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Thursday, June 7, 2012

Myanmar - An IP regime expecting changes

Myanmar is suddenly in the spotlight, having freed Aung San Su Kyi, followed this with elections and is now allowing a measure of democracy. The EU has lifted sanctions and the US will probably follow, now Hilary Clinton has even visited. The business world is suddenly getting interested.

Myanmar has an antiquated IP system. Colonial British common law applies. A number of old (many but not all, pre independence) cases from Burma especially on trademarks can be considered precedential and helpful for interpretation.

A. Trademarks

Trademarks are defined in the Penal Code.  Common law from the old cases assists with interpretation of trademark concepts. The Registration Act governs registration. Registration of marks takes place by means of a Declaration of Ownership filed at the Register of Deeds in Yangon. Amendments can be filed too. Because marks are not officially published, IP owners typically publish a Cautionary Notice in local newspaper. Although there is no renewal system sometimes 3 years is taken as the period required to re-register and re-publish. No official trademark search is available but you can search the newspaper records.

Infringement is punishable under the Merchandise Marks Act which prohibits false trademarks as a criminal offence under the Penal Code. But very few cases were brought in recent years.

B. Copyright

The colonial era 1914 Copyright Act, based on the 1911 UK Act is in force. Again English law may be used to help interpret this, and there are several recorded recent civil cases concerning local novels and films. Myanmar was not a Berne member so foreign copyrights were not recognized. However after it joined the WTO, Berne is incorporated into the TRIPS agreement so foreign copyrights should now be protected although there have been claims otherwise.

C. Patents and Designs

There is no patent law or patent office. It is possible to register a patent or a design under the Registration at the Register of Deeds, then publish a cautionary notice. This would give rise to some level of protection, although what precisely is not clear. During the coming years until IPR laws are drafted, passing off might also assist. There are old cases from the 1960s on designs and a 1990s patent case over a pharmaceutical product.

D. Passing Off

Common law passing off law applies to deceptive practices harming the goodwill of others. Judge made case law (common law) applies as precedent, and a number of old Burmese cases exist. Possibly more recent English and Indian cases can be relied on too, although their status post independence may be influential rather than precedential.  The Merchandise Marks Act covers false trade descriptions.

E. Enforcement

After independence the courts had few commercial cases. Burma law reports did continue to be published and a number of IP cases occurred including the 1968 John Walker & Sons case, a case on copyright in a novel which led to a damages award, and in 2002, U Tin Latt v U Kyaw Nyein which concerned whether a temporary injunction should be granted.

Criminal penalties in theory apply for counterfeiting under the penal code. The Colonial Sea Customs Act is still in force so in theory Customs may prevent the entry of counterfeit goods.

The Attorney General's office is tasked with drafting IP laws. A new trademarks law is proposed for 2013. A number of local law firms practice IP law, but their practices comprises mainly registration of marks and publishing cautionary notices.

IP Komodo has not been to Myanmar for 12 years, so looks forward to reports from upcoming visits by various friends.

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