Myanmar's Impending Trademark Law
Myanmar's Impending Trademark Law - What does the new law encompass?
updated on 02 December 2019
Myanmar will soon have a formal trademark registration system in place once the Myanmar Trademark Law 2019 comes into effect. The Trademark Law was passed by the Lower House on 12 December 2018, following its adoption by the Upper House on 15 February 2018, and was enacted on 30 January 2019. The Trademark Law is anticipated to be implemented in January 2020.
Apart from establishing a formal framework for a comprehensive trademark registration system which adheres to international standards, the enactment of the Trademark Law also signifies the inception of a modern intellectual property regime for the country. With the new Trademark Law, the current practice of registration of Declarations of Ownership with the Office of Registration of Deeds and publication of Cautionary Notices in newspapers in Myanmar will no longer be relevant. Once the new law enters into force, the existing Declarations and Cautionary Notices will no longer be sufficient to demonstrate ownership of marks in Myanmar.
Some of the notable features of the system under the new Trademark Law are as below:-
The new law introduces “first-to-file” system which replaces the “first-to-use” principle under the current law, and requires no evidence of prior use or ownership in Myanmar.
Types of Marks
The Trademark Law includes provisions for registering well-known marks and recognition to trade, certification, collective and 3D (shapes and packaging) marks.
The registration process includes application filing, formalities examination, followed by substantive examination. Once the application clears the substantive examination by the Registrar, it proceeds to publication for opposition and the Registration Certificate will be issued.
Once registered, trademarks will be protected for ten (10) years from the date of application, and can be renewed every ten (10) years.
The new trademark law introduces multi-class applications, whereby applicants can apply for a trademark under several classes in one (1) application.
Trademark applicants can also claim priority under the Paris Convention, provided the application is filed within six (6) months from the date of application in another country abiding the Paris Convention.
The new law provides for opposition, invalidation and cancellation actions too.
New Official Bodies
To operate and oversee the Trademark law, the Myanmar Intellectual Property Office (MIPO) will be established under the Ministry of Commerce. In addition, specialized Intellectual Property Courts will be established to handle all IP disputes.
There is no procedure for automatically re-registering marks which are recorded under the current system. Therefore, all marks currently recorded with the Office of Registration of Deeds would need to be re-filed and examined during the “soft opening” period, in order to gain protection in Myanmar.
Launch of "Soft-opening" Period
A “soft opening” period which lasts for 6 months is likely to commence from January 2020. During the 6-month “soft opening” period:
Existing trademarks must be re-filed with the MIPO as the current registration system will no longer be recognized.
Filing of new trademark application will be on a first-to-file basis. Trademark owners will lose out on getting an early filing date, or worse still, lose their trademark rights to a third party, if they do not take advantage of the “soft opening” period.
new trademarks are not allowed for registration
What Should You Do?
For trademark owners who consider Myanmar as an important market, and who do not have existing registrations for their trademarks under the current registration system, we advise you to take immediate steps to register your trademark before 31 December 2019 under the current system to qualify for re-filing during the “soft opening” period. Otherwise, all new trademark applications can only be filed after the end of the “soft opening” period, anticipated by on or around July 2020.
Trademark owners with existing registrations of their marks under the current registration system should collate and prepare the necessary documents and information in readiness for re-filing of all their marks during the “soft opening” in January 2020.
Requirements for Re-filing of Trademark
Documents required to re-file your trademarks are as follow:-
Completed application form provided by Myanmar Intellectual Property Office
Legalized Power of Attorney
Original duly recorded Declaration of Ownership of Trademark at the Registry of Deeds and Assurances
Evidence of use (eg. Photo of the product / shop in the Myanmar market or Customs Clearance)
Some of the documents above will require the signature of an authorized personnel of the applicant.
If you have any questions, wish to lodge your trademark in Myanmar now or wish to re-file your trademark, please do not hesitate to contact us.
We will keep you updated with further information.