Trademark Law

(PyidaungsuHluttawLaw No. )

ME Year 1373, Month , Day

(Year 2017, Month , Day)

PyidaungsuHluttaw hereby enacts this law.

Chapter(1)

Name, Commencement, and Definition

1. (a) This Law shall be called Trademark Law.

(b) This Law shall take effect commencing from the date determined and issued by the President.

2. The following words and expressions in this law shall have the meanings given here under:

(a) The State means the Republic of the Union of Myanmar.

(b) The Ministry means the Ministry of Education, Pyidaungsu Government (Union Government).

(c) The Committee means a Committee on intellectual property rights.

(d) Department means a Department that is assigned duties by the Ministry to undertake the matters regarding the intellectual property rights.

(e) Director General means a chief of the Department.

(f) Intellectual Property Rights mean rights, entitled by the law, to protect the inventions of the intellect. In a said expression, it is also included copyrights for literacy and artistic, and patents for invention, industrial designs, and trademarks.

(g) Mark means any visible sign capable of distinguishing the goods or services of one undertaking from those of other undertakings including names, letters, numerals, configurations, combination of colors, or any combination of these signs thereof. In

the said expression are also included: trademark, service mark, collective mark and certification mark.

(h) Trademark means a mark in the course of trade capable of distinguishing the goods of one enterprise from those of others.

(i) Service mark in the course of trade capable of distinguishing the services of one enterprise from those of other.

(j) Collective mark means any mark owned by an organization that is of collectively formed by industrialists, producers, and traders or of collectively formed by associations or corporations and any mark on the goods and services owned by the members of such organizations, which is capable of distinguishing from the other.

(k) Certification mark means a mark in connection with the goods or services as to the geographical origin, quality, class, and other characteristics, certified by the owner having rights to be used, under his or her control.

(l) Geographical indication means any indication which especially identifies the good as originating in the territory of a country, a region, or a locality where the relevant quality, reputation, or other characteristics of the good are essentially attributable to its geographical origin;

(m) Famous mark means any mark in accordance with the specified criteria to be well-known in the country.

(n) Trade name means a name or designation of enterprise identified in a course of trade capable of distinguishing from the other enterprise.

(o) Domain name means a person or legal entity recognized as the owner of a registered mark in a registration book of the Department;

(p) Right Holder means any person or entity, having rights over a registered patent mark, which is to be regarded as the owner of a mark, the owner of a famous mark, the owner of a geographical mark, the owner of a trademark, an assignee, or a licensee.

(q) Member State means any member of conventions, treaties, or agreements, or the relevant intergovernmental organization or regional organization in which the Republic of the Union of Myanmar is a member with regard to the intellectual property rights.

(r) Court means the court constituted according to this Law and assigned by the Supreme Court of the Union to examine and resolve any case of intellectual property rights. Said expression also includes the courts which existed prior to constituting the court by this Law, and imparted judicial power and rights by the Supreme Court of the Union to examine and resolve the cases of intellectual property rights.

(s) Registrar means an officer who undertakes a matter of the registration of the mark and whose position is not lower than the Director of the Department;

(t) Inspector means an officer who inspects for the registration of the mark and whose position is Staff Officer or higher than Staff Officer;

(u) Right of Priority means the right of priority contained in section 28 of this Law.

(v) Right of Priority in Trade Affairs means the right of priority related to trade affairs contained in section 29 of this Law.

Chapter (2)

Objectives

3. The objectives of this law are as follows:

(a) To develop more in trade and commerce by protecting the registered marks;

(b) To protect the interests and the owner of the registered marks and the right holder;

(c) To build a fair market competition system and to create a secure environment for the consumers by preventing the counterfeit marks and fake goods from entering into the market.

(d) To enhance the quality of local goods produced in the territory of the country and to develop more businesses of the people in the region through penetration into the international market by protecting geographical indications;

Chapter (3)

Constituting Committee and Its Functions

4. The Union Government shall:

(a) Constitute the Committee of Intellectual Property Rights, comprising of the Union Minister of the Ministry of Education as a Chairman, the relevant Vice Chairmen or Director Generals from the relevant Ministry, representatives of non-governmental organizations, experts, and scholars as members, and Director General of the Department as a secretary.

(b) Describe Vice Chairman and Joint Secretary among the members and assign duties to them when constituting the Committee.

(c) Amend and organize, as may be necessary, the Committee constituted by sub-section (a).

5. Functions and Duties of the Committee are as follows:

(a) Giving guidance and supervision in order to lay down national level policies, strategies, and projects so as to develop a system of the intellectual property rights properly in the country and to implement those functions;

(b) Giving recommendations inspiring the State to be a member of and to participate in the conventions, treaties, and agreements regarding the intellectual property rights.

(c) Constituting the required working groups and defining their functions and duties in order to take action in regards to violations of the rights related to intellectual property rights;

(d) Carrying out the functions and duties occasionally assigned by the Union Government regarding the intellectual property rights.

Chapter (4)

Functions of the Department

6. Department shall, in order to administer and implement the assignments, regarding the intellectual property rights, conduct the following functions and duties:

(a) Negotiating and incorporating the enterprises regarding the intellectual property rights.

(b) Implementing the national level policies, strategies, and projects laid down by the Committee regarding intellectual property rights;

(c) Studying and presenting for the Committee to inspire the State to become a member of the Conventions, Treaties, and Agreements regarding the intellectual property rights;

(d) Recommending and forming the required working groups and defining their functions and duties in order to take action in violation against the rights related to the intellectual property rights;

(e) Implementing in accordance with the provisions regarding the intellectual property rights contained in Conventions, Treaties, and Agreements in which the State is a member.

(f) Co-operating with relevant domestic organizations, international organizations, regional organizations, and Member States regarding the intellectual property rights.

(g) Protecting the high-quality goods produced regionally in order to develop more business of the regional people within the territory of the State;

(h) Approving a seal to be used for permitting enterprises in the registration of the intellectual property rights;

(i) Forming the working committees, as may be necessary, and prescribing their functions and duties for enabling the carrying out of the functions regarding the intellectual property rights.

(j) Imposing the fees to collect with the consent of the Union Government in accordance with this law.

(k) Publishing the subject matter of the registration regarding the intellectual property rights.

(l) Keeping and maintaining the registration books regarding the intellectual property rights.

(m) Undertaking functions and duties assigned by the Union Government, the Ministry, and the Committee regarding the intellectual property rights.

Chapter (5)

Appointment of Registrar and Inspector and

Describing Their Functions and Duties

7. Director General, with the consent of the Ministry, may assign the Registrar and the Inspector, necessary for carrying out the functions regarding the intellectual property rights;

8. The Functions and Duties of the Registrar are as follows:

(a) Guide and supervise the process of application for the registration of the mark and of inspection;

(b) Confer on the reports of the Inspector in carrying out the functions and duties related to the registration of the mark;

(c) Decide an approval for or a refusal of the registration of the mark;

(d) Undertake the functions and duties assigned by the Committee and the Department regarding the intellectual property rights.

9. The functions and duties of the Inspector are as follows:

(a) Inspect the application for the registration of the marks and regional indications;

(b) Examine an objection to and argument for regarding the application for the registration of the marks and report it, including comments, to the Registrar;

(c) Summon and question the required individuals on carrying out the functions and duties related to the registration of the marks and report it to the Registrar, as may be necessary, for a request of documents;

(d) Report to the Registrar, including comments, whether or not the permit shall be granted after the complete of inspection for the application of the marks.

(e) Undertake the functions and duties assigned by the Committee, the Department, and the Registrar regarding the intellectual property rights.

Chapter (6)

Non-registrable Trademark

10. If a mark is involved with the following factors and considered it to be a strong reason for refusal, such mark shall not be registrable:

(a) Lack of distinctiveness as a mark;

(b) Comprising only the marks or indications describing classes, connected content, quality, quantity, intended utility, value, geographical origin, production time, or other characteristics of goods and services;

(Exception: The factors from sub-section (a) and (b) shall not be denied regarding the registration of the marks if, in case, the following factors appear:

(1) Prior to the date applying for the registration of the mark, it has been prominent because of the use of it among consumers.

(2) The only applicant has been using that mark in an honest manner continuously and independently.

(c) Contradictary to the public order, morality, faith, and conscience which is the venerated and cherished culture of the State;

(d) Becoming a general usage, habitual usage, or applied usage in the trading circle in the current vocabulary in use;

(e) Regarding sub-section (b), misleading the public or trading circle;

(f) Using, without permission of the relevant authorities, whole or partial direct replication or duplication of any flag, symbolic emblem, or other signs of any country, using legal signs or quality assurance marks describing command or guarantee defined by any country, using commemorative features, flags, other emblems, names of intergovernmental organizations or abbreviation or initials of those organizations;

(g) Involving in the prohibited matter under any existing law.

(h) Using the emblems protected independently according to the international agreements in which the State is a member;

11. If a mark is involved in the following factors and it is considered to be a connected reason for refusal, such mark shall not be registrable:

(a) Misleading the people by using a mark identical or similar to a registered mark on the goods or services that is identical or similar to the goods or services of the registered mark;

Explanation: For such identical goods or services, it is presumed that using the identical mark is considered capable of misleading.

(b) Using, without permission of the relevant person or legal entity, the mark that is possibly in violation of the individual rights of any individual or to the name and reputation of any legal entity;

(c) Mark that possibly infringes the intellectual property rights of any other individual;

(d) Mark that applies for the registration in bad faith;

(e) Mark that applies for the registration is not only identical or similar to the famous mark, but it is also identical or similar to the goods so that it misleads the people;

(f) Mark that applies for the registration is, being identical or similar to the registered famous one but different in the goods or services, capable of indicating to have a connection between the owner of famous mark and the goods or services in use; and the mode of such using is capable of detrimental to the interest of the owner of famous mark;

Chapter (7)

Application

12. If an applicant for the registration mark as to this law would like to take advantage of the registration number of a patent, he or she must apply for the registration of the mark in accordance with the specified factors.

13. An applicant for the registration of the mark shall:

(a) Write the application for the registration either in Burmese language or English language;

(b) Translate, on request of the Registrar, the application in Burmese language into English language or the application in English language into Burmese language;

(c) Declare and put signature to authenticate if the translation is in accordance with sub-section (b);

14. (a) An applicant for the registration of the mark shall mention the following factors in the application of the registration:

(1) A request for the registration;

(2) Name and address of an applicant or legal entity;

(3) If the applicant authorizes a representative or an agent for the application, the name and address of that person;

(4) Clear and comprehensive expression of the mark;

(5) Goods and services, and names and classes of goods and services for which the registration is sought and grouped according to the international classification of the marks;

(b) In addition to sub-section (a), the following factors shall be, if necessary, mentioned:

(1) If the applicant applies for a legal entity, the registration number of that entity, class, and country name;

(2) If the applicant requests the rights of priority, the claim for the rights of priority along with the secured proof and declaration of why you have entitlement to it;

(3) If the applicant request for the rights of priority relating to the trade affairs, the claim for the rights of priority relating to the trade affairs along with the secured proof and declaration of why you have entitlement to it;

(4) If a mark for application is a mark that already registered at the Office of Documentation, a certified certificate that proves such registration;

(5) Other requirements occasionally defined by the Department.

15. A date the Department receives the application of the mark, subscribing the prescribed fees, in conformity with section (14)(a), shall be regarded as a day of submitting for the application of the mark.

16. (a) Where two or more applications register for the identical or similar mark on the different date, the one submitting the application the earliest shall have the right to the registration.

(b) If each applicant requests and applies for the rights to priority or the rights to priority for trade affairs according to sub-section (a), the one having been dated the earliest for the right to priority shall have the right to the registration.

17. Where two or more applications register for the identical or similar mark on the same date or request for the same date of priority:

(a) The Registrar shall direct to all applications to re-submit the name of a person whom they desire, through consultation among themselves, to prescribe as an applicant for the registration of the mark, within a reasonable period.

(b) The applicants shall, in accordance with the directive of the Registrar, report to the Registrar the name of a person who they have made, through consultation among themselves, an agreement to specify as an applicant.

(c) If no agreement is reached despite the directive nature of the Registrar according to sub-section (a), all applicants shall comply with the decision in accordance with a prescribed manner.

18. The applicant for the registration of the mark:

(a) may, subscribing the prescribed fees, apply and request to the Registrar to correct any written error or any other mistake that is allowable in any application, translation, or document prior to the approval or refusal of the registration of the mark by Registrar or before the Director General makes the decision regarding the appeal against the decision of the Registrar;

(b) May apply for a withdrawal of the application for the registration of the mark;

(c) May, subscribing the prescribed fees, apply and request to divide any application with several goods and services into two or more new applications, to limit or reduce in a provided list of goods or services without any extension;

(d) In case of submitting the new separated applications for the registration according to sub-section (c), the original date of the application is regarded to be a date of application submission.

19. The Registrar shall have the rights to examine and correct the factors of application contained in section (18) in accordance with the prescriptions.

Chapter (8)

Examining, Objection, and Registration

20. Inspector, regarding to the application for the registration of mark, shall:

(a) Examine whether or not the factors are in conformity with the rules of section (10) and section (14) and thereafter report the conformed application, including comments, to the Registrar.

(b) Examine whether or not the factors are in conformity with the rules of section (10) and section (14) and thereafter, shall notice the applicant about the non-conformed application to make correction and preparation, as may be necessary. If the applicant fails to amend and fulfill within 30 days from the date of notice, it is presumed that the application is withdrawn.

(c) Receive the application with the necessary correction within the period defined in sub-section (b) and then verify the stimulations and report it, including comments, to the Registrar.

21. The applicant applying for the registration of the mark shall or may:

(a) fail to comply with it within the defined period, and because of that, the loss of rights regarding the relevant application for the registration of the mark occurs, then he or she may re-apply for the registration of the mark if it is in conformity with the following factors:

(1) Submit a request within 60 days from the date of removal because of failing to comply the stimulations within the defined period; discard

(2) Submit by attaching all explanations, information, or required factors in regard to failing to comply with it within the defined period;

(3) describe the reasons at the request as to failing to comply within the defined period;

(4) Be in a situation that is found out by the Registrar that failure to comply within the defined period is unintentional;

(5) Already subscribed the fees;

(b) Make a request to re-attain the rights relating to the application within the period of appeal in accordance with sub-section (a), then the Registrar shall postpone.

22. The Registrar regarding the application for the registration of the mark shall:

(a) Verify and allow the request if the applicant has been re-applying for the registration of the mark according to section (21)(a) as to the application for the mark;

(b) Issue the statement to inform the people, if they may object, for objection to the application in conformity with section (1) and section (14);

23. In regard to the application for the registration of the marks, the person who opposes may, subscribing the prescribed fees, submit a letter of objection in writing with any sufficient reason defined in section (10) and (11) of this law within 60 days from the date of making a statement to Registrar.

24. If the Registrar, on receiving the letter of objection, shall send a notice letter to applicant in order to defend against objection within a defined period.

25. The Registrar, in regard to the application for the registration of the mark, may:

(a) Grant the application for the registration that mark if no letter of objection is submitted within 60 days from the date of making statement to the people;

(b) Examine the cause of objection whether in conformity with stipulations defined in section (10) or (11) if the letter of objection is submitted, and thereafter grant or refuse;

(c) Record about the grant or refusal of the registration in the registration book and notify the applicant; thereafter issue the statement of the grant or the refusal to the public in accordance with the defined manner;

(d) Produce a registration certificate to the applicant if the registration is granted.

26. Owner of the mark may:

(a) apply, subscribing the prescribed fees, to the Registrar to request the Department for issuing the true copy if the original registration certificate of mark is damaged or lost;

(b) apply, subscribing the prescribed fees, to the Registrar to make corrections about a written error in the recorded registration book and other mistakes that are allowed for correction, and the national citizenship and address;

27. The Registrar shall:

(a) Issue a real copy of the registration certificate of the mark after verifying the application contained in section (26) (a);

(b) Allow to make corrections after verifying the application contained in section (26)(a).

Chapter (9)

Right of Priority

28. If the applicant for the registration of a mark is a person who has filed an application for the registration of mark in a country of the Paris Convention or of World Trade Organization, or an assignee who has filed the identical goods or services and an identical mark, he or she may apply to register the mark at the Department within six months from the first filling date of the application; he or she shall have the right of priority if it accords with the following points, claim the date of filing of the first application for the registration in any of such foreign Member State so as to be determined as the filing date in the Union of Myanmar as right of priority:

29. In the member country of the Paris Convention or any Member State of World Trade Organization, where the goods and services with the identical mark were exhibited at the International Trade Affairs, that was conducted or acknowledged by the relevant government of the State; if the applicant applies that goods and services with the identical mark within six months from the beginning date of exhibition at the International Trade Affairs, the right of priority for trade affairs shall be granted.

30. Right to priority for trade affairs shall not exceed the period applied for the beginning date of receiving right to priority according to section (28).

Chapter (10)

Validity of Registration and Renewal of Registration

31. The validity of a registered mark is 10 years commencing from the filing date for the registration of mark. After the expiry of the 10 year validity of the registration, he or she could renew for 10 years at a time.

32. If the owner of the mark would like to renew the validity of the registration, he or she shall perform as follows:

(a) Apply subscribing the prescribed fees, for renewal within six month prior to the expiry date of the validity of the registration;

(b) Apply after the expiry date, he or she could apply within six months, as entitlement for special rights. When applying as such, he or she shall pay the prescribed the registration fees and late fees.

33. The Registrar:

(a) Shall allow the application for the registration renewal in conformity with the stipulations. The registration renewal shall come into effect from the expiry date of validity of a previous registration.

(b) shall examine the application for the registration renewal and if it is in conformity with the stimulations, he or she shall issue the statement of 10 years renewal in accordance with a given manner.

(c) Shall record about the registration renewal and subscribing fees at the registration books.

(d) Shall close the registration of the registered mark if subscription of fees, as a special right, for the registration renewal within six months is not materialized.

(e) Shall record about the closure of the registered mark as a closure of the registration in the registration books and issue the statement in accordance with a prescribed manner.

Chapter (11)

Rights relating to a registered mark of patent

34. If an owner of a mark may comply with the stipulations contained in section (10), he or she shall have the rights relating to the patent of registered mark.

35. The owner of the mark may, without impairment to the stipulations contained in section (36) and (37):

(a) As a separate right:

(1) Prohibit a third party, in accordance with this law, from using in a course of trade identical or similar signs for the identical or similar goods and services so that the public is mislead;

(Note: if in case of using the identical mark on the identical goods or services, it is regarded as misleading.

(2) file litigation against the infringer of his rights of registered mark, either criminal or civil action or both;

(3) prohibit a third party from using, without his or her consent, the mark identical to or similar to the registered famous mark at different goods or services if it is conformed with the following: (aa) it indicates as if there is an interrelation between the owner of registered famous mark and the goods or the services that has been used; (bb) it is detrimental to the interests of the owner of that mark.

(b) The owner of the registered mark may transfer or authorize the rights related to the registered mark, which are enjoyed by him or her, to another person in accordance with the stipulations contained in section (12) and (13).

36. The owner of the mark shall not be entitled to prohibit a third party from using in good faith in industrial or commercial purpose on the following matters:

(a) His or her own name or address;

(b) indications concerning the class, connected content, quality, quantity, intended purpose, value, geographical origin, production time of the goods or of rendering services, or other characteristics of goods or services;

(c) The mark where it is necessary to indicate the intended purpose of good or service, in particular as accessories or spare parts.

37. The owner of registered mark or a person having the consent of the owner shall not be entitled to prohibit from using his or her mark in relation to goods that he or she has been put on the market.

38. Notwithstanding anything contained in section (37), the owner of registered may, may, when the condition of the goods has been changed or impaired after they have been put on the market, consequently prohibit the sale of the said goods in accordance with the existing law.

Chapter (12)

Transfer of the Rights of Registered Mark

39. (a) The applicant for the registration of the mark may apply to the Department to transfer his or her application for the registration of the mark to either a person or legal entity in accordance with the stipulations;

(b) The owner of the mark shall transfer his or her patent of the registered mark to either a person or legal entity in accordance with the stipulations.

40. The registrar shall document the transfer of ownership, if the applicant or transferee on receiving the transfer according to section (39), or the owner of mark or transferee on receiving the transfer according to section (39)(b), may, subscribing the prescribed fees, request for documentation of the transfer of ownership and publish the statement to let the public know in accordance with a prescribed manner.

41. A request for documenting the factors of application for the registration or the transfer of ownership of the registered mark shall be in conformity with the stipulations.

42. If there is no application filed for documentation to the Department in regard to the transfer of ownership of the registered mark, such transfer of ownership shall not come into effect.

Chapter (13)

Authorization to use Registered Mark

Through the Terms and Conditions

43. The owner of the registered mark may license a person or a legal entity to use the registered mark by determining the terms and conditions.

44. The owner of the mark or licensee shall apply to the Department for documentation of licensing by subscribing the prescribed fees together with a true copy of licensing the document and the mark.

45. The registrar shall document the license according to section (44) and announce it in a given manner.

46. The owner of the mark or licensee may apply, if, in according with stipulations, to the Registrar for cancellation of the license documented, the Registrar shall cancel it from

documentation and publish to let the public know about it in accordance with the stipulations.

47. If there is no application filed for documentation to the Department in regard to the license, such license shall not come into effect.

Chapter (14)

Cancellation and Removal of Registration of Mark

48.

(a) If it is found out that any of the registered mark is involved with any of the points contained in section (g), any interested party may apply to the registrar for whole or partial cancellation of the registration of the said mark.At the request of any interested person that the mark is not in conformity with the given definition of section (2)(g) or that a reason for objection is as strong as contained in section (10), if it is found out with a solid evidences that the mark shall not get through the registration, the Registrar hereby shall publish the invalidation of the registration of such mark.

(b) With the application of any interested person that the mark shall not get through the registration due to any connected reason for the objection contained in section (11), and if is found out with a solid evidences, the Registrar hereby shall publish the invalidation of the registration of such mark;

(c) Regarding the application for announcement the invalidation of the registration of mark, one receiving of the final decision or judgement by the relevant Court, the Registrar shall announce the invalidation of the registration of mark;

(d) (1) A request for the announcement of invalidation contained in sub-section (a) may be applied in all times.

(2) With no intention of bad faith in the registration, a request for the announcement of invalidation contained in sub-section (b) shall not be applied after passing the terms of five year from the date of registration.

(e) If the reasons for the announcement of the invalidation are attached to only certain goods or services of the registered mark, the registration regarding those goods and services only shall be published as invalidation.

(f) The Registrar shall document the announcement of invalidation of the registered mark and then shall notice the owner of mark about the announcement of invalidation, and further shall also publish it to let the public know.

49. (a) In regard to using the mark, as to the application of any interested person, the Registrar shall terminate the registration of mark if it is found out having implicated in the following factors:

(1) Goods and services related to the registered mark have not been used for three years from the date of applying to the Department; and there is no enough reason for such failure of using;

(2) Failure to use the mark for consecutive three-year period commencing from the date of registration without any sufficient ground;

(3) At the registered mark, in descriptions or nowadays usage that indicates class, connected content, quality, quantity, intended purpose, value, geographical origin, and time of production, becomes the general usages or habitual usage, or becomes the common name in the trade circle with separate descriptions included.

(b) Where using the mark according to section (a), the following factors are included:

(1) Using the alternative pattern without altering the distinctive character of the mark;

(2) Using in the State, inclusive of intending to export for which attaching the mark on goods or attaching the mark on the package of such goods.

(c) On the requirement for giving the evidence of using the mark, according to this law including the period using the mark, the nature of using (or) the using field, the responsibility for such evidence is related to the only owner of the mark thereof.

(d) If the reasons for removal are connected to certain goods or servicesof the registered mark, the only registration related to such good and service shall be removed.

(e) After the removal of the registration of mark, it is presumed that such registration is legally terminated.

(f) The Registrar shall document the removal of the registered mark; next, shall notice to the owner of mark about that removal; further, shall publish it to let the public know.

50. No one shall use the mark being refused for the registration or the mark being removed from the registration for its implication with the section (10)(c).

Chapter (15)

Geographical Indication

51. Any legal entity representing the following persons of the locality in which the relevant good is produced desirous of the registration of a geographical indication shall apply to the Department in accordance with the stipulations:

(a) Persons who produce goods of natural products or natural resources;

(b) Producers of agricultural products;

(c) People who make handicraft or industrial products;

(d) All authorities inside the State, instead of the persons described from section (a) to (c).

52. (a) In applying for the registration of geographical indication, one shall apply in accordance with the prescribed manner, including the following factors:

(1) Name, nationality, and address of applicant’s organization or its representative

(2) Geographical indication for the application of the registration;

(3) Area which produces the geographical indication that are being applied for;

(4) Goods specified under the geographical indication;

(b) Along with such application, the following factors shall be mentioned:

(1) Characteristic or quality or reputation of good

(2) Precise quality specifying good, reputation or characters, geographical origin, and correlation between the production methods;

(3) A defined other factors.

(c) For the application, a prescribed registration fees shall be subscribed.

53. Geographical indication that involves with any of the following factors shall not be entitled for the registration:

(a) Being not in conformity with the definitions of geographical indication contained in section (2) (l);

(b) Being a general usage or habitual pattern among the publicly used vocabulary in the State to which the good uses that geographical indication;

(c) Being contradicted to the public order or morality, or public policy.

54. Any interested person or any relevant Department, and any organization shall apply to Registrar to announce invalidation or removal of the registration of geographical indication with the following reasons:

(a) Being not in conformity with the definition of geographical indication contained in section (2) (l);

(b) Being unable to keep carrying on in conformity with the requirements of the relevant factors specified in section (52) (b);

(c) international-graphical indications being not protected or being terminated protection in the country wherein the original indication produces or being not used in that country;

(d) Being as a geographical indication contradicting to the public order or morality, or public policy.

55. (a) Regarding the goods specified in the registration book, the persons carrying out its functions within a designated area shall use a registered geographical indication in a course of trade; however, those goods shall have a comprehensive nature of the quality, reputation, or other character as described in the registration book.

(b) For geographical indications with a synonym tone, whereas there is a significant difference in real life between the registered geographical indication and the later registered geographical indication with a synonym tone, only then the requirements such as a fair treatment to the relevant producers but not to mislead the consumers are considered for protection.

(c) A person who holds the rights of the registered geographical indication shall have a right to protect and prohibit the following matters;

(1) Regarding geographical indication of the good, the use of any means in the designation or presentation of a goods that indicates or suggests that the goods in question originates in a geographical area other than the true place of origin in a manner which misleads the public as to the geographical origin of the goods;

(2) Any use which constitutes an act of unfair competition;

(3) indicating geographical origin of the good, using the translation of geographical indication, using geographical indication attached with category, group, pattern, imitation, or a similar descriptions, using geographical indication for the good not from a defined a place of origin with a disputed geographical indication.

(d) Having the accurate description of province, region, or area, where the original goods are produced, other geographical indications, but it is describe to the public with an incorrect description as if the good is produced from another region, shall not be entitled the rights contained in sub-section (a) and (c).

56. (a) The Registrar shall examine the application whether or not in conformity with the section (51), (52), and (53), and if all requirements are in place, he or she shall publish the content and information of the application in accordance with the stipulations;

(b) The expressions related to objection of the mark shall be used, as may be necessary, for objection of geographical indication;

(c) If no objection is submitted or if the objection is refused, the geographical indication shall be registered.

57. (a) The term of the registration of geographical indication is up to 10 years.

(b) A person desirous of renewal after expiry of first 10-year term of the registration, may apply for an extension of the term of each registration term of 10 years at a time.

(c) A person who extends the term of the registration of geographical indication shall subscribe the prescribed fees for each extension of the term of the registration.

58. (a) Applying a geographical indication in accordance with this law, if the mark has been applied to register after applying to register geographical indication, whether in

violation of section (55) or in connecting with the identical good, the registration of mark being used shall be refutable.

(b) If it is found out that the marks being registered are implicated with sub-section (a), those marks shall be announced for invalidation.

(c) Prior to the registration of geographical indication, the registered mark or the mark being applied for the registration, but, in good faith has been used in violation of section (55), if it is not implicated with the expressions contained in Chapter (14), notwithstanding regarding the registration of geographical indication, it could be kept using for those goods. In such cases, the use of geographical indication has to be allowed as if it is using its mark in correlation.

59. (a) The relevant Department, organizations shall govern the protected geographical indications. Tasks relating to some governance could be assigned to other individual.

(b) The matter of governance shall include the following:

(1) The specifications of the registered goods as geographical indication shall be in conformity with the related goods;

(2) Using the names of the registered geographical indications at market;

(c) In order to conform to the specifications of the good, the benefit-related persons shall pay for the expenditures.

60. Regarding the infringement of the rights of geographical indication, the expressions taking action to infringer of the rights of mark shall be used as appropriate.

Chapter (16)

Trade Name

61. (a) Trade name shall be protected whether it is a part of the mark or not, even if that trade name is not registered.

(b) Due to the nature of a name or a specification, whether it is being used, if it contradicts with the public order or morality, especially if the nature of business described such name may likely be misleading the trading circle or the public, such name or specification shall not be used as a trade name.

(c) If using the mark being identical or similar to one trade name as other trade name or mark without permission results in misleading the public, a trade name shall be protected.

Chapter (17)

Applying for International Registration

62. After the State becomes a member of the International Mark Registration System Agreement, applicants, either from domestic or oversea, who want to register the mark, shall apply to the Department in accordance with expressions if they want to use the International Mark Registration System.

Chapter (18)

Appeal

63. (a) Any person aggrieved by the decision made by the Registrar may, within 60 days from the date of such decision, appeal to the Director General.

(b) The Director General may, on appeal under sub-section (a), confirm, set aside, or reverse the decision of the Registrar, or direct to take further evidence.

64. A person who is unsatisfied with the decision made by the Director General shall appeal to the Court that is of empowered with judicial power for this matter by the Pyidaungsu Supreme Court, within 90 days from the date receiving that notice letter of decision.

Chapter (19)

Constituting the Court

65. The Pyidaungsu Supreme Court:

(a) May, regarding the matter relating to the intellectual property rights, appoint the Judges by constituting the Courts in appropriate place in order to examine and determine the litigation of criminal case and civil case;

(b) May, confer the Judges, who have been appointed according to sub-section (a), with the judicial power and the privileges so as to examine and determine the cases related to intellectual property rights

(c) May, prior to constituting the Court according to sub-section (a), confer the judicial power and the privileges to the Courts that is being empowered to examine and determine the cases related to intellectual property rights.

(d) Shall specify the judicial power and the privileges of the Courts that have jurisdiction over the appeal and modification against the judgement, the order, and decisions determined by the Courts;

(e) Shall confer to the appropriate Court with the judicial power and privileges in order to examine the appeals against the decisions made by the Director General.

Chapter (20)

Protecting on Rights of Patent Mark By Customs

66. The Right holder who has sufficient grounds for suspecting that the mark is fraudulent, on being accused as such, has been imported or is being imported or will be imported inside the territory of the State, may submit the application, in accordance with stipulations, to the relevant Customs to issue suspension order on the said goods not to access freely through the trade route.

67. (a) The Customs:

(1) Shall notify the applicant about the acknowledgment or refusal of such application within 30 days from the date receiving the application according to section (66).

(2) Shall, if there is no sufficient information to verify the application factors, send the notice letter to the applicant for the decision taken and defer the case that the applicant shall supply further information in an appropriate time, not later than 10 working days from the date of issuing the notice letter.

(3) May direct the applicant to provide an assurance while receiving the application.

(4) Shall describe a clear reason why the application factor is refutable.

(b) If the Right holder requests nothing for a shorter period, the action contained in sub-section (a) may go into effect up to six months.

68. (a) The Custom officers shall, after receiving the application according to section (67), if it seems a reasonable evidences to assume that imported goods use the fraud mark, hereby suspend such goods from getting access to the trade route. Such suspension shall be immediately notified to the applicant and importers.

(b) In order to prove the claim of applicant is correct that those goods have used the fraud mark, the Custom may sufficiently question the applicant and the importer regarding the suspended goods, without disclosure the confidentiality of information.

69. (a) After noticing the suspension order to applicant, if the applicant, within the period not later than 10 working days, has not informed the Custom that he or she has started performing the notice to decide the case right or wrong during the period not more than 10 working days or it has been delayed due to the Court order: that is a temporary injunction order preventing the goods from flowing, such good shall be deregulated. In the appropriate case, such time period shall be extended 10 more working days by the decision of Custom officers taken before the end of the first period of 10 working days.

(b) If it is the perishable good, the defined period of 10 working days shall be reduced to 3 working days. It shall not allow reducing more than 3 working days.

70. Importer may, after receiving the notice of suspension order, appeal to the relevant Court, having judicial power, to review and to grant for hearing. The Court shall modify, revoke, or confirm the suspension period within the appropriate time, not later than 20 working days from the date requested.

71. If the Court decided that the good which used the fraud mark is verified, and then the importer shall pay the fees to Custom Office for expenses of maintenance, destroying, and setting-aside of those goods. If the Custom has not received those expenses from the importer, the applicant has the responsibility to pay for it; and as for any paid expenses, the applicant shall get it back from importer.

72. If the Court decided that the good used the fraud mark is unproven, the applicant shall pay for the compensation, as of an amount defined by the Court, to the importer for those expenses rising out of falsely suspension and temporary safeguarding of those goods.

73. The provisions contained in this Chapter shall not be related to the small quantities of goods, not for business purpose, carried as a traveler’s luggage with intention for personal use by the importer of the goods or the goods imported or exported only non-commercial nature.

74. The Custom officers may exchange the information and cooperate with the World Custom Organization, Custom authorities from other countries in respect of the goods accused of having used the fraudulent mark.

Chapter (21)

The Jurisdiction of the Court regarding Infringement on

The Rights of Patent

75. (a) Regarding infringement on the rights of patent, any aggrieved person may lodge the complaint to the Court for temporary action according to section (77) and (78).

(b) Regarding infringement on the rights of patent mark, any aggrieved person may file litigation to the Court to take action by way of criminal or civil action.

76. The Court:

(a) The other person, who is not the owner of the mark, exercises any rights contained in section (35), without getting the permission of the owner, in the State, it shall be presumed that he or she infringes the mark that is protected by this law.

(b) It is presumed that using and identical or similar famous mark for the identical or similar goods or services, without getting permission, is capable of misleading the public.

77. (a) The Court may, regarding infringement on the rights of patent mark, produce one of the following temporary order or more than one to take action for remedy by way of civil action if the complaint is according to section (75)(a):

(1) the Order that is appropriate to prevent the goods, that infringe on the rights of patent mark, including the import goods cleared of by the Custom, from getting access to the trade route of the State;

(2) The Order that is appropriate to maintain the evidence as it is, which is related to infringement on the rights of the patent mark that is accused.

(3) The Order that is to modify, to object, and to approve the suspension order issued by the relevant Custom office.

(b) The Court may request the applicant to provisionally perform the following factors:

(1) To submit any appropriate sufficient evidence in order to ensure that the applicant is the rights holder or such rights are being infringed or there is a potential for infringement;

(2) To deposit for surety in order to prevent the abuse of provincial performing.

(c) When performing provincially according to the Court’s order, the Court may direct the applicant to submit any further required information so as to identify the goods that is being accused of infringement.

(d) From the day the Court had started provincial performing on request, in order to make a final decision upon the aggrieved, if the litigation by way of civil action has not started within the period defined by the Court or if there is no defined period, within 20 workings days or not more than the time that is longer within 31 calendar days from the date that gives the order for provincial performing, the Court may revoke or set aside on the request of the respondent, who in relation to the provincial performing laid down according to sub-section (a) and section (78)(a) without attaching section (78)(b).

(e) Whereas The Court revokes the provisional performing, or closes it down as to applicant failure or action the provisional performing, if it is found out that no infringement occurs upon the rights of patent mark or that no potentiality of infringement, for any harmful outcome raised out of such litigate action taken by request of the applicant, the Court may issue the order that the applicant shall compensate the respondent for the harmful outcome.

78. (a) The Court may issue the orders for one-sided provisional action under one of the following conditions:

(1) There is possibly a delay that may cause detriment, incapable for remedy.

(2) There is a concern of danger from destroying the evidence.

(b) When preforming One-sided provisional action, the Court:

(1) Shall give notice to the respondent about the provisional action, immediately after completing the action without any postponement;

(2) Shall complete such action if the notice receiver has not complied within 20 working days from the date issuing notice letter, in a situation when there is no defined period or no specified factors.

(3) Shall conduct for re-examination hearings on both sides, on request of respondents, in order to decide such action for reversing, setting aside, or confirming.

79. (a) The Court may, in regard with infringement on the rights of patent mark, determine without having effect on civil laws an civil procedure, one or more than one of the following factors:

(1) The order that is appropriate to stop infringement on the rights of patent mark, including preventing the goods, that has infringed the rights of patent mark imported with custom clearance, from entering into trading circle of the State;

(2) (aa) The order that because of infringement on the rights of patent that gives rise to a harmful affect to right holder, infringer shall pay sufficient compensation to the right holder; and the order that issues to pay back regarding that for the appropriate matters of which the compensation that the right holder has defined and taken as an advance or the benefits that infringer has enjoyed or both;

(bb) The order that issues to pay for an appropriate expenses, including court fees and lawyer fees of the right holder;

(3) The order that in order to not cause detriment to the right holder, the goods infringed on the mark shall be removed from the trade route marketing or destroyed, without any payments.

(4) The order that the main components used for making the goods that infringes on the mark shall be removed from the trade route marketing or be destroyed.

(b) The court shall, taking any order into consideration to determine for according to sub-section (a)(3) and (a)(4), consider not only the equal proportion of decision between the concerned order and the range of infringement on the mark, but also the relative interests of other individual

80. The Court shall order for compensation if there appears a false complain, with bad intention, that the rights of patent mark are being infringed and because of such complaint, the damages inflicts upon the defendant for whom the complainant shall not

only compensated, but also the expenses of defendant for the Court fees, lawyer fees, and other fees.

81. (a) The Court may give the order to a confronter, from one side, to submit the evidence, while protecting the confidentiality of information for the appropriate matters, without having effect on the provisions contained in the existing law, for the following conditions:

(1) When the right holder submits a solid evidences to sufficiently support his or her requests:

(2) When clearly stated that a solid evidence related to those requests are at the hands of defendant from the other side.

(b) Without having solid evidence, if voluntary infringement occurs by individual self, the Court shall conduct hearings wherein both a person aggrieved and the infringer shall hear as to their complains (or) evidences; and based on the information, including their arguments, the order may announce for approval or refusal as well as for initiative or final decision, for the following situations:

(1) When refuse to provide the necessary information;

(2) When unable to send the necessary information within the appropriate period;

(3) When impede the procedure related to taking action;

82. The Court may, if, there is a charge for any criminal act according to this law, issue for a fine; and either a full or partial amount of fines, as compensation, shall be given to a person aggrieved.

83, if the litigation is filed by way of both criminal action and civil action based on the only one case, when the Court passes of judgment, order, or decree for compensation in civil case, a compensation paid for section (82) shall be deducted and subscribe in fines.

84. The Court may, regarding the rights of patent mark, pronounce against the infringer to disclose any other individuals who involved in distribution or producing the infringed goods.

85. The Court may, in respect of issuing an order to take action about infringement on the rights of patent mark, use the provisions contained in evidence act, criminal law and civil law if there is no obvious provisions in this law in this regard.

Chapter (22)

Offences and Penalties

86. Whoever knowingly commits any of the following acts for business purposes without having permission of the right holders, whether on conviction or abetting an offence, shall be punished with imprisonment for a term not exceeding 3 years or with fine for an amount not exceeding 5 million kyat or with both:

(a) Making a forged mark;

(b) Using a forged mark on goods or in services related;

(c) Possessing any important goods or articles to make a forgery mark or to apply the forged mark on the good;

(d) Selling, distributing, or importing the goods using the forged mark;

(e) Importing or exporting the goods with a forged mark.

87. Whoever commits any action contained in section (86), after conviction for such action, if that person commits the same action again within 5 years period from the date committed the previous action, and on conviction, he or she may be punished with imprisonment for a term of at least 3 years to upmost not exceeding 10 years and in addition, with fine for an amount not exceeding 10 million kyat.

88. Whoever uses a sign of flag or emblem of International Agreements to which the State is a member as the mark for business purpose shall, on conviction, be punished with imprisonment for a term not exceeding 3 years or with a fine for an amount not exceeding 5 million kyats or with both.

89. Whoever removes, destroys, deforms or makes addition with intention to adversely affect the owner of registered mark shall, on conviction, be punished with imprisonment for a term not exceeding one year or with fine for an amount not exceeding 3 million kyats or with both.

90. Whoever commits any of the following acts shall, on conviction, be punished with imprisonment for a term not exceeding one year or with fine for an amount not exceeding 2 million kyats or with both:

(a) Issuing or causing to issue irregularly of the certificate of the registered mark;

(b) Entering or causing to enter irregularly in the Register of Marks.

91. Whoever fails to comply with the Court order according to section (84), he or she shall be punished with imprisonment for a term not exceeding six months or with a fine for an amount not exceeding 1.5 million kyats or with both.

Chapter (23)

Miscellaneous

92. Before this law comes into effect, the owner of mark, who has registered at the Documentation of Registration Office in accordance with the Registration Act, desires to attain the rights of registered mark, he or she shall submit application for the registration of mark in accordance with this law.

93. Notwithstanding anything contained in any other existing law:

(a) The registration of mark shall be carried out in accordance with this Law;

(b) Any offence related to mark contained in this Law shall be taken action only under this law.

94. The Registrar shall allow a person to report and hear if the decision rationally taken by the Registrar by using the rights bestowed on him or her may result in harmful effect to someone.

95. A person has the right to submit to copy of certificate of registered mark and documents certified sealed by the registrar as evidence in the relevant Court.

96. If an exhibit involved in any offence prosecuted under this law is not easily producible before the Court, such exhibit need not be produced before the Court. However, a report or other relevant documentary evidence as to the manner of custody of the same may be summited. Such submission shall be deemed as if it were a submission of the exhibit before the Court and the relevant Court shall pass an order for disposal of the same in accordance with law.

97. The Court may, regarding for the goods with the forge marks, including materials and tools using for committing the crimes, pass an appropriate management order so as to seize those elements, to capture them as public finance, to destroy, or to conduct with any other means.

98. Infringement upon the rights of patent mark contained in this Law shall not take effect on using of any good with the marks for the benefits of the public in a situation of the State’s

emergency and of the matters of public danger, but not for business interests of government department and any legal entities.

99. The offences contained in this Law are specified as the scope of police jurisdiction.

100. For disputes arising out of among individuals who claim the mark, it may be resolved by means of friendly negotiation, arbitration, or litigation.

101. In implementing the provisions contained by this Law:

(a) The Central Body of PyidaungsuHluttaw may issue rules, regulations, notifications, orders, directives and procedures.

(b) The Ministry may:

(1) Issue rules and regulations with the approval of Pyidaungsu Government.

(2) Issue notifications, orders, directives and procedures.

(c) The Ministry undertaking the custom related functions may issue rules and regulations with the approval of Pyaungsu Government.

(d) The Department may issue notifications, orders, directives and procedures with the approval of the Ministry.

I hereby sign according to the Constitution of the Republic of the Union of Myanmar.

(Sd) HtinKyaw

The President of the State

The Republic of the Union of Myanmar