Brand Protection in Myanmar: What can be done to safeguard Intellectual Property rights?
For years, it has been a complicated and time consuming process for a company to protect its intellectual property (IP) in Myanmar. Consumers in urban shopping centers or rural markets can purchase a wide variety of counterfeit products that are openly sold throughout Myanmar. Counterfeit international whisky brands such as Johnnie Walker are sold as genuine while fake Chinese brands are manufactured at an industrial scale and smuggled into China. The scope of fake products is limitless – from printer ink to instant coffee to life saving medicine – it is all produced and available in local markets or exported surreptitiously across the country’s porous borders.
While legislation and enforcement remains a key problem, Access Asia has experience and has developed strategies that can help firms protect their brands in Myanmar. Initial considerations for the IP owner should be:
Has the IP owner registered its trademark with the Office of the Registrar of Deeds and obtained a registration certificate for its products? For products that are scrutinized by the Myanmar Food and Drug Administration (FDA,) the product(s) should also be registered with this agency.
If the IP owner has not registered as a formal legal entity in Myanmar, does it have any authorized dealers/distributors for its products in Myanmar?
If the answer is yes to the above points, then the IP owner has the legal right to have its IP protected and can initiate legal action if the owner can provide evidence of infringement. If the answer is no to the points above, then the primary course of action would be to instruct legal counsel to send a Letter of Notice to the counterfeit manufacturer to cease and desist, send Letters of Notice to your clients in the markets, and a letter to the FDA. Typically the violating manufacturer will cease production if they believe that legal action is imminent. Moreover, should the FDA view the case as a public health priority, then typically the FDA will work together with the Myanmar Police to shut down the manufacturer.
A complicated issue for IP owners is that the burden of proof is the responsibility of the trademark owners and getting authorities to investigate cases of infringement remains a low priority without showing strong evidence. The starting point to protect a brand often starts with market sweeps to identify the location and extent of a brand’s infringement. While market sweeps are generally straightforward, to build a legally binding case the integrity of the chain of evidence must be documented extensively. The exact address and a map of each vendor selling a fake brand must be documented, photos should be taken showing the shop/factory, the distribution method noted (if it can be determined), receipts collected from all samples purchased, samples must be thoroughly labelled, and witness names and contact details should be collected if the ultimate goal is legal prosecution.
After market sweeps have identified counterfeit products, it is often difficult to track the source of a fake product to their manufacturing source with 100 percent certainty. From experience, we have noted that retailers will often cooperate with the legal owner of the brand, yet even this does not guarantee identifying the distribution channels as they are often based on informal connections. Yet it is common that fake products will have a high number of shops selling the counterfeit goods and the distributor(s) and manufacturer(s) will eventually be identified.
Access Asia also recommends engaging local legal counsel to ensure that the chain of evidence is admissible in a Myanmar court. In addition, legal counsel should be used to interface with local authorities who are often reluctant to enforce IP violations without strong condemning evidence.
While the process of protecting IP rights in Myanmar remains difficult, Access Asia can help companies protect their brands in this rapidly growing economy. When the market is aware that the legal IP owners are willing to pursue counterfeiters, genuine brands can compete and thrive in Myanmar.
