Client Alert: Promptly Re-register Your Trademark (Brand Name), as Recorded the Myanmar Registry of Deeds in the form of the Declaration of Ownership of Trademark, in Burma starting from January 2020 to Avoid the Negative Impact of “First to File Rule” Imposed by the Myanmar New Trademark Law of 2019

Email to: thao.dinh@bross.vn; vinh@bross.vn

Although Burma's trademark law (Pyidaungsu Hluttaw Law No. 3, 2019) has been approved by the Assembly of the Union ပြည်ထောင်စု လွှတ်တော်], it is still unclear exact when it will take effect because it has to wait for the subordinate legislation issued by the executive branch represented by the President of Myanmar.

Upon our receipt of URGENT NOTICE from our local partners in Myanmar, Bross & Partners would like to inform you of very important legal information related to the recommendation of re-registration of your trademark (brand name) as endorsed by the Myanmar Registry of Deeds in the form of the Declaration of Ownership of Trademark as follows:

1. The Myanmar Trademark Law of 2019, though passed by the Assembly of the Union, it has not yet been set for the date it officially takes effect. It is expected that such Law may be into force in June 2020. Moreover, it is still unclear at present how much governmental charge for trademark registration costs.

2. The most fundamental legal change is that Myanmar has decided to replace its current “first to use rule” with the new one “first to file rule” in establishing the trademark right in this country. As a consequence of this legal change, Myanmar will only grant protection to any trademark filed earliest amongst filed trademarks identical with or similar to, one another and used for identical or similar goods or services regardless of whether the junior trademark (filed later) was registered in the form of the Declaration of Ownership of Trademark endorsed by the Myanmar Registry of Deeds as before.

3. According to the recent notice released by the Myanmar Intellectual Property Office, Myanmar will operate its re-registration system effectively starting from since early January 2020 and lasting for a period of 06 months prior to entry into force of the Burmese Trademark Law. Such 6-month re-registration system, also known as "soft opening” trial is characterized in that the Myanmar Intellectual Property Office would only receive applications for re-registration of trademark that were previously issued or endorsed by the Registry of Deeds. Accordingly, this six-month period is understood as a transitional period during which Myanmar intends to protect the seniority (the legal rights and legitimate interests) of trademark owners those who already registered their trademarks in Myanmar. In other word, within this 6-month period, Myanmar will not apply its newly changed rule of first to file.

4. It should be noted that all applications for re-registration of trademarks that is filed within the above 6-month transition period will be assigned the application serial and filing date as the first date of entry into force of the Myanmar Trademark Law.

5. The re-filed trademark shall be examined in accordance with the Myanmar Trademark Law, and if granted, it will be protected within 10 years from the filing date. The required documents for re-registration include:

(i)         A reproduction of mark to be re-filed;

(ii)        List of goods and services according to the Nice Classification;

(iii)       Name and address of the owner (applicant) in English;

(iv)       A copy of the Declaration of Ownership of Trademark registered or renewed that was granted by the Registry of Deeds under the old registration system;

(v)        Original copy of legalized Power of Attorney or a copy of legalized Power of Attorney that was used for the previous registration provided it is still valid

(vi)       Proof of use of the trademark in the Myanmar market (including a copy of the Cautionary Notice that has been published in the local magazine of Myanmar; contracts, invoices, bills of lading, documents; image of branded products, services sold or provided in Myanmar, promotional advertising materials).

Bross & Partners is very rich in experience in registering trademark outside Vietnam, eg. in Myanmar, China, Cambodia, Thailand, the US, ect., Should you have any query, please contact us at vinh@bross.vn or 84-903 287 057, 84-4-3555 3466.

Bross & Partners, a renowned and qualified Patent, Design, Trademark and Copyright agent of Vietnam, constantly ranked and recommended by the Managing Intellectual Property (MIP), World Trademark Review (WTR), Legal 500 Asia Pacific, AsiaLaw Profiles, Asia IP and Asian Legal Business, is providing clients all over the world with the reliable, affordable contentious and non-contentious IP services including enforcement, anti-counterfeiting,  litigation regarding trademark, trade name, industrial design, patent, copyright and domain name.