Guidelines for Good Use of Trade Marks

The protection offered by registration of a trade mark can add significant value to your brand, enhancing its recognition as an identifier of your goods and services and a symbol of the quality and reputation of your business. It is therefore important to consistently manage and use your trade marks properly to avoid a loss or dilution of trade mark rights that could reduce the value of your trade marks and cause reputational damage to your business.

Implementation of Myanmar’s Trade Mark Law 2019 is still pending, and regulations under the Law have not yet been released. Consequently, some aspect of good trade mark usage in Myanmar, that depend on the legal framework for trade mark rights, remain a little unclear at present. However, based on past experience and international practice, it is still possible to identify several basic principles for good trade mark use in Myanmar.

Use the trade mark

Using your trade mark is an ongoing requirement for the validity of your mark. If for a continuous period of three years you do not use the mark in Myanmar for the goods or services for which it is registered, a competitor may have the registration removed. An application for removal for non-use can be commenced no earlier than five years after the date from which registration of the trade mark commenced.

Use the trade mark in the form in which it was registered

Do not change the trade mark from its present form. If you use a mark which is more than slightly different from your registered mark, the use of the altered mark might not count as use to maintain the validity of your registered mark. However, you are entitled to alter the dimensions of the mark or represent it in colours other than black and white (as long as the mark was registered in black and white).

Avoid transforming the trade mark into a mark which is descriptive of your goods or services

If the public associates the type of goods and services that you offer with the trade mark and ceases to associate the trade mark specifically with the goods and services that you provide, it is possible that you could lose your registration on the grounds that your trade mark has become generic or descriptive. To help prevent the mark becoming generic, wherever possible ensure that the mark is followed by a description of the goods or service in relation to which the trade mark is being used. For example, Johnson & Johnson describes its adhesive bandage strips as “BAND-AID brand adhesive bandages” rather than simply “BAND-AIDS”.

You should also be proactive in preventing others from using the trade mark without approval, either as a trade mark or to describe their goods and services. If a trade mark becomes likely to deceive or cause confusion because it no longer only indicates goods and services originating from you, the trade mark may be liable to be removed from the register.

Use of the ® symbol

In many countries, it is recognized good practice to use registered trade marks accompanied by the ® symbol, which signifies that it is registered. Trade mark law in other countries often makes it a criminal offence to falsely claim that a trade mark is registered. Use of the ® symbol with a brand or mark is effectively a claim that the brand or mark is registered, and is therefore a criminal offence in many countries if falsely used.

There are no provisions on the use of the ® symbol in the Trade Mark Law 2019. However, this issue may be covered in the regulations to be issued under the Law. Subject to what those regulations may say on the topic, once a trade mark is registered it should be used with the ® symbol. The ® should appear in the top right hand corner of the trade mark.

Use of the ™ symbol

Before a trade mark is registered, it is good practice to use the TM symbol at the top right hand corner of the trade mark. Use of the TM symbol indicates that you regard the words and/or graphics as a trade mark and are using them as a trade mark (rather than as a generic term). It is important that you do not represent that your trade mark is registered (by use of the ® symbol or otherwise) if that is not the case in the country in which, and for the goods and services for which, the trade mark is being used. In case of doubt, the TM symbol should be used.

Use a trade mark notice

The symbols TM and ® are not required to be used by law, but they are of some use in practice in maintaining your trade mark rights. However, where possible, it is better to use a longer form of notice which indicates that you are the proprietor of the mark.

For instance, where the trade mark is used and the ® or TM symbol are used next to the trade mark, a notice similar to the following should be included adjacent to the trade mark or, by the use of an asterisk, in proximity to the trade mark:

(a)     where the ® symbol is used, “Registered trade mark of [insert proprietor]”

(b)     where the TM symbol is used, “Trade Mark of [insert proprietor]”. ·

In text, the first mention of the trade mark should be accompanied by the symbol and notice. All subsequent uses of the trade mark in that document could appear without the symbols as long as the words are distinguished from the surrounding text (for example, by placing them in italics).

Observe these guidelines whenever using the trade mark

You should always observe good usage guidelines for the trade mark. Do not, for example, adopt different practices for internal communications within the business, correspondence with advertising and media organisations and correspondence with clients.