1

Contents

Intellectual Property Law

Chapter VII Pages

7.0 Laws relating to Incorporeal Personal Property (Intellectual Property) 2

7.1 Law relating to Incorporeal Personal Property (Intellectual Property) in

Myanmar. 3

7.2 Definition of Intellectual Property under International Law 6

7.2.1 Copyright and Neighboring Rights 9

7.2.2 Trademark

12

7.3 Protection of Trademark Rights, Copyright, Patents and

Designs in Myanmar

15

7.3.1 Trademark Rights

15

7.3.1.1 Registration

19

7.3.1.2 Remedies for infringement

22

7.3.2 Copyright

27

7.3.2.1 Infringement of copyright

31

2

7.3.2.2 Term of Copyright

37

7.3.2.3 Ownership of Copyright

40

7.3.2.4 Civil remedies for infringement of copyright

40

7.3.3 Patentsand Designs

48

7.3.3.1 Patents under the TRIPs Agreement 1994

49

Chapter 7

Intellectual Property Law

7.0 Laws relating to Incorporeal Personal Property (Intellectual Property)

Intellectual property is a valuable asset, which may be exploited in many

ways. Intellectual property is property in legal sense: it is something that can be

owned and dealt with. Intellectual property law is that area of law which

concern legal rights associated with creative effort or commercial reputation and

goodwill. There are several different forms of rights or areas of law giving rise

to rights that together make up intellectual property. They are copyright,

neighbouring rights, patents, registered designs, trademarks and trade libel.

3

၏ ၏

7.1 Law relating to Incorporeal Personal Property (Intellectual Property) in

Myanmar.

၏

TheUnion of Myanmar once a British Colony naturally and inevitably

had to accept and apply the laws in English, enacted in the British era.At the

closing years of the 19th century, the modern Myanmar legal system emerged

under the British control rule replacing the traditional one.Evidently, its

development was in concurrence with British and Indian legal circumstances

then, and was not far left behind in the field of Intellectual Property (IP) from

the inception and up to the booming stage thereof. Relevant law as well as

official ruling recognizing and enforcing the principles of IP rights in Myanmar

of those periods looks very impressive and had timely developed to a substantial

extent. As time passed, those laws were not kept modified. Some existing laws

on or relating to Intellectual Property are as follows:

4

၏

၏

(1) The Penal Code:

( )

(2) The Myanmar Merchandised Marks Act;

)

(3) The Registration Act;

)

(4) The Specific Relief Act;

)

(5) The Myanmar Patents and Designs (Emergency Provisions) Act, 1946;

) ) ၄၆

(6) The Myanmar Copyright Act

)

Myanmar is a founder member of WTO (World Trade Organization)

since its establishment on 1 January 1995, and there after also becomes a

member of ASEAN.

5

)

၏

၏

Consequently, Myanmar has the obligation to respect and abide by the

provisions of the relevant treaties of such organizations in particular the TRIPs

Agreement and the ASEAN Framework Agreement on Intellectual Property. As

a result, all draft laws have to be reviewed and redrafted so as to ensure

compliance with international and intergovernmental obligations of Myanmar.

Establishing the new Ministry of Science and Technology and designating it as

the focal point to deal with intellectual property matters will help expedite the

outcome of the new laws.

၏ ါ

The Attorney General Office of the Republic of the Union of Myanmar is

now considering for drafting new IP laws specifically as

၏

-

(1) Trademark law,

6

( )

(2) Copyright law,

)

(3) Patent law and,

)

(4) Industrial Design law to be in line with "Agreement on Trade-Related

Aspects of Intellectual Property Rights, mostly called TRIPs Agreement made

between World Intellectual Property Organization (WIPO) and WTO.

)

(TRIPs)

7.2 Definition of Intellectual Property under International Law

၏

Agreement on Trade-Related Aspects of Intellectual Property Rights

mostly called TRIPs Agreement made between World Intellectual Property

Organization (WIPO) and World Trade Organization (WTO).

)

WIPO had its origins in the 1883 Paris Convention for the Protection of

Industrial Property and the 1886 Berne Convention for the Protection of

Literary and Artistic Works. The Convention establishing WIPO was signed in

7

1967 and entered into force in 1970. WIPO became a specialized agency of the

United Nations on 17 December 1974. The Berne Convention has been revised

several times (Berlin in 1908, Rome in 1928, Brussels in 1948, Stockholm in

1967 and Paris 1971).

(WIPO)

၆

၆

၄

) ၏

WIPO's objectives are:

-

to maintain and increase respect for intellectual property throughout the world,

(1) to favour industrial and cultural development by stimulating creative

activity and facilitating the transfer of technology and the

dissemination of literary and artistic works.

"Intellectual Property" includes two main branches:

-

(1) Industrial property (patents and other rights in technological

inventions, rights in trademarks, industrial designs, application of

origin, etc. ) and

8

)

(2) Copyright and neighboring rights (in literary, musical and artistic

works, films, performance of performing artists, phonograms, etc.)

)

To aid in the protection of intellectual property, WIPO promotes the

wider acceptance of existing treaties and their revisions and, where necessary,

encourages the conclusion of new treaties.

Article 2 of the TRIPs Agreement provides that the "intellectual property"

refers to all categories of intellectual property, namely; copyright and

neighboring rights, trademarks, geographical indications, industrial designs,

patents, layout-designs (topographies) of integrated circuits and undisclosed

information.

)

9

Intellectual property rights are generic terms of exclusive rights gives to

the results gained by Intellectual activities of human beings and to sign used for

business activities, and they mean intangible rights which own economic

values.

၏

ဓပပာယများရပါသည။

Intellectual property has become a central issue in international trade

relations. Over 3.7 million patents, 11 million registrations trademarks and 1.3

million registrations of industrial design are in force around the world. Each

year, around 1 million books and 5, 000 feature finals are produced and 3

billion copies of CD and tapes are sold.

.

.

7.2.1 Copyright and Neighboring Rights

Copyright relates to artistic creations, such as poems, novels, music,

paintings, cinematographic works, etc. In most European languages other than

English copyright is called author's rights. The expression "copyright" refers to

the main act, which, in respect of literary and artistic creation may be made only

by the author or with his authorization. That act is the making of copies of the

10

literary or artistic work. The second expression, "author's rights" refers to the

person who is the creator of the artistic work, its author, thus underlining the

fact, recognized in most law that the author has certain specific rights in his

creation, for example, the right to prevent a distorted reproduction, which can be

exercised only by himself, whereas other rights such as the right to make copies,

can be exercised by other persons, for example, a publisher who has obtained a

license to this effect from the author.

၏

ဓကလပဆောငမဖြစပပး၎ငးက စာဆပနင အနပညာလပငနး တင

ြနတးသ(သမဟတ)၎ငး၏အခငအာဏာရသကဖပလပနငသည။ထလပဆောငမသညစာဆပန

ငအနပညာလပငနး၏မတတ ပားဖခငးက ဖပလပဖခငးဖြစသည။ တစြန ၏

၏ ၏

မတတ ပားခငက

ြနတးသကယတငသာကျငသးရမညကစစရပ၊

"Neighboring rights" is an abbreviated expression. The full expression

would be "rights neighboring on copyright". It is generally understood that there

are three kinds of right, which are covered by the concept of neighboring rights:

the rights of performing artists in their performance the rights of producers of

phonograms in their phonograms; and the rights of broadcasting organizations

in their radio and television broadcasts.

11

၏

Copyright protection by about international level began by the middle of

the nineteenth century on the basis of bilateral treaties. A number of such

treaties providing for mutual recognition of rights were concluded but they were

neither comprehensive enough nor of a uniform pattern.

The need for a uniform system led to the formulation and adoption on

1886, of the Berne Convention for the Protection of Literary and Artistic

Works. It is open to all States. Instruments of accession or ratification are

deposited with the Director General of World Intellectual Property Organization

(WIPO). The Berne Convention has been revised several times (Berlin in 1908,

Rome in 1928, Brussels in 1948, Stockholm in 1967 and Paris in 1971).

၆

12

WIPO)၏

7.2.2 Trademark

A trademark serves several purposes. Form the viewpoint of the person

who is interested in buying goods, the trademarks serves the purpose of guiding

him in his decision to buy. Such a decision is based on the expected

characteristics or other properties of the goods (size weight, color, fragrance,

taste, durability, degree of efficiency in the operations in which the goods are

used, etc.)

၏

The essential elements of the standards concerning the availability; scope

and use of trademark rights include the following;

၏

- any sign capable of distinguishing the goods or services of one

undertaking from those of other undertakings (thus including is

service marks) shall be eligible for the registration as a trademarks.

13

)

- registrability may be conditional upon visual perceptibility and, for

signs which are not inherently distinctive on distinctiveness

acquired through use.

- registrability may be conditional upon use, but use may not be a

condition for filing and an application may not be refused solely on

the ground that intended use has not taken place within three years

of the filing date.

- the nature of the goods or services to which a trademark is to be

applied may not be an obstacle to the registration of the mark.

) ၏

- members shall publish each trademark and afford a reasonable

opportunity for petitions to cancel the registration, and my afford

an opportunity to oppose the registration.

14

- the rights conferred by registration shall include the exclusive right

to the prevent third parties from using identical or similar sings for

identical or similar goods or services, where such use would result

in a like hood of confusion, the letter, to be presumed where the

goods or services are identical, subjects to certain allowable

exceptions such as the fair use of descriptive terms.

)

)

)

- certain rights are provided for the owners of well-known

trademarks and service marks.

- the term of initial registration and renewable shall be no less than

seven years renewable indefinitely.

15

- if a showing of use required for the maintenance of a registration,

the registration may be cancelled only after an uninterrupted period

of at least three years of non-use, unless valid reasons for non- use

are shown.

)

- certain restrictions on use are not permitted.

- compulsory licensing of trademarks is not permitted.

-

- trademarks may be assigned with or without the transfer of the

business to which the trademark belongs.

-

7.3 Protectionof Trademark Rights, Copyright, Patents and Designsin Myanmar

7.3.2 Trademark Rights

16

In Myanmar, there is no specific statutory law on trademark right. In the

Supreme Court is laid down in U Saw and four others V.The Union of Myanmar

followed;

၄) ၄ )

၄

Held: That in Myanmar there is no law or statute establishing

Registration of Trademarks and no authorities exist from which an exclusive

right to a particular Trademark could be obtained. The rights to Trademark in

Burma are therefore dependent upon the general principles of Commercial Law.

မတပတငဖခငးေငရာဥပဆေမရပါ၊ရရနငသည

သးဖခားကနအမတတေပကသးဖခားအခငအဆရးဆပးနငသညအာဏာပငများလညးမရပါ။ဖမန

မာနငငတငကနအမတတေပေငရာအခငအဆရးများသညကးသနးဆရာငးဝယဆရးေငရာဥ

ပဆေ၏အဆထဆထ မသဆောတရားများအဆပါတငတညမလျကရပါသည။

In case of TC Mohamed V. A Kunjalam and two others,(1951) B.L.R

(S.C) P.98 the Supreme Court, Chief Justice observed that:

T.C Moharmed V.A.Kunja lam )

-

“ n Myanmar we do not have any Act like the English Trademarks

Registration Act, 1875, the English Trademarks Act, 1905, or the India

Trademarks Act, 1940. So there is no system for registration of trademarks and

t h ere i no t at uto ry titl e t o t rad emark .”

'' )

)

17

၄ )

There being no statutory law on trademarks, a trademark as understood in

Myanmar Civil Law is not defined. However, there exits the definition of a

rad emark i n t h e enal Cod e Secti on 478 o f th e Co d e d efi ne a t rademark a “

a mark used for denoting that goods are manufactured of marketed by a

p art i cul ar p er o n ”. A cco rd ing t o thi defi nit io n ev en wo rd can co n tit ut e a

t rad emark . h u , i t h oul d b e n ot ed th at in Myan mar, t h e w ord “ rad emark ”

could be used in very wide sense although there being no Trademarks Act. The

q ue t ion o f “Wh at i a t rademark ? ” h a to b e d ecid ed on t he b a i c o f th e ru li ng

of the highest court of law which again based on the English Common Law.

၄

In order to be a trademark, as defined in Section 478 of the Penal Code, a

mark must be distinctive so as to distinguish the goods of the proprietor of a

t rad emark fro m t ho e o f o th er p er on . “D i ti nctiv e” mean di t ing ui hin g a

p art i cul ar p er on ’ go od fro m o meb od y el e’ no t a q u ali t y at trib ut ed t o th e

particular article. If a mark merely describes the quality or origin of the article,

such a descriptive mark is obviously not capable of distinguishing the goods of

one marker from those of those of others. It has been held in one case that the

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style or the getup of the boxes or packages in which goods are retailed does not

constitute a trademark as defined in section 478 of the Penal Code.

၄

၏

၄ ၏

It does not really matter whether a particular brand or label used by a

particular manufacturer is registered as a trademark in the strict legal sense.

Thus the manufacturer may use a particular color combination only, without any

particular mark and anyone who imitates that particular color combination on

his goods may be prosecuted or sued or both actions may be taken against him.

In Myanmar, many manufactures usually register the entire label attached on the

goods, although within that label they may have a particular device which may

be called a trademark. In such a case, the whole label will be a trademark and

not the particular device in it.

၏

19

၏

7.3.1.1Registration

As already stated, there is no Trademarks Registration Act in Myanmar

and therefore registration of a trademark is not necessary, but nonetheless it is

usually done it may have certain practical results. As a matter of facts, Direction

13 of the Registration Act clearly contemplates that trademarks may be

registered under section 18 (I) of the Registration Act. Under that Direction, a

trademark has to be registered by means of a declaration which is a solemn

statements of facts made by the declarant and usually attested by a Notary

Public or Magistrate or some Judicial Officer.

၏ )

၆)

)

)

) ၏

Such a declaration usually states the rights of the declarant to the

trademark and the trademark or label concerned is usually attached to the

declaration. Although the more fact of registration is not conclusive proof of the

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ownership or user and the ability to produce a registered document may be of

some help in a criminal or civil proceeding. The registration as such is usually

followed by an advertisement or announcement in daily newspapers, stating that

any fraudulent imitation or unauthorized use of or infringement of the said

trademark will be dealt with according to law.

၏

)

) )

In the process of registering a trademark, the owner of it shall mention the

following facts as admissions in the document or declaration submitted for

registration that:

)

(a) the said trademark is being used for the type of goods which he

manufactured and distributed for sale;

21

)

(b) the said trademark has been created by him out of his own idea;

)

(c) the said trademark is neither an imitation nor a fraudulent copy of a

trademark owned by any other person.

( )

(d) in his knowledge, no person has manufactured and distributed any

goods of the same type using the said trademark.

)

For registration of the document of declaration the charge for the revenue

stamp is merely Kyats 25/- and the fee collected for registration is merely 6

Kyats. Foreign trademarks if certified by a Notary Public may also be registered

under the same conditions and with the same payments.

၆

7.3.1.2 Remedies for infringement

22

There is no trademarks registration Act in Myanmar and therefore

registration of a trademark is not necessary however it is usually done in

practice. As a matter of fact direction 13 of the registration Act clearly

contemplates that trademarks may be registered under section 18(I) of

registration Act. Under that direction, a trademark has to be registered by means

of a declaration which is a solemn statement of facts by the Notary Public or a

magistrate of some judicial officer.

)

)

)

)

In the case of John Walker & Sons Ltd vs. U Than Shwe B.L.R, 1968

(cc) P.73, the court held that an action for infringement of the trademark is

maintainable under section 54 of the Specific Relief Act, which clearly

authorizes the courts in Myanmar to grand perpetual injunctions in infringement

suits.

၄

23

According to a ruling in 1939 of the late High Court of Yangon, no civil

section was maintainable for infringement of trademark rights, and the only

action maintainable in civil law was an action for passing-off, which is an old

common law remedy, there being no Trademarks Act in Myanmar. This concept

was accepted and followed by the Courts of Myanmar up to 1968. But in 1968

the correctness of this ruling was challenged in a case before the then Chief

Court, and the learned Judge dissented from the view mentioned in the former

case and overruled the former decision and held that an action for infringement

of the trademark in maintainable under section 54 of the Specific Relief Act,

which clearly authorizes the Courts in Myanmar to grant perpetual injunctions

in infringement suits. Thus, since the passing of judgment in that case, a person

whose right to a trademark has been infringed can maintain an action for

infringement of the trademark as well as an action for passing off.

၏

၏

၆ ၆

(ChiefCourt) ၏

၏

၄)

24

၏

In an infringement action, the question of fraud or probability of

deception is immaterial and all that the plaintiff has to prove is that he is the true

owner of the trademark and that the defendant is using a get up which is either

the same or similar to his trademark.

)

In a passing-off action the proprietor first has to prove that he has use the

mar and has acquired a reputation in it in the business concerned. He then has to

prove that what the defend an t h a been g oi ng i t o cau e t he d efend an t ’ go od

to be confused with the plaintiffs goods with the result that customers are led to

believe that they are obtaining goods of the plaintiff when in fact they are

obtaining goods of the defendant.

၏ ၏

၏ ၏

Through the rules of procedure and evidence are different, the relief given

by the Courts in suits for passing-off are the same as in suits for trademark

25

infringement. The relief obtainable in these actions are injunctions damages and

other ancillary relief amongst which an injunction is the most effective as it a

specific order of the count directing the defendant to refrain from the act of

infringement or passing-off action.

)

၏

In addition to civil litigation a person who has established the right to a

trademark may take action against anyone for the following offenses:

(a) using a false trademark punishable with imprisonment up to

three years or with fine or with both;

( )

(b) counterfeiting a trademark, punishable with imprisonment up to

three years or with fine or with both;

26

)

(c) making or possessing any instrument for counterfeiting a

trademark punishable with imprisonment up to three years or

with fine or with both

)

)

(d) selling goods marked with a counterfeit trademark punishable

with imprisonment up to one year or with fine or with both;

)

Besides the above-mentioned provision in the penal code, there exists the

Myanmar Merchandise Act, which supplements relevant provisions in the Penal

Code. The Act power the Court inter alia, to confiscate all goods and things by

means of or in relation to which the offense has been committed.

၏

၏

7.3.3 Copyright

27

The existing Myanmar Copyright Act came into force in 24th February

1914. In fact, the Act contains only 13 sections with Copyright Act, 1911 of

United Kingdom of Great Britain and Ireland, attached there to as the First

Schedule. Almost all of the provisions of the Act, with the exception of a few

sections that deal with penalties, are provisions which prescribe how to modify

and apply English Act in Myanmar.

၄ ၄)

)

၏

၏

h e ter m “co p yri g ht” i defin ed a fol low ;

-

Section 1 (1) Subject to the provisions of this Act, copyright shall subsist for the

term hereinafter mentioned in every original literary, dramatic, musical and

artistic work if-

)

(a) in the case of a published work, the work was first published within

the Union of Myanmar and

28

)

(b) in the case of an unpublished work, the author was at the date of the

making of the work a citizen of the Union or resident within the Union

of Myanmar;

)

but in no other works, except so far as the protection conferred by this

Act is extended by notification by the President of the Union to foreign

countries.

2. Fo r th e pu rp o e o f t h i Act; “cop yri gh t ” mean t he ol e ri gh t to

produce or reproduce the work or any substantial part thereof in any material

form whatsoever, to perform or in the case of a lecture to deliver, the work or

any substantial part thereof in public; if the work is unpublished, to publish the

work or any substantial part thereof and shall include the sole right-

)

29

၏

-

(a) to produce, reproduce, perform, or publish any translation of the

work;

( )

(b) in the case of a dramatic work, to covert it into a novel or other non

dramatic work;

)

(c) in the case of a novel or other non-dramatic work, or of an artistic

work, to covert it into a dramatic work by way of performance in

public or other wise;

)

(d) in the case of a literary dramatic or musical work to make any record,

perforated roll, cinematograph film, or other contrivance by means of

30

which the work may be mechanically performed or delivered.;and to

authorize any such acts as aforesaid.

)

3. For the purpose of this Act, publication, in relation to any work, means

the issue of copies of the work to public and does not included the performance

in public of a dramatic or musical work, the delivery in public of a lecture, the

exhibition in public of an artistic work, or the construction of an architectural

work of art, but for the purposes of this provision, the issue of photographs and

engravings of works of sculpture and architectural works of art shall not be

deemed to be publication of such works.

)

၏

31

7.3.2.1 Infringement of copyright

2.(1) Copyright in a work shall be deemed to be infringed by any person who,

without the consent of the owner of the copyright, does anything the sole right

to do which is by this Act conferred on the owner of the copyright;

Provided that the following acts shall not constitute an infringement of

copyright: -

)

(i.) Any fair dealing with any work for the purpose of private study, research,

criticism, review, or newspaper summary:

)

(ii.) Where the author of an artistic work is not the owner of the copyright

therein, the use by the author of any mould, cast, sketch, plan, model, or

study made by him for the purpose of the work, provided that he does not

thereby repeat or imitate the main design of that work:

32

)

(iii.) The marking or publishing of paintings, drawings, engravings or

photographs of a work of sculpture or artistic craftsmanship, if

permanently situate in a public place or building or the making or

publishing of paintings, drawings, engravings or photographs (which are

not in the nature of architectural drawings or plans) of any architectural

work of art:

)

၏

၏

(iv) The publication in a collection, mainly composed of non-copyright

matter, bona fide intended for the use of school, so described in the title

and in any advertisments issued by the publisher, of short passages from

33

published literary works not themselves published for the use of schools

in which copy right subsists: Provided that not more than two of such

passages from works by the same author are published by the same

publisher within five years, and the source from which such passages are

taken is acknowledged:

၄)

)

၄

(v) The publication in a newspaper of a report of a lecture delivered in

public, unless the report is prohibited by conspicuous written or printed

notice affixed before and maintained during the lecture at or about the

main entrance of the building in which the lecture is given, and except

whilst the building is being used for public worship in a position near the

lecture but nothing in this paragraph shall affect the provisions in

paragraph(i) as to newspaper summaries:

)

34

(vi) The reading or recitation in public by one person of any reasonable

extract from any published work.

၆)

2(2) Copyright in a work shall also be deemed to be infringed by any person

who-

)

i. sells or lets for hire, or by way of trade exposes or offers for sale or

hire, or

)

ii distributes either for the purposes of trade or to such an extent as to

affect prejudicially the owner of the copyright or

)

iii by way of trade exhibits in public or

35

)

iv imports for sale or hire

)

any work which to his knowledge infringes copyright or would infringe

copyright if it has been made within the Union of Myanmar in or into which the

sale or hiring, exposure, offering for sale or hire, distributions, exhibition, or

important took place.

2(3) Copyright in a work shall be deemed to be infringed by any person

who for his private profit permits a theatre or other place of entertainment to be

used for the performance in public of the work without the consent of the owner

of the copyright, unless he was not a ware, and has no reasonable ground for

suspecting, that the performance would be an infringement of copyright.

)

36

Infringement of Copyright is doing anything, without the consent of the

owner of copyright, the sole right to do which is by the Act conferred on him.

Selling, offering for sale, hiring, distributing or exhibiting in public for the

purposes of trade, importing for sale or hiring any work shall also constitute an

act of infringement of copyright. It shall also be an infringement of copyright if

a person for his private profit permits a theatre or other place for entertainment

to be used for the performance in public of the work without the consent of the

owner of copyright. But there are also exceptions to the infringement of

copyright such as using any work for private study, research, criticism, review,

publishing an address of a political nature delivered at a public meeting,

publication in a newspaper of a lecture delivered in public unless such a

publication is not prohibited, publishing of printings, drawings, engravings or

photographs of a work or art, permanently situate in any public place, reading or

recitation in public of any reasonable extract from any published work.

၏

၏

37

7.3.2.2 Term of Copyright

General

The term for which copyright shall subsist shall, except as otherwise

expressly provided by this Act, be the life of the author and a period of fifty

years after his death. The exception to this provision is that at any time after the

expiration of twenty-five years from the death of the author of a published work

a person may reproduced it for sale if he has given the noticed in writing of his

of the work calculated at the rate of ten percent on the selling price of each

copy.

၏ ၄

)

)

၄ ၏

)

38

Works of Joint Authors ၏

Term of copyright differs form one another depending on the kind of

work created. If it is a work of joint authorship, copyright shall subsist during

the life of the author who first dies and for a term of fifty years after his death,

or during the life of the author who dies last, whichever period is the longer.

၏ )

၏

)

Posthumous works

In the case of a literary, dramatic or musical work, or and engraving in

which copyright subsists at the date of the death of the author, but which has not

been published, performed or delivered in public, before that date, copyright,

shall subsist till publication or performance or delivery in public, whichever

may first happen, and for a term of fifty years thereafter.

)

Government publications ၏

Copyright in any work which has been prepared by or under the direction

or control of any government department, belongs to the Government and

subsists for a period of fifty years from the first publication of the work.

39

၏

)

Mechanical Instruments

In the case of records perforated rolls, and other contrivances by means of

which sound may be mechanically reproduced, the term of copyright shall be

fifty years from the making of the original plate from which the contrivance was

directly or indirectly derived.

၄

)

Photographs

The terms of copyright in photographs in fifty years form making of the

original negative from which photograph is directly or indirectly derived.

)

7.3.2.3 Ownership of Copyright

The author of a work, as a general rule is the first owner of the copyright

therein. There are exceptions to this general rule. In the case of engraving,

photograph or portrait, where the plate or other original was ordered by some

other person and was make for valuable consideration then the person by who

such plate or other original work was ordered shall, in the absence of any

agreement to the contrary, be the first owner of the copyright. And also in the

40

case of the author in the employment of some other person under a contract of

service or apprenticeship to make the work in the course of employment by that

person who employs the author shall, in the absence of any agreement to the

contrary be the first owner of the copyright.

၏

၏

7.3.2.4 Civil remedies for infringement of copyright

Section 6(1) Where copyright in any work has been infringed, the owner

of the copyright shall except as otherwise provided by this Act, be entitled to all

such remedies by way of injunction or interdict, damages, accounts and

otherwise as are or may be conferred by law for the infringement of a right.

၆ )

41

6 (2)The costs of all parties in any proceedings in respect of the

infringement of copyright shall be in the absolute discretion of the Court.

၆ )

6(3) In any action for infringement of copyright in any work, the work

shall be pressured to be a work in which copyright subsists and the plaintiff

shall be presumed to be the owner of the copyright unless the defendant puts in

issue the existence of the copyright, or as the case may be the little of the

plaintiff, and where any such question is in issue, them-

၆ )

(a) if a name purporting to be that of the author of the work is printed or

otherwise indicated thereon in the usual manner, the person whose name

is so printed or indicated shall unless the contrary is proved, by presumed

to be the author of the work;

42

)

(b) if no name is so printed or indicated, or if the name so printed or

i nd icat ed i no t th e au tho r’ t ru e n ame o r th e n ame b y w h ich he i

commonly known, and a name purporting to be that of the publisher or

proprietor of the work is printed or otherwise indicated thereon in the

usual manner, the person whose name is so printed or indicated shall,

unless contrary is proved, be presumed to be the owner of the copyright

in the work for the purpose of proceedings in respect of the infringement

of copyright therein.

)

၏

43

Rights of owner against persons possessing or dealing with infringing copies

etc;

၏

Section 7.All infringing copies of any work in which copyright subsists,

or of any substantial part thereof and all paltes used or intended to be used for

the production of such infringing copies shall be deemed to be the property of

the owner of the copyright who according may take proceedings for the

recovery of the possession thereof or in respect of the conversion thereof.

၏

၏

Exemption of innocent infringer from liability to pay damages etc;

၏

Section 8 Where proceedings are taken in respect of the infringement of

the copyright in any work and the defendant in his defence alleges that he was

not aware of the existence of the copyright in the work, the plaintiff shall not

be entitled to any remedy other than an injunction or interdict in respect of the

infringement if the defendant proves that at the date of the infringement he was

not aware, and had not reasonable ground for suspecting that copyright

subsisted in the work.

44

Restriction on remedies in the case of architecture

Section 9 (1)Where the construction of a building or other structure which

infringes or which of completed would infringe the copyright in some other

work has been commenced, the owner of the copyright shall not be entitled to

obtain an injunction or interdict to restrain the construction of such building or

structure of to order its demolition.

)

9(2) Such of the other provisions of this Act as provide that an

infringing copy of a work shall be deem to be the property of the owner of the

copyright or as impose summary penalties shall not apply in any case to which

this section applies.

) ၏

45

Limitation of actions

Section 10. An action in respect of infringement of copyright shall not be

commenced after the expiration of three years next after the infringement.

The existing Myanmar Copyright Act came into force in 1914, recently,

there is a case decided on 4th No vemb er 1 9 99 befo re th e ju ti ce U u n Sh in , “U

H al Wi n & 2 V D aw K yi K yi a) D aw Yi n Wai Lw i n yay)” . U nd er cop yri ght

Act S.2(1) and S. 6 Substantial Damage 50,000 Kyats was paid to the copyright

owner Yin Wai Lwin (Pyay) for the novel rdIif;a0cspfwJh cufopömby the

infringing who is the owner of zkd;0- Video production, U Hla Win.

၄

၄) )

ါ ) ) ၆

)

For infringement of copyright in television and video, there is a specific

l aw en tit l ed “ h e el ev i ion and V id eo Law ” w hi ch p re crib e p enalt ie for

certain offenses. Under section 33 of that Law the offender of such offenses as

copyright, distributing, hiring or exhibiting for commercial purpose a censor –

certified video tape, without the permission of the license holder may be

punished with imprisonment extending up to three years or with fine extending

up to Kyats 100,000 or with both. In these cases, as the penalty is supposed to

46

be effective and deterrent and the trial of offenders is usually expeditious, the

owner of the copyright may not have recourse on civil action. However the fact

that the infringer has punished under the relevant penal law shall not be a bar to

civil litigation.

All of such disputes relating to copyright and neighboring rights are

settled amicably by negotiations or conciliation, sometimes with the

intervention of certain influential persons or bodies such as Writers and

journalists Association, Motion Picture Association, Music Association etc.

However as the Act is still in force, any person whose rights there under are

infringed may seek protection in accordance with the Act.

47

၏

Myanmar is a member of the World Trade Organization (WTO),

Myanmar have the obligation to adopt the related Intellectual Property Law in

consistent with the TRIPS Agreement on (Trade Related Aspects of Intellectual

Property Rights) 1994.

W )

၄) TRIPS

And then, Myanmar is a member of ASEAN Frame-work Agreement on

Intellectual property, the Attorney General Office has been drafting the new

Patent Law and we have to review existing Laws and to ensure compliance with

international and intergovernmental obligation of Myanmar.

7.3.3 Patentsand Designs

Myanmar Patents and Designs Act, 1939 was first introduced to

Myanmar after independence, in 1937, of then Myanmar from India. After the

expiry of that Act then Legislature of Myanmar enacted Myanmar Patents and

Designs Act, 1945 as a substitute for the 1939 Act. However the 1945 Act was

48

never brought into force and it was replaced by the State Law and Order

Restoration Council Law No. 4 of 1993. However, the Myanmar Patents and

Designs (Emergency Provisions) Act, 1946, which came into force retroactively

on July 1, 1941 is still in force with only two sections in it. Section 2 of this

Emergency Provision Act provides th at unt il th e Burma’ at ent an d D e ign

Act, 1945 comes into operation, the Indian Patents and Designs Act, 1911 shall

continue to have effect in Human as if not withstanding the separation of India

and Myanmar. Myanmar had continued to be a part of India, …” Bu t t he nd i an

Patents and Designs Act 1911 might have been unknown to some lawyers of the

letter generation of the independent. Myanmar, and this Act could not be found

in law books for Myanmar presently in use. In these circumstances, it may be

said that there is presently no law or at least any law in operation on patents and

designs.

၄

၄) ၏ ) ၄၆

၄ )

၄ ၏

)

49

7.3.3.1 Patents under the TRIPs Agreement 1994

၄

An invention is an idea which permits the practical solution of a specific

problem in a field of technology. Inventions are characteristically protected by

p atent , al o call ed “p at ent fo r inv en ti on ”. Ev ery co u nt ry w h i ch g iv e l egal

protection to inventions-and there are over 140 such countries-gives such

protection through patents, although there are a few countries in which

protection may also be given by means other than patents.

၄

၄

The essential elements of the standards concerning the availability, scope

and use of patent rights include the following: -

-

- Patents shall be available for products and processes in all fields of

technology, provided they are new, involve an inventive step and

50

are capable of industrial application except that Members may

exclude invention, the prevention within their territory of the

commercial exploitation of which is necessary to protect order

public or morality, including to protect human, animal or plant life

or health or to avoid serious prejudice to the environment, provided

that such exclusion is not made merely because the exploitation is

prohibited by their law and Members may further exclude

diagnostic, therapeutic and surgical methods for the treatment of

humans or animals plants and animals other than micro-organisms

and essentially biological processes; however, Members shall

provide for the protection of plant varieties either by patents or by

an effective sui generissystem by any combination thereof.

-

၄ ၏

)

၄

)

)

51

- Patents shall be available and patents rights enjoyable without

discrimination as to the place of invention, the field of technology

and whether products are imported or locally produced.

-

- Exclusive rights shall include for products. The right to prevent

third parties from making using, offering for sale, selling or

importing the patented product, and for processes, the right to

prevent third, parties from using the process and from using,

offering for sale, selling or importing for those purpose the product

obtained directly by that process subject to certain allowable

exceptions.

-

52

- Patents shall be assignable, transferable and shall be available for

licensing. (Article 28 (2) of TRIPs Agreement, 1994)

-

- Certain conditions are imposed concerning the disclosure of the

invention in a patent application. . (Article 29 of TRIPs Agreement,

1994)

-

- Any use allowed without the authorization of the right-owner

(commonly known as a compulsory license) and such use by the

government is made subject to certain enumerated conditions: such

use in the case of semi-conductor technology is limited to certain

enumerated purposes;

- ၏

)

- Judicial review shall be available for decision to revoke or forfeit a

patent;

-

- The term of protection shall be at least 20 years from the date of

the filing of the application;

53

-

)

- The burden of proof concerning whether a product was made by a

patented process shall in certain cases be placed on the alleged

infringer. (Article 34 of TRIPs Agreement, 1994)

-

54

KEY TERMS

n tell ect ual rop ert y Law -

Cop yri g ht -

n eigh bou ring righ t -

p atent -

reg i t ered de i gn -

t rademark -

t rade li bel -

Merchand i ed Mark Act -

t ech nol og ical in v ent io n -

i nd u t rial d e ig n -

l it erary -

mu i cal -

artistic work -

fi l m -

p erfo rman ce o f p erfor mi n g arti t -

p hon og ram -

p oem -

n ov el -

emed i e -

n fri ng emen t -

N ot ary ublic -

D ramat i c -

p ubl i cati on -

55

Joint Authors -

Wo rl d rad e rg ani at ion W ) -

TRIPs Agreement -

W -

Exercise Question

1. Wh at do yo u un der t an d b y t h e t er m “ n t ell ect ual rop ert y”? Bri efl y

explain.(Chapter 7)

2. What kinds of laws are being existed in relation to Intellectual Property in

Myanmar? Write explanation notes on each kind.(Chapter 7)

3. Define and explain Copyright in Myanmar.(Chapter 7)

4. Define and explain Trademark Rights in Myanmar.(Chapter 7)

5. New Intellectual Property Law in Myanmar should be enacted according to

TRIPs Agreement. Why?(Chapter 7)