Yangon Civil Court shapes the scope of protection of well-known mark through two precedent decisions

Paul Smith (Plaintiff) vs. Ms. Naw Mei Mei Wai (Defendant)

Crocs (Plaintiff) vs.Ms. Naw Mei Mei Wai (Defendant)

On December 3rd, 2018 The Yangon Eastern Civil District Court rendered two important decisions in favor of Crocs and Paul Smith brands that shape the scope of protection of well-known marks in Myanmar. Our firm acted for the Plaintiffs in these two cases.

The Court has ordered the cancellation of the marks Paul Smith and Crocs registered in the name of Ms. Naw Mei Mei Wai and issued a perpetual injunction against Ms. Naw Mei Mei Wai not use or allow others to use the above marks.

The grounds on which the actions for trade mark infringement and trade mark cancellation are:

1. The Plaintiffs have been using their marks internationally including offering for sale products via on-line throughout the world and thus, the plaintiffs are the legitimate right owner of the marks Paul Smith and Crocs;

2. The Defendant’s acts clearly show that she has registered the Plaintiff's marks in bad faith;

3. It is not essential that the Defendant’s mark is identical to the Plaintiffs' marks in order to constitute an infringement;

4. Although the Defendant has registered her mark prior to the Plaintiffs' marks in Myanmar, it is not a conclusive evidence as the ownership of the trademark since the registration of a trademark by a person will not by itself give him a right of property in that trademark;

5. Perpetual Injunction shall be granted under Section 54 (e) of Specific Relief Act to prevent further proceedings;

To our knowledge this is the first time a Court in Myanmar has recognized that the use of a mark through internet (e.g. one line sales, one line promotion) qualifies as use in Myanmar. This decision enhances brand owners’ position in this country and is likely to be cited in further court actions as a critical precedent.

©2018 Rouse