By Kyaw Kyaw (Dominance Literature)

 

AS MYANMAR continues its integration into the regional and global economy, the protection and enforcement of rights, both personal and com­mercial, have become increasing­ly significant. The emergence of new IP laws, along with reforms in the civil litigation framework, sig­nals a progressive shift towards a more robust legal environment. These developments reflect the country’s commitment to uphold­ing the rule of law, promoting in­novation, and ensuring fair access to justice.

 

Intellectual Property litigation

 

Intellectual property Litiga­tion is essentially the enforcement of exclusive rights in inventions, brand identifiers, and creative works. Intellectual property Liti­gation is governed by specialized statutes and international Agree­ments (eg, TRIPs Agreement) and Treaties.

 

Civil litigation generally en­forces private obligations (Breach of Contracts, Performance of Contracts, Property Rights, Partitions, Administrative Suits, Declaration Suits, Cancellation Suits and Commercial Disputes) recognized under civil or com­mercial law.

 

The Supreme Court of the Un­ion of Myanmar has established specialized Intellectual Property Courts and issued a Procedure for Adjudicating Cases under the Trademark Law, and notifications outlining procedures for handling trademark infringement cases. These procedures are essential provisions for effective intellec­tual property protection.

 

This paper will focus on trade­mark law, even though intellectual property laws are a broader field, because trademark law provides specific protection for brands and unique identifiers, which is a cru­cial aspect of business and com­mercial activity. While other areas of intellectual property law, such as patents and copyrights, and industrial design protect different types of creations, trademarks are particularly relevant for distin­guishing goods and services and preventing unfair competition.

 

The IPR courts in Myanmar can, under Section 81, issue vari­ous orders in cases of trademark infringement, while also empha­sizing the need for proportion­ality and consideration of other stakeholders’ interests. In detail, an IPR Court has the authority to issue one or more of the follow­ing orders, keeping in mind that these orders do not supersede any civil-related laws or the Code of Civil Procedure in suits under subsection 77(b) of Myanmar Trademark Law.

 

Provisional Measures Or­der: (Section 79)

 

(a) The Intellectual Property Court may order

 

(i) an order as it thinks fit to prevent the infringement of the mark and to prevent the entry into the channels of commerce of the State of mark-infringing goods;

 

(ii) an order as it thinks fit to preserve relevant evidence in regard to the alleged mark-in­fringing goods;

 

(iii) an order to modify, revoke or confirm the order of suspension issued by the relevant Customs Department.

ex parte order (Section 80)

 

(a) The Intellectual Property Court may make an ex parte order of the provisional measures.

 

(i) where any delay is likely to cause irreparable harm to the rights holder;

 

(ii) where there is a demon­strable risk of evidence being destroyed.

 

Compensation for false claims (Section 82 of TML)

 

Orders requiring the other party to submit evidence (Section 83 of TML)

 

(1) Institution of Civil reg­ular suits under the Trademark Law

A Civil regular suit may be instituted according to section 2(d) of the Trademark Law either by the right holder himself or by a person who is authorized to act on his behalf under any law in force. (Article 8 of The Procedures for Adjudicating Cases under TML)

 

In relation to applications to declare a mark registration inva­lid and cancel it, the provisions of Chapters 15 and 19 shall be carried out. (Article 10 of The Procedures for Adjudicating Cases under TML)

 

The plaint shall be written under the Code of Civil Proce­dure. In addition, the reason for the mark rights infringement, the amount of money claimed, and the calculation thereof shall be fully presented. (Article 11 of The Procedures for Adjudicat­ing Cases under TML)

 

The intellectual property rights court shall open and main­tain a separate civil case regis­tration book for lawsuits alleging intellectual property rights in­fringements under the intellectual property rights laws, including the Trademark Law. This registration book shall be named “Civil Case Registration Book Related to In­tellectual Property Laws”. The case numbering shall follow the format “Civil Case No. - …/2023 (Intellectual Property Rights)”. (Article 12 of The Procedures for Adjudicating Cases)

 

Plaintiff includes any person from or through whom a plaintiff derives their right to sue. (The Limitation Act Section 2(8))

 

Defendant includes any person from or through whom a defendant derives his liability to be sued. (The Limitation Act Section 2(4))

 

Applicant includes any per­son from or through whom an applicant derives their right to apply. (The Limitation Act Sec­tion 2(1))

 

The plaintiff or applicant

 

Right holder means any natu­ral person or legal entity who has the right to a registered mark, that is to be regarded as the own­er of a mark or a well-known mark or a geographical indication or a trade name or a transferee or a licensee of the registered mark. (The Trademark Law Section 2(s))

 

The copy of the certificate of a registered mark and documents certified and sealed by the Reg­istrar may be presented as evi­dence in the relevant Intellectual Property Court. (The Trademark Law Section 96)

 

The defendant

 

In cases brought under the Trademark Law, the person who infringes any of the trademark right, copyright right, patent right or industrial design right provid­ed for in the Law may be sued as a defendant. The person who infringes the rights relating to a trademark, registered or un­registered well-known mark and trade name, registered regional indication, and the person who is in possession of the infringing goods for commercial purposes, such as manufacturing, import­ing, or selling, may also be sued as a defendant. (Article 13 of the Q & A relating to the Trademark Law)

 

Issue and Service of Sum­mons

 

Upon receipt of the plaint, the Intellectual Property Rights Court shall instruct the plaintiff to immediately serve the writ of summons on the defendant. The plaintiff shall serve the writ of summons on the defendant at his own costs, and shall also send a copy of the plaint to the defendant along with the writ of summons. (Article 13 of The Procedures for Adjudicating Cases under TML)

 

The plaintiff shall submit an affidavit to the intellectual prop­erty rights Court stating that he served the writ of summons on the defendant on or before the date set by the intellectual prop­erty rights Court. If he fails to do so, the intellectual property rights Court may dismiss the plaint or set a new suitable date. If the plaintiff fails again to do so on the newly set date, the intellectual property rights Court may close the case. (Article 14 of The Pro­cedures for Adjudicating Cases under TML)

 

Evidence to be presented by the plaintiff when suing for damages

 

16. If the plaintiff sues for damages, he has to present evi­dence showing the following:

(a) That he is a rights holder under the Trademark Law;

(b) that the defendant used the mark and that such use harmed the interests of the right holder;

(c) that the right holder’s mark is identical or similar;

(d) that the public or consum­ers are being misled;

(e) Other evidence required to verify the occurrence of dam­ages and the amount of the dam­ages. (Article 16 of The Proce­dures for Adjudicating Cases under TML)

 

When claiming a famous mark, evidence has to be provided that the mark is famous, irrespec­tive of whether it is registered or unregistered, and that the claim­ant owns it. (Article 17 of The Procedures for Adjudicating Cases under TML)

 

If a lawsuit is filed in an intel­lectual property rights Court re­garding an infringement of mark rights and the defendant argues that the intellectual property right obtained by the plaintiff is invalid and the case between the same parties is pending at an intellec­tual property rights court vested with jurisdiction under section 66, the original court that is hearing the infringement case may sus­pend proceedings until the other court has finished its examination. (Article 18 of The Procedures for Adjudicating Cases under TML)

 

A person who wants to show that a mark has been registered shall submit the original or a certified copy of the mark regis­tration certificate. (Article 19 of The Procedures for Adjudicat­ing Cases under TML)

 

Taking action against goods that infringe mark rights

 

In lawsuits filed for mark in­fringement, appropriate orders may be made to prevent infringing goods from entering commercial channels under section 81(a)(1) of the Law, remove them from commercial circulation or de­stroy them under section 81(a) (3) of the Law, and remove from commercial circulation or destroy the equipment used for manufac­turing these goods. (Intellectual Property Right Form-1) (Article 20 of The Procedures for Ad­judicating Cases under TML)

 

Institutions of civil regular suits, provisional measures and Judicial review

 

The right holder may file a civil miscellaneous case for their grievance in the Intellectual Prop­erty Court to order provisional measures under sections 79 and 80. (Section 77(a)of The Trade­mark Law)

 

The right holder may file a criminal or civil case in the Intel­lectual Property Court. (Section 77(b)of The Trademark Law)

 

The Intellectual Property Court shall presume that a mark protected under this Law is in­fringed where any other third par­ty exercises any right contained in section 38 in the State without the consent of the owner of a mark. (Section 78(a) of the Trademark Law)

The Intellectual Property Court shall presume that the use of a sign which is identical with or similar to an unregistered well-known mark in relation to goods or services which are identical with or similar to those, without the consent, is likely to cause confusion to the public. (Section 78(b) of the Trademark Law)

 

A framework used by the United States Patent and Trade­mark Office (USPTO) and courts to assess the likelihood of con­fusion between two trademarks. The analysis involves considering a set of factors, often referred to as the DuPont factors, to make a comprehensive evaluation. These factors help in determining whether the use and registration of a later-filed mark are likely to confuse with an earlier existing mark.

 

E.I. DuPont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973 held that

 

Similarity or Dissimilari­ty of the Marks: Examines the visual, phonetic, and conceptual similarities between the marks in their entireties. Similarity or Dissimilarity of the Goods or Ser­vices. Fame of the Prior Mark: Considers the level of recogni­tion and reputation of the earlier mark. A famous mark is afforded greater protection against similar marks. Similarity or Dissimilarity of Trade Channels: Looks at the distribution channels and market­ing channels used for the goods or services. Conditions and Degree of Purchaser Care. Strengths or Weaknesses of the Marks. Evi­dence of Actual Confusion.

 

Joined Cases C-449/18 P & C-474/18 P, CJEU, Sept. 2020 held that Facts/Issue: Footballer Lionel Messi applied for an EU figurative mark “MESSI” (for clothing, sports gear, etc). This was opposed by J.M.-E.V. on pri­or marks “MASSI” (for similar goods). The EUIPO Opposition Division and Board found “MES­SI” and “MASSI” visually/aurally similar and likely confusing. The General Court annulled those decisions, citing Messi’s fame. The CJEU was asked whether the GC correctly allowed Messi’s mark by treating his celebrity as a differentiating factor. EUIPO v Messi Cuccittini

 

(2) Applications for a provi­sional measures order

 

The intellectual property rights court shall open miscella­neous civil proceedings for a right holder to apply for the imposition of a provisional measures order under section 79 of the Law and a unilateral provisional measure order under section 80 of the Law. (Article 21 of The Procedures for Adjudicating Cases under TML)

 

Applications for a provisional measures order under the intel­lectual property laws against the infringement of rights (including applications for a unilateral pro­visional measures order) shall be entered into the registration book for miscellaneous intellec­tual property cases of the Intel­lectual Property Rights Court. The case numbering shall follow the format “Miscellaneous Civil Case No. - …/2023 (Intellectual Property Rights)”. (Article 22 of The Procedures for Adjudicat­ing Cases under TML)

 

The applicant:

 

(a) Shall, when applying for provisional measures orders un­der section 79 of the Law, pres­ent evidence that he is a rights holder and that the respondent infringes or is likely to infringe his rights, and in addition, any other evidence that the intellectu­al property rights court instructs him to present.

 

(b) Shall, when applying for a unilateral provisional measures order under section 80 of the Law, state that a delay will cause irrep­arable harm to the right holder, or that there is an actual risk of evidence being destroyed.

 

(c) Shall present these ele­ments together with an affidavit or affidavits. The affidavit shall state that the facts presented in the application are true. The ap­plicant shall submit the required documents to the intellectual property rights court at the time determined by the intellectual property rights court. (Article 23 of The Procedures for Ad­judicating Cases under TML)

 

The intellectual property rights court shall instruct the applicant to immediately serve the writ of summons on the re­spondent, except in cases where a unilateral provisional measures order under section 80 of the Law may be made (Intellectual Property Rights Form-2). The applicant shall serve the writ of summons on the respondent at his own costs, and together with it, he shall send copies of the application and the affidavits in support of the application to the respondent. (Article 24 of The Procedures for Adjudicating Cases under TML)

 

The applicant shall submit an affidavit to the intellectual property rights court stating that he served the writ of summons on the respondent on or before the date set by the intellectual prop­erty rights court. If he fails to do so, the intellectual property rights court may reject the application or set a new suitable date. If the respondent fails again to do so on the newly set date, the intellectual property rights court shall reject the application. (Article 25 of The Procedures for Adjudicating Cases under TML)

 

The respondent shall file a rebuttal of the application within 15 days from the receipt of the writ of summons or until the date determined by the intellectual property rights court. Together with it, the respondent shall sub­mit an affidavit that he believes all elements in the rebuttal to be true to his knowledge. He may enclose documents and evidence that he wants to submit. If the respond­ent fails to file a rebuttal until the date set by the intellectual property rights court, he may be treated as if no defence was made in his absence. (Article 26 of The Procedures for Adjudicating Cases under TML)

 

With regard to an application for a provisional measures order or a unilateral provisional meas­ures order, the intellectual prop­erty rights court may instruct the applicant to deposit sufficient security in cash or a guarantee on such terms as it may deem fit. (Intellectual Property Rights Form-3) (Article 27(a) of The Pro­cedures for Adjudicating Cases under TML)

 

If the applicant does not comply with the instructions of the intellectual property rights court to deposit cash security or a guarantee within the determined time period, the intellectual prop­erty rights court shall reject the application. (Article 27(b) of The Procedures for Adjudicating Cases under TML)

 

The Intellectual Property Rights Court:

 

(a) Shall make issue such order as it may deem fit under section 79(a) of the Law with re­gard to an application.

 

(b) Shall notify the provision­al measures order to the respond­ent. (Intellectual Property Rights form-4)

 

(c) Shall act in accordance with section 94(c), Rule 2 Order 39 Code of Civil Procedure if the provisional measures order is not complied with. (Article 28 of The Procedures for Adjudicating Cases under TML)

If the intellectual property rights court made a unilateral provisional measures order, it shall notify the respondent with­out delay.

 

(b) The unilateral provisional order shall be enforced according to section 80(b)(2) of the Law if the respondent does not comply with the order within the time determined by the intellectual property rights court or within 30 days from the date of issuance of the notice if there is no such determination.

 

(c) If the respondent applies for the unilateral provisional measures order to be amended or cancelled, the intellectual prop­erty rights court shall hear the parties within a reasonable period and issue an order amending, cancelling or confirming the uni­lateral provisional order accord­ing to section 80(c) of the Law.

 

(d) If the respondent does not comply with the order amend­ing or confirming the unilateral provisional measures order, the intellectual property rights court shall act in accordance with sec­tion 94(c), Rule 2 Order 39 Code of Civil Procedure.

 

30. If the applicant does not file a lawsuit for damages within the period determined by the intellectual property rights court or within 30 days if there is no such determination, the intellec­tual property rights court shall, without prejudice to section 80(b) of the Law, at the request of the respondent lift or terminate the effect of provisional measures orders imposed under section 79(a) or section 80(a) of the Law. (Article 29(a) of The Procedures for Adjudicating Cases under TML)

 

If the provisional order is lift­ed or terminated, or if it is found that there is no infringement of mark rights or that no infringe­ment is likely, the intellectual property rights court may, at the request of the respondent and after hearing both parties, order the applicant to pay appropriate compensation to the respondent for the damages caused by the applicant’s acts. (Article 31 of The Procedures for Adjudicat­ing Cases under TML)

 

The intellectual property rights court may order the com­pensation to be paid from the se­curity deposit submitted by the applicant to the court. (Article 32 of The Procedures for Ad­judicating Cases under TML)

 

Effect of the provisional measures order

 

A provisional measures or­der is effective only until a judge­ment is passed in the lawsuit filed for infringement of an intellectual property right under the Trade­mark Law, unless the relevant intellectual property rights court issues an order at the request of the respondent lifting it or terminating its effect. Chapter 6 (Article 33 of The Procedures for Adjudicating Cases under TML)

 

(TO BE CONTINUED)