MITSUBISHI decision brings hopes to owners of well-known marks


The concept of a ‘well-known trademark’ 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 in downtown Yangon ruled in favour of Mitsubishi Electric Corporation in a trademark infringement case against an importer and distributor of infringing breakers bearing the mark MITSUBISHI (U Zayar Lwin, Mitsubishi Electric Corporation & PME Co Ltd v U Hla Myint (Criminal Regular Case No 380/2014)).

The defendant was condemned to a fine and imprisonment under Section 486 of the Criminal Code. The court ruled:

"The plaintiff's products have 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 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 should create a pathway to the long-awaited draft trademark law to also protect well-known marks. 

Nick Redfearn, Rouse, Indonesia, and Fabrice Mattei, Rouse, Thailand

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