By Kyaw Kyaw (Dominance Literature)

 

(Continued from yesterday)

 

Application to the intellectual property rights court against a decision of the Agency (Judicial Review)

 

A person who is not satisfied with a decision of the Agency may apply to the relevant intellectual property rights court according to section 66 of the Law within 90 days from the date of having received the notice of the decision. (Article 34 of The Procedures for Adjudicating Cases under TML)

 

The person who may apply to the intellectual property rights court against a decision of the Agency shall have been a party to the appeal filed with the Agency [against a decision of the Registra­tion Officer]. (Article 35 of The Procedures for Adjudicating Cases under TML)

 

The intellectual property rights court’s judgement on an application against a decision of the Agency is binding on the Agency, and the Agency and the beneficiaries of its decision shall be included as respondents. (Ar­ticle 36 of The Procedures for Adjudicating Cases under TML)

 

Regarding the person who will act as representative in the application to the intellectual property rights court against the Agency’s decision, the Code of Civil Procedure and other relevant laws in force shall be complied with. (Article 37 of The Proce­dures for Adjudicating Cases under TML)

 

The intellectual property rights court shall enter the ap­plications for amendment and cancellation of the Agency’s de­cision in the “Registration Book for Intellectual Property Rights Applications”. (Intellectual Prop­erty Rights Form-5) (Article 38 of The Procedures for Adjudicat­ing Cases under TML)

 

Certified copies of the deci­sion or order of the Agency that the intellectual property rights court should review and decide about, and of the case file, shall be enclosed with the application, as well as an affidavit or affidavits supporting the application. 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 39(a) of The Procedures for Adjudicating Cases under TML)

 

Upon receipt of the appli­cation, the intellectual property rights court shall verify whether the elements in sub-section (a) are fulfilled, and if they are, shall open miscellaneous civil proceedings. The case numbering shall follow the format “Miscellaneous Civil Case No. - …/2023”. (Article 39(b) of The Procedures for Adjudi­cating Cases under TML)

 

Then, the intellectual proper­ty rights court shall instruct the applicant to serve the writ of sum­mons on the respondent. (Intel­lectual Property Rights Form-6) The applicant shall serve the writ of summons on the respondent at his own costs, and together with it, he shall send to the respond­ent copies of the application and of the affidavits in support of the application, a copy of the Agency’s decision [or?] order, and a copy of the case file or case record. (Arti­cle 39(c) 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 39(d) of The Procedures for Adjudicat­ing Cases under TML)

 

The respondent(s) shall submit two sets of replies to the intellectual property rights court before the hearing date. (Intel­lectual Property Rights form-7) Together with it, the respondent shall submit an affidavit that the respondent believes all elements in the reply to be true to the re­spondent’s knowledge. The re­spondent may enclose documents and evidence that the respondent wants to submit. If the respondent fails to submit a reply by the date set by the intellectual property rights court, the respondent may be treated as if no defence was made in the respondent’s absence. A reply may be amended or sub­stituted for another reply with the permission of the intellectual property rights court. (Article 39 (e) of The Procedures for Adju­dicating Cases under TML)

 

Apart from the evidence pre­sented at the Agency, no oral or written evidence shall be admit­ted. However:

 

(a) The intellectual property rights court may, for making an order or for any other valid reason, if necessary, allow the presenta­tion of evidence and documents and allow the cross-examination of witnesses.

 

(b) The intellectual property rights court shall give the reasons in writing when allowing addition­al evidence to be presented.

 

Impact and binding effect of the intellectual property rights court’s judgment on the Agency’s decision. (Article 40 of The Pro­cedures for Adjudicating Cases under TML)

 

If the intellectual property rights court approves the Agen­cy’s decision, it shall reject the applicant’s application. If the in­tellectual property rights court grants the applicant’s application, it may issue an order cancelling the Agency’s decision or any other order it deems appropriate. (Ar­ticle 41 of The Procedures for Adjudicating Cases under TML)

 

If the intellectual proper­ty rights court issues an order cancelling the Agency’s decision, a copy the intellectual property rights court’s order shall be sent to the Agency. Chapter 7 (Article 42 of The Procedures for Adju­dicating Cases under TML)

 

(4) Application to the Intel­lectual Property Rights Court against a suspension order of the Director General of the Customs Department (Judicial Review)

 

The intellectual property rights court shall open miscella­neous civil proceedings for appli­cations according to section 72 of the Law to review a suspension order of the Director General of the Customs Department. (Ar­ticle 43 of The Procedures for Adjudicating Cases under TML)

 

The intellectual property rights court’s judgement on an application against a suspension order of the Director General of the Customs Department is binding on the Customs Depart­ment, and the Director General of the Customs Department and the beneficiaries of the suspen­sion order shall be included as respondents. (Article 44 of The Procedures for Adjudicating Cases under TML)

 

The suspension order of the Direc­tor General of the Customs Department shall be enclosed with the application. In addition, other documents required to support the applications of the applicant (importer) may also be submitted. (Article 45 of The Procedures for Adjudicating Cases under TML)

 

The application shall be entered into the registration book for intellectual prop­erty rights applications of the Intellectual Property Rights Court. (Intellectual Prop­erty Rights Form-5) The case numbering shall follow the format “Miscellaneous Civil Case No. - …/2023”. (Article 46(a) of The Procedures for Adjudicating Cases under TML)

 

Then, the intellectual property rights court shall instruct the applicant to im­mediately serve the writ of summons on the respondents, unless it deems that the application should be heard ex parte. (In­tellectual property rights form-6(a)) The applicant shall serve the writ of summons on the respondent at his costs, and togeth­er with it, he shall send to the respond­ent copies of the application and of the affidavits in support of the application, a copy of the suspension order of the Direc­tor-General of the Customs Department, and a copy of the case file or case record. (Article 46(b) 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 46(c) of The Procedures for Adjudicating Cases under TML)

 

The respondent(s) shall submit two sets of replies to the intellectual proper­ty rights court before the hearing date. (Intellectual property rights form-7(a)) Together with it, the respondent shall submit an affidavit that the respondent believes all elements in the reply to be true to the respondent’s knowledge. The respondent may enclose documents and evidence that the respondent wants to submit. If the respondent fails to submit a reply by the date set by the intellectual property rights court, the respondent may be treated as if no defence was made in the respondent’s absence. A reply may be amended or substituted for another reply with the permission of the intellectual property rights court. (Article 46(d) of The Procedures for Adjudicating Cases under TML)

 

If so, instructed by the intellectual property rights court, the Customs De­partment is responsible for sending the required documentary evidence to the intellectual property rights court. (Article 47 of The Procedures for Adjudicating Cases under TML)

 

According to section 72 of the Law, the intellectual property rights court shall amend, cancel or confirm the suspension order within 30 days from the date on which a review of the suspension order of the Director General was requested. (Article 48 of The Procedures for Ad­judicating Cases under TML)

 

If the intellectual property rights court issues an order cancelling the suspension order of the Director-General of the Cus­toms Department, a copy of the intellectual property rights court’s order shall be sent to the Customs Department. (Article 49 of The Procedures for Adjudicating Cases under TML)

 

Applicable Laws

 

The Intellectual Property Court may apply the provisions in the Evidence Act, the Code of Criminal Procedure and the Code of Civil Procedure and other relevant existing laws if it is not provided expressly in this Law in respect of the enforcement actions for infringement of a mark. (Sec­tion 86 of The Trademark Law)

 

(5) Essential elements of civil litiga­tion

 

Civil litigation is governed by the Civil Procedure Rules and involves each party trying to prove their right on a balance of probabilities, usually before a judge. Parties to the civil litigation must comply with the Civil Procedure Rules, although these Rules vary depending on the type of case and value of the relief.

 

Framing of issues is a very impor­tant stage in civil litigation, and it is the bounden duty of the Court that due care, caution, diligence and attention must be bestowed by the Presiding Judge while framing issues. Framing issues entirely depends on material propositions of which are disclosed in the pleadings.

 

The essential elements of civil litiga­tion are (1) Right to sue, (2) Cause of action, and (3) Form of suit. In many cases, the Courts frame preliminary issues regarding the maintainability of the suit.

 

The first essential element of civil litigation is that the plaintiff must have the right to sue. The word right to sue, or right to file a lawsuit in Court, is the right to seek relief by means of a legal proceeding.

 

The Courts shall have jurisdiction to try all suits of a civil nature, excepting suits of which their cognisance is either expressly or impliedly barred.

 

The question as to when exactly the right to sue accrues depends upon the particular facts of the case.

 

The second essential element of civil litigation is that the cause of action must be disclosed in the plaint.

 

The cause of action is a set of facts or circumstances that a plaintiff is required to prove; all essential facts establish the right.

 

The expression “the cause of action”, in a comprehensive sense, includes “the right to sue” within the meaning of Article 120 of the Limitation Act, and it comprises.

 

Cause of action means every fact which, if traversed, will be necessary for the plaintiff to prove to support his right to the judgment of the Court. The cause of action must be antecedent to the insti­tution of the suit. When the plaintiff files his suit for any relief before he is entitled to it, his suit is bound to fail for want of a cause of action. Order 7 Rule 11 in very clear terms lays down that the plaint shall be rejected where it does not disclose a cause of action.”

 

The third essential element is that the form of the suit must be correct. The form of suit means the remedy must be consistent with the legal situation.

 

The question of whether the form of suit is correct or not must be judged only on the basis of the pleadings and not on the evidence taken. 10

 

The court has the power to pass an order regarding maintainability of prema­ture suit, adjusting equities and satisfying ends of justice, as it may deem fit in its discretion.

 

(6) Different Stages of a Civil Regular Suit in the Myanmar Judiciary

 

A civil suit is a private suit where someone sues someone else.

 

To institute a civil regular suit, some legal criteria shall be observed the Code of Civil Procedure, which must have a cause of action. There are some stages of civil proceedings that can be broadly categorized into (14) stages as follows:

 

(1) Presentation of the plaint (CPC: Section 26 & Order 4 Rule 1), (2) Issue and service of summons (CPC: Section 27 & Order 5 Rule 1). The appearance of the parties and Ex-parte decree (CPC: Order 9, Rule 6(1)), (3) Discovery (CPC: Order 11, Rule 1), (4) Filing of the written statement by the defendant (CPC: Order 8, Rule 1), (5) Examination of parties by the Court (CPC: Order-10) (6) Disposal of the suit at the first hearing (CPC: Order 15), (7) Framing of issues (CPC: Order 14) , (8) Hearing of the suit and examination of witness (CPC: Order 18 & 16), (9) Hearing to continue from day to day till completion (CPC: Order 17 and BCM para 157(10)), (10) Argument (BCM para 154(12)), (11) Judgment when pronounced (CPC: Order 20), (12) Contents of decree (CPC: Section 2(2) & Order 20), (13) Execution of Decree (CPC: Order 21)

 

(7) Resolving disputes

 

The disputes on the trademark rights may be settled by means of mutual con­sultation, amicably or arbitration, or by judicial proceedings. (Section 104 of TML) (Court-led mediation)

 

“I would like to conclude this article here. I trust that the insights shared will contribute meaningfully to supporting IP litigation and enhancing awareness in both civil litigation and Intellectual property enforcement.