Myanmar Trademark Law 2019 Section 13(a), (b) and (d): Descriptive and Generic Marks

For applicants in Myanmar, one of the most common and commercially important refusal issues is whether a proposed mark is merely descriptive or generic. This matters because Section 13 of The Trademark Law 2019 bars marks that lack distinctive character, consist exclusively of descriptive indications, or are generic or customary in the trade. Businesses often prefer marks that communicate product qualities quickly, but the closer a mark comes to naming the goods or describing their characteristics, the greater the risk that the Intellectual Property Department will refuse it. The issue becomes more complex for combined marks, foreign-language terms, and marks that may have acquired distinctiveness through use before filing.

The Legal Framework: Section 13(a), Section 13(b) and Section 13(d)

• Section 13(a): Refuses marks that lack distinctive character.
• Section 13(b): Refuses marks consisting exclusively of signs or indications that may serve to designate the kind, subject matter, quality, quantity, intended purpose, value, geographical origin, time of production, or other characteristics of the goods or services.
• Section 13(d): Refuses marks that are generic or customary in the current language or in bona fide and established practices of the trade.
• Section 13 exception: A mark otherwise objectionable under Section 13(a) or Section 13(b) may still be registrable if, before the filing date, it has acquired distinctiveness through use among consumers or has been used continuously and exclusively in good faith by the applicant.
• Section 23: Allows the Examiner to notify objections and gives the applicant one opportunity to amend within the prescribed period.
• Section 26: Permits opposition on Section 13 grounds within 60 days of publication.
• Section 50: Permits invalidation of a registration on absolute grounds if the mark should not have been registered under Section 13.

Descriptiveness and Genericness Test Under Section 13

The legal test in Myanmar is functional and consumer-facing. The central question is whether the sign will be perceived by the relevant public as a badge of commercial origin, or instead as language that describes what the goods or services are, what they do, where they come from, or some other characteristic of them.

Under Section 13(a), lack of distinctiveness is the broad concept. Under Section 13(b), descriptiveness is the specific rule for signs that directly communicate characteristics of the goods or services. Under Section 13(d), genericness addresses the stronger case where the sign is not just descriptive but the ordinary name of the product or the established term in trade.

A descriptive mark is one that consumers would understand as conveying information about the goods or services rather than identifying one undertaking as their source. Examples include signs indicating quality, kind, intended purpose, or origin. A generic mark is more serious: it is the name by which the relevant goods are known in trade or ordinary language. Generic terms cannot function as trademarks because all traders need freedom to use them.

The guide confirms that examiners are likely to apply Section 13 strictly to purely descriptive and generic marks. The word “exclusively” in Section 13(b) matters, but applicants should not overread it. A mark made up of a descriptive expression with trivial ornamentation will still face objection because the descriptive message remains dominant.

The line between suggestive and descriptive marks is therefore critical. A suggestive mark hints at a quality but requires thought or imagination to connect the sign with the goods. Such marks are generally registrable. A descriptive mark conveys the characteristic directly and immediately. In practice, borderline cases are often decided by how quickly an average consumer or trader would perceive the meaning in the Myanmar market context.

What the Intellectual Property Department Considers Descriptive or Generic

The Intellectual Property Department is likely to focus on ordinary commercial understanding. Examiners will ask what consumers and traders in Myanmar would think the sign means when used on the listed goods or services. This inquiry is not limited to Burmese words. An English or other foreign-language term may be treated as descriptive if it is commonly understood in the relevant market.

Directly descriptive signs

Marks that plainly describe product type, quality, or characteristic are high-risk. Examples from the guide include phrases such as “Fresh Tea” for tea or “Sweet Tea” for tea. These are likely to be refused because they tell the consumer what the product is or what it is like.

Generic signs

A term that is the common name of the product, such as a literal product name used for the same goods, is effectively fatal under Section 13(d). The guide emphasizes that genericness is examined strictly, and a generic term generally cannot be salvaged by use evidence.

Foreign-language and translation issues

Myanmar does not have a special codified translation rule, but the IPD considers what consumers understand. If an English term is widely known among traders and consumers, it can be treated as descriptive just like a Burmese equivalent. If a foreign word is not generally understood in Myanmar, descriptiveness risk may be lower. But that assessment is factual and market-specific. Applicants should not assume that an English term is inherently distinctive merely because it is foreign.

Similarly, transliterations and translations should be reviewed as part of clearance. A Burmese equivalent of an English descriptive term may carry the same objection, and a combined filing strategy that includes multiple scripts should account for the meaning in each script.

Stylization and logo elements

Stylization has limited value where the wording itself is descriptive. The guide states that examiners give little weight to stylization alone in overcoming descriptiveness. A descriptive phrase written in a decorative font will usually remain descriptive. Likewise, a simple device added to a descriptive word mark will not necessarily convert the overall sign into a distinctive trademark.

For pure logo marks, descriptiveness risk is lower, but a logo can still be descriptive if it is a realistic or ordinary depiction of the goods or their characteristics. A realistic image of the product itself may be seen as non-distinctive. More creative or abstract logo elements are more likely to pass.

Combined marks and the dominant element

The dominant-element analysis is particularly important. If the word portion of a combined mark is descriptive and visually prominent, the IPD may view the entire mark as inheriting the weakness of that word. Only where the device element is sufficiently distinctive and dominant might the composite as a whole be considered registrable. That does not mean the applicant acquires exclusive rights in the descriptive wording itself.

Key Case Law

No leading cases have been published on descriptiveness or genericness under Myanmar’s modern Trademark Law 2019. Applicants should therefore assume that the Intellectual Property Department will apply Section 13(a), Section 13(b), and Section 13(d) according to the statutory text and general international trademark principles rather than relying on a developed body of precedent.

The Procedure for Responding to a Descriptiveness or Genericness Refusal

When the IPD raises Section 13(a), Section 13(b), or Section 13(d), the applicant should address the refusal with a structured response.

• Step 1: Identify the precise objection. Determine whether the Examiner says the mark lacks distinctiveness generally, is descriptive of characteristics, or is generic or customary in trade.
• Step 2: Review the listed goods and services. Sometimes the objection is stronger for some goods than others. Narrowing the specification may help if the wording only describes a subset of the original list.
• Step 3: Consider whether the mark is actually suggestive rather than descriptive. The response should explain why consumers must exercise thought or imagination before connecting the sign to the goods.
• Step 4: Assess whether the sign is understood in Myanmar as the Examiner claims. For foreign-language marks, evidence on local understanding may be relevant.
• Step 5: If acquired distinctiveness is available, submit evidence showing that before the filing date the sign had come to identify the applicant as the source. This may include years of use, sales data, advertising expenditure, market share, media coverage, distributor statements, and consumer recognition evidence.
• Step 6: For a combined mark, argue the significance of the design element only if it truly changes the overall commercial impression. A minor decorative logo will rarely overcome a strong descriptive word objection.
• Step 7: File the response within the period stated under Section 23. Failure to respond risks withdrawal of the application.
• Step 8: If refusal is maintained, consider appeal under Section 65.

Applicants should be realistic about genericness. If the term is the ordinary product name, arguments about stylization or use are unlikely to succeed. In those cases, redesigning the branding and filing a more distinctive mark is usually more efficient than litigating the point.

Strategic Recommendations

• Recommendation: Choose arbitrary, fanciful, or at least suggestive marks at the outset. Prevention is far cheaper than trying to prove acquired distinctiveness later.
• Recommendation: Test the meaning of foreign-language terms in the Myanmar market before filing. A term that appears inventive to foreign management may be descriptive to local traders.
• Recommendation: Do not rely on font or minor ornamentation to save descriptive wording. If the word is weak, use a genuinely distinctive device or adopt a different verbal mark.
• Recommendation: Build an evidence file early for weak marks. If acquired distinctiveness may be needed, preserve dated advertising, invoices, sales records, and market-facing materials from before filing.
• Recommendation: Review the dominant element of combined marks. If the descriptive word will be what consumers remember, the device will not carry the application far.
• Recommendation: Consider narrower goods descriptions where appropriate. A sign may be descriptive for some goods but not others.

Common Mistakes

• Mistake: Assuming that a foreign word is automatically distinctive. The IPD looks at actual understanding in Myanmar, not the applicant’s internal branding view.
• Mistake: Treating genericness and descriptiveness as the same level of problem. Genericness under Section 13(d) is generally much harder, and often impossible, to overcome.
• Mistake: Submitting only conclusory statements of long use. Acquired distinctiveness requires evidence, not assertions.
• Mistake: Overestimating the impact of stylization. Decorative fonts rarely change a descriptive message into a source indicator.
• Mistake: Filing a combined mark where the only memorable element is descriptive wording. Examiners and opponents often focus on the dominant verbal element.

Key takeaway: Under Section 13(a), Section 13(b), and Section 13(d), Myanmar draws a sharp line between source identifiers and market language that competitors need to use. The safest course is to adopt a distinctive mark from the beginning, and where that is not possible, be prepared to prove acquired distinctiveness with substantial evidence tied to the filing date.