Measures to help implement 2019 Trademark Law

03 Feb


(CONTINUED FROM LAST WEEK)


Authorization for marks 


As stated by IP law, an application for mark registration has to be scrutinized in accord with the provisions stipulated in article 13. It is aimed at scrutinizing the characteristics eligible for mark registration. A mark must have distinctness in the process of scrutinizing the qualities eligible for mark authorization. Distinctness means there must have the difference between the mark and the goods or the service. Moreover, the mark to be used must give clear information or easy recognition to the users. If not so, the mark will not be eligible for registration.


For example, if an apple selling shop uses ‘apple shop’ or ‘picture of an apple’ as a mark, it will be supposed that it is not distinct. This is because ‘apple shop’ is a common name. The person officially using the mark must have the right to ownership as long as he/she uses it. No one is allowed to own a common mark. But if the picture of the apple is used for other goods, it will be distinct. For instance, the picture of apple can be used for computer, phone and other electronic devices. But if it is used for computer, the mark should not be ‘computer picture’.


Lack of distinctness includes simplicity, complexity, incomprehensible marks, an alphabet or one digit, simple phrases, just surface design, and common usable marks. A mark is typically not distinct, but if it is recognized by the users as the trademark, or if it is able to effectively direct original trade, it can’t be denied. Moreover, if a mark is continuously used as a trademark, the users will recognize it as the trademark and then it should be regarded as the distinct mark.


If a mark contains quality, quantity, intended use, value, time of manufacture and other characteristics or only instructions, it can be denied. This is because these marks are just an illustration.


For example, a mark for a candy selling service should not be the words “Pleasant Smell” or “Sweet”. The reason is that the candy possesses the property of being sweet and being a pleasant smell. Although candy has many different kinds, every candy has the property of being sweet, and so it can be denied to allow registration. Moreover, a mark for a product or a service should not be the words such as No-1 or the Best. These words are not allowed using as single ownership. In addition, the usages in the mark should not mislead the public or commercial area. For example, although the word ‘swiss’ is revealed in the trademark of ‘swisstime’ as a place of origin, if it is not related to this place, it will be able to mislead the users about the place of origin as Switzerland.


Attention is to be paid that a mark to be used for a product or a service mustn’t be detrimental to public order, reputation, beliefs, the Union’s reputation, or traditions valued by ethnic minorities. Besides, without the approval of relevant authorities, all or part of a country’s flag, ceremonial appearance, other marks and symbols, a legal mark indicating the management or guarantee by a State, or a mark of quality guarantee, or a multilateral international organization’s ceremonial appearance, flags, or other marks, names, including said organization’s acronyms, full name, or any part mustn’t be directly copied or imitated or misled. If a mark uses any of the said points, it will be ineligible for registration. Furthermore, the marks and signs separately protected under the international agreements in which the Republic of the Union of Myanmar is a Party are unauthorized for use as the mark.


If a mark becomes a common usage in contemporary expressions or a part of traditions or a practical usage in the commercial area, it will be ineligible for registration. It is important for the owners of the trademarks to realize the explanations mentioned above because supervising matters related to the application for registration and examination of marks are to be carried out.


Announcement of mark and objection 


Eligible marks will be publicized through the website of Department of Intellectual Property after they have been scrutinized in line with article 13 of application for marks.


Anyone has the right to object to the release of the announcement for mark application within 60 days from the date on which the announcement is released. If there is no objection to the mark application, eligible marks will be publicized through the website. With regard to the marks that have seen objections, necessary investigations will go on. 


The absolute grounds prescribed in article 13 and the relative grounds in article 14 must come under close scrutiny.


The mark application must not infringe upon the intellectual property rights of any other person. The scrutiny also focuses on a connection to other goods or services and an unfair market competition for any other person. The nature of goods or services, useful ways, aims, distributing market, and connections between the consumers and the public must be taken into consideration when the mark is decided for eligible registration. 


The mark misleads consumers through its use by being identical or similar to any other person’s registered mark or mark for which registration or right of priority has been applied for beforehand for identical or similar goods and services for said marks. If so, it can be refused for registration.


It uses without the consent of a relevant person or legally formed organization, a mark which may be harmful to the individual rights of any person or the name and reputation of a legally formed organization. If so, it can be refused for registration. 


A mark registration application is made for a mark that misleads consumers by not only being identical or similar to a well-known mark but is also used in identical or similar goods or services. If so, it can be refused for registration.


A mark registration application is made for a mark that is identical or similar to a registered well-known mark, but the goods or services are not identical or similar but may indicate that there is a connection between the owner of the well-known mark and the goods or services that the mark in question is being used for and such use may be harmful to the interests of the owner of the well-known mark. If so, it can be refused for registration.


Term of mark registration and rights 


Trademark examiners of the Department of Intellectual Property have to conduct an inspection of the mark registration in accord with rules and regulations prescribed in Chapter 8 of Application and Chapter 9 of Examination, Objection and Registration. The marks appropriate for stipulations are considered eligible for registration. The registrar will issue a certificate of mark registration to the applicant. The marks eligible for registration will be announced via the website of the Department of Intellectual Property.


The intellectual property right of a mark is recognized from the submission date of the registration application. A registered mark can be used for the goods or the services. It is required for the applicant to renew the term of mark registration once for every ten years. The marks failing to renew the term of registration do not continue enjoying intellectual property rights. If the owner of a mark complies with the provisions in Chapter XI, he shall enjoy the registered mark-related rights stipulated in this chapter for the term of the registration. For that reason, it is necessary to renew the registration term within the prescribed period in order to continue enjoying intellectual property rights for the goods or services whose marks are registered. If the registered marks fail to use from the date on which they have received an official registration to the next three years, they will continue enjoying intellectual property rights.


The mark misleads consumers through its use by being identical or similar to any other person’s registered mark or mark for which registration or right of priority has been applied for beforehand for identical or similar goods and services for said marks.


If any other person uses a registered mark without the consent of a relevant person or legally formed organization, or a mark is harmful to the individual rights of any person or the name and reputation of a legally formed organization, he or she can be sued under civil law or criminal law or both.


In respect of the right of priority, the owners of famous registered marks will have the right to prohibit the use of their identical or similar registered marks for identical or similar goods or services if they are used without their consent. The said goods or services can be regarded as a connection with the owner of the well-known mark. Such use may be harmful to the interests of the owner of a well-known mark.


The owner of a registered mark has the right to transfer the ownership of the mark to any person. An owner of a registered mark may grant a licence for the use of the mark to any person or legally formed organization after setting the terms and conditions. If the goods already distributed in the market see changes and damages, the right of going on selling them can be prohibited in accord with the existing law


An owner of a registered mark or the licensee may submit certified copies of the grant of the licence and pay the prescribed fee to the registrar to request the entry of the grant of license into the registration records.


The registrar shall enter the grant of license to the registration records according to section 46 and make a public announcement in a manner that is consistent with stipulations.


With regard to owner’s name or address; indications of type, related information, quality, quantity, intended use, value; origin, manufacturing period or other characteristics of the goods or services; descriptions of the intended use of goods or services, particularly descriptions of the intended use of accessories or spare parts, if another person uses a registered mark by an owner in good faith for industrial or commercial business, an owner of a registered mark is not entitled to prevent another person’s use. Moreover, the owner of a registered mark is not entitled to prohibit the use of his mark for goods delivered to a market by himself or another person who has his consent.


Acceptance of mark application in advance 


After the Trademark Law comes into effect, the Department of Intellectual Property will simultaneously accept old and new marks being used in the market of the country on the date when applications begin acceptance. On the first date, a large number of mark applications will be received because of the firstto-file system. The applications for old marks may be many more than those for new marks. When the mark applications are accepted within a day, the registration unit under the Department of Intellectual Property may encounter insufficient strength of staff and time. Moreover, there may be frequent sever breakdowns as many applicants use online applications at the same time within a day. Advance acceptance for old marks before the law comes into effect will mitigate the difficulties which can be come across. Mark applications can be submitted with the use of IT system of WIPO File. The WIPO File is available via www.ipd.gov. mm of Intellectual Property Department. Applications must be submitted online.


So as to use WIPO File, it needs registration of WIPO File user. After being registered, the user’s name and password have to be created. With the use of the user’s name and password, the registered user can enter WIPO File through the website of the IP Department regardless of wherever he is. This system is beneficial to mark registration services, legal agencies, companies and entrepreneurs owning many marks. On behalf of the owner of the registered mark, the mark registration services can submit a large number of mark applications, and they will be promising services in the future. If entrepreneurs want to apply for a mark registration in person, go to the mark registration unit of the IP Department. It can be done with the transfer of general power to any person. To ensure advance acceptance for old marks before the law comes into effect, the Ministry of Commerce responsible for the implementation of IP laws accepted online mark applications as of 1st October with the release of Notification No 63/2020 on 28 August in 2020. Raising awareness of online mark registration was conducted for 16 times through virtual format. Raising awareness of online mark registration was broadcast live via IP Myanmar Facebook and website of the IP Department. Mark applications will be examined in accord with the stipulations as prescribed only after the trademark law goes into effect. The Ministry of Commerce is making concerted efforts in ensuring IP laws to come into effect early 2021. 


The IP Department of the Ministry of Commerce has urged the entrepreneurs from home and abroad to apply for mark registrations in accordance with the Trademark Law enacted on 30 January in 2019 in order to enjoy equal rights for intellectual property, to prevent against violation of intellectual property rights, to enter a fair market competition, to stand as high-quality products and services and to ensure market expansion.


By Dr Moe Moe Thwe 
TRANSLATED BY HTUT HTUT (TWANTAY)