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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 12th December 2018, following its adoption by the Upper House on 15th February 2018, and was enacted on 30th January 2019, along with a new Industrial Design Law. This was followed by the enactments of a new Patent Law on 11th March and Copyright Law on 24th May. Among all of these new enactments, the Trademark Law is said to have the highest impact on the investors and entrepreneurs alike. This establishes a huge initiative set by Myanmar to attract foreign investors given the fact that how important intellectual property protection is viewed by the modern world. Myanmar already bears the brunt for being the only ASEAN country that is not a member of the Madrid Protocol. The new Trademark Law establishes a new framework for trademark registration and protection in line with other ASEAN countries and international standards.
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 (ORD) 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.
Unsurprisingly, the law’s implementation will likely be affected by the COVID-19 pandemic as the government recalibrates its focus to deal with public health concerns. Government offices nationwide are now operating with 50% of their staff on site, and parliament, which will have to approve the draft Trademark Rules is currently not in session. Nevertheless, the government officially formed the IP Central Committee under the trademark Law on 6th March 2020, with the relevant notification appearing in the Myanmar Gazette on 8th May 2020, marking an important development for the implementation of the law.
OVERVIEW OF THE NEW LAW
Some of the notable features of the system under the new Trademark Law are as below: –
System
- 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.
Registration
- 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, specialised Intellectual Property Courts will established to handle all IP disputes.
Transition Period
- 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.
SOFT OPENING PERIOD
As of 28th August 2020, the Ministry of Commerce of Myanmar has issued its notification no. 63/2020 announcing the launch date of the soft opening period for refiling trademarks, which has commenced on 1st October 2020. During this phase, the previous trademark owners are required to re-apply for registration in order to continue getting statutory protection. The re-filing is to be done along with the proof of registration under the old framework supported by a Power of Attorney. Experts also advise submitting any document as evidence proving the past use of the trademarks such as invoices, advertisements, catalogues, etc.
WHAT YOU SHOULD DO?
Trademark owners who wish to seek trademark protection in Myanmar should now do the following:
- review their trademark portfolio to identify existing protection gaps and to determine the trademarks to be refiled under the new system;
- urgently file applications for important marks not yet recorded in Myanmar at the ORD, in order to make use of the special “soft-opening” period reserved for existing registrants when the new IP office begins operations;
- locate existing copies of Declarations of Ownership recorded with the ORD, as well as cautionary notices previously published in local newspaper to support the refiling process;
- collate clear and dated evidence of existing use of the trademarks in Myanmar including advertisements, invoices, catalogues, and office stationery, to enable the utility of the new IP office’s “soft-opening” period, particularly if no existing recordation with the ORD is available;
- audit current trademark licensing arrangements for Myanmar;
- maintain existing trademark registrations at the ORD, and continue publishing trademark notices in local newspaper, in case the need to enforce the rights arises before the new law enters into force.
The ORD is still accepting trademark applications and renewals via Declarations of Ownership, and many brand owners continue to publish cautionary notices of their marks in major newspapers. The ORD is also planning to roll out its first public search facility in the meantime. Local law enforcement agencies also remain supportive in dealing with trademark-related matters. Until there is an official announcement otherwise, it appears that the status quo will remain unchanged in Myanmar.
Although it is argued that the sudden revamp of the old framework in addition to the lack of any procedure for the trademark owners under the old system to continue getting statutory protection results in a lot of inconveniences, it cannot be denied that the new Law is futuristic, in line with international standard and provides for an effective and dynamic framework for trademark registration and protection. Furthermore, strong protection of intellectual properties like trademark will strengthen the economy by attracting investors and entrepreneurs from the country as well as from abroad which is much needed for a developing economy like Myanmar.
Any individual and/or corporation looking to register their intellectual property in Myanmar or other ASEAN country to protect their Myanmar patent, Malaysia patent, Brunei patent, Singapore patent, etc. should look no further. We, Pintas Group, are your optimum selection to go for any intellectual property registration (including but not limited to trademark registration, patent registration, etc.) or any IP services in any ASEAN country.
Please visit our website or contact us at +6012-797 5077.
Sources:
https://www.advanz.com.my/myanmar-impending-trademark-law
https://www.managingip.com/article/b1m92zzwzbpmy3/myanmar-myanmars-trademark-law-journey-continues