Criminal Court of Yangon recognizes and applies the concept of well-known mark

The concept of well-known marks is not mentioned in the Registration Act or Criminal Code of Myanmar. As such, it remains unclear whether well-known marks are protected.

On August 11, 2015, the Pabedan Township Court has ruled in favor to Mitsubishi Electric Corporation in a trade mark infringement case against an importer and distributor of infringing breakers bearing the mark "Mitsubishi" (Criminal Regular Case no. 380/2014 U Zayar Lwin, Mitsubishi Electric Corporation & PME Co, Ltd vs. U Hla Myint). Rouse acted for the Plaintiffs.

The Defendant was condemned to fine and imprisonment under Section 486 of the Criminal Code. Furthermore, the Court ruled that "The Plaintiff's products has been officially distributed by PME Co., Ltd and sold worldwide under the famous trademark Mitsubishi registered in more than 140 world nations. The Defendant has been running a shop selling electrical products for more than 40 years and based on evidence provided by the Plaintiff, the famous character of Mitsubishi cannot be unremembered or unknown to the Defendant."

In determining of the sort of factors that constitute whether a mark is regarded as well-known, the court has looked to the degree of recognition by the relevant sector of the public in Myanmar, the duration, extent and geographical area of the use or promotion of the mark, the sort of registrations or applications for registration and an assessment of value associated with the mark in Myanmar and abroad. This decision brings hopes to trademark owners in protecting and enforcing their marks in Myanmar and will help determining the criteria to protect well known marks ahead of the implementing regulation of the newly passed Trade Mark Act.

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