an ‘ad hoc’ basis by lawyers licensed to represent clients in the country.

Criminal Prosecution

The relevant documents would need to be drafted on an ‘ad hoc’ basis by lawyers licensed to represent clients in Myanmar.

Customs Enforcement

The Myanmar Customs Department is competent for complaints in relation to a shipment containing counterfeit goods upon request. No official forms are available according to the inputs received by local External Experts and no forms are available on the official website of the Myanmar Customs Department, however, the official website has a specific page with a “Contact Us” form (https://www.myanmarcustoms.gov.mm/Contact%20Us) though which SMEs can leave a specific message to liaise with the local Customs and receive advice on necessary steps according to the local regulations. The service is available in English.