Tuesday, October 25, 2016
The Myanmar Times
The Myanmar Times

Trademarks in the spotlight as brands arrive

The grainy photo appeared on the Burmese Memes Facebook page on January 24. It showed three workers standing on a second storey ledge, placing the familiar green mermaid logo of coffee giant Starbucks on a shopfront window, with the caption announcing the chain’s supposed arrival in Yangon.

News of a Starbucks Coffee outlet opening in Yangon created a buzz on Facebook in January but the signs were quickly taken after the US firm stated it was not coming to Myanmar yet. Photo: AFPNews of a Starbucks Coffee outlet opening in Yangon created a buzz on Facebook in January but the signs were quickly taken after the US firm stated it was not coming to Myanmar yet. Photo: AFP

The image was quickly shared a few hundred times on Facebook and re-Tweeted, perhaps not the numbers needed to be considered going “viral”, but enough to be noticed in a city where there has been a recent series of notable foreign entries into the market.

On social network sites the photo generated a range of comments, including excitement and scepticism at the global coffee chain’s purported arrival, to spats about Myanmar’s perceived Westernisation.

But one reaction to the blatant trademark abuse from a Facebook user, posted after Starbucks confirmed that it was not opening a store in Myanmar, was telling in its simplicity: “But this is Myanmar. Who cares!”

A Mickey Mouse-branded beer station makes for memorable souvenir photos for travellers, but raises legitimate concerns for companies wishing to protect their intellectually property in Myanmar, where the enforce of trademark protection regulations remains lax.

(A Walt Disney Company spokesperson said “Protection of intellectual property rights is a serious global issue and is of paramount importance.”)

“Companies that are not yet in the Myanmar market should still be considering proactive steps to protect their trademarks given the state of intellectually property laws,” said Aaron Hutman, a lawyer with the American law firm Pillsbury Winthrop Shaw Pittman LLP who has written about Myanmar’s intellectual property laws.

Foreign companies wishing to protect their trademarks must first register them under the country’s Registration Act of 1908. Trademarks are registered at the Yangon Registration Office of the Settlement and Land Records Department, after which a cautionary notice must be published in a weekly or daily Myanmar newspaper.

These notices are familiar to readers of newspapers such as The Myanmar Times, where a sharp rise in the number of registrations during the past six months has sometimes resulted hundreds of column centimetres devoted to the cautionary advertisements in each edition.

The notices also include a statement that unauthorised use of or infringement of a trademark will be pursued through legal channels. This can be done through either a criminal or civil case, said Yangon lawyer, U Min Sein.

In the case of the fake Starbucks outlet the law was enforced and the offending signs were removed. But lawyers agree that the current IP laws need to be clarified and more strictly enforced.

“This legal regime could benefit from greater clarity under a new law. Further, there have not been recent instances of trademark enforcement and foreign companies are looking for reassurances that trademark rights, once asserted, would be enforced by Myanmar courts,” said Mr Hutman.

The country’s copyright law, the Myanmar Copyright Act of 1914, does not recognise copyright from other countries. It also does not provide for registering copyright from foreign countries within Myanmar.

A regulatory framework for patents is essentially non-existent, with no system in place for patent protection.

A staff officer with the Directorate of Trade at the Ministry of Commerce, U Shwe Zin Ko, wrote in the January 2012 issue of The Law Gazette, a publication of the Law Society of Singapore, “… it is expected that IP laws would be promulgated soon…,” but this has yet to come to fruition.

A year later minimal safeguards to protect IP were included in the new Foreign Investment Law; no further clarifications about IP laws were included in the implementing regulations made to the FIL at the end of January.

Though there was talk of an IP bill being drafted in 2004, U Min Sein said that this, “was only a rumour” in a time when government transparency was minimal.

In 2001, Myanmar became a member of the World Intellectual Property Organisation (WIPO), the United Nations agency responsible for the use and protection of intellectual property. But Myanmar remains only part of the basic structure, and has failed to sign further treaties since joining.

U Min Sein agreed with Mr Hutman’s assessment that there is a need for further laws, but said that there has been no movement on the issue due to the higher priority being given to other matters.