Prepared by Myanmar colleagues of Bross & Partners

Contact us at vinh@bross.vn

On January 30, 2019, The Trademark Law (Pyidaungsu Hluttaw Law No.3, 2019) and The Industrial Design Law (Pyidaungsu Hluttaw Law No. 2, 2019) were passed by the Myanmar Parliament but they will enter into effect “on the day specified by the president in a notification”. Of course, it needs a period to prepare and issue rules and regulations as well as establish IP offices and IP Courts etc. Trademark filing under the new law system is not possible yet but you should pay attention to the following issues if you are intending to do business in Myanmar:

1. What will happen to the marks currently recorded at the Office of the Sub-Registrar of Deeds and Assurance under the current first-to-use system?

Myanmar’s current first-to-use system will be replaced by a first-to-file system when the new Trademark Law officially comes into effect. As a result, all trademarks currently recorded by the way of registering Declaration of Ownership of Trademark under Deeds Registration Law 2018 would need to be re-filed and examined in order to gain protection in Myanmar. It means that current recorded trademarks will not be automatically protected under the new first-to-file system.

It is therefore very important that registrants of the current recorded trade marks in Myanmar re-apply for their marks as soon as possible when the new Trademark Law comes into effect in order to be protected under the new trademark regime.

In case of similar or identical marks filed by more than one applicant on the different date, the applicant who submitted application at the earliest shall have right to registration.

2. Eligible marks for registration

Trade Mark, Service Mark, Collective Mark, Certification Mark, Geographical Indication, Well-known Mark, Trade Name, Right of priority, Trade Fair right of priority (pictures, names, signatures, letters, words, numerals, brands, labels, colors) shall be accepted for registration as a trademark in Myanmar.

Nice Classification is adopted.

3. Non-registrable marks

Absolute ground of refusal:

- The mark contains prohibitions under the existing laws of Myanmar

- The mark is generic.

- The mark is against public order, morality, faith or venerated and cherished culture of a State of Myanmar.

- The mark is using a State flag, emblem of State, emblem of government institution, intergovernmental organizations, foreign state or international organizations, flag or emblem of Red Cross or Red Crescent.

- The mark contains a symbol which is protected under international agreements to which Myanmar is a member state.

Relative grounds of refusal:

- The mark is not distinctive - Lacking distinctiveness.

- The mark is similar or identical to other’s registered marks or well-known marks.

- The mark misleads the public or trade circles

- The mark infringes earlier IP rights

- The mark was filed in bad faith

4. Trademark registration procedure

Registration procedure includes formality and substantive examination, publication for opposition and granting certificate. Opposition on the absolute ground or related ground may be filed by anyone by paying an opposition fee within 60 days as of publication.

Filing requirements under the new law system:

• An application form which must be filed together with its local Myanmar Translation.
• A Request for registration;
• Power of Attorney. Now it is not sure yet notarization or legalization step will be required or not. In future, new IP Office will issue a User Guideline.
• The declaration of intention to use the mark.
• Name and address of individual applicant or legal entity;
• Clear and complete representation of the mark.
• Goods and services classified by the International Classification System;
• If the applicant is a legally constituted organization, to mention the registration number, type of organization and the country.
• In case of priority claim, the request letter for priority claim is to be submitted along with authentic evidence and statement of priority rights.
• If an applied-for mark has already registered at the office of the Registry of Deeds, the applicant must submit the original duly stamped Declaration of Ownership.

Other requirements may be demanded by Department from time to time.

5. Term of trademark protection

A registered mark has 10 years protection from the date of filing of application, extendable by a period of 10 years. Late renewal available within 6 months from expiry.

6. Enforcement

The new Trademark Law set both civil and criminal liabilities for trademark infringement. Trademark infringement in Myanmar will constitute a criminal offence punishable by fines and/or up to 3 years of imprisonment.

7. Transitional Provisions

Section 93 of new Trademark Law stated that:

1. Trademark owners who registered at the Registry Office or trademark owners who actually uses in the market of the State want to have the right of this law shall apply for registration as per this law;
2. Trademarks which are being actually used in the market of the State, whether or not registered at the Registry Office, shall be given Priority Right as to these marks for the goods or services associated with the marks within a specified period.

Pursuant to Section 93 of new trademark law, we presume that transitional period will be given for re-registration of trademarks which are prior and actual use on the market, under coming new trademark law system.  If you had marks currently recorded and used in Myanmar, those marks comparing with marks without record and use should have a better chance to be granted under the coming new trademark law system.

As a result, now that, if your trademarks were recorded at the Sub-Registrar of Deeds and Assurance, you need to collect actual use evidence documents (on the market) of your important trademarks and its original Registered Declaration under current system and then contact us to fulfill a pre-order form to early prepare for re-file new applications for trademark registration in Myanmar.

Should you have any query, please get in touch with us at vinh@bross.vn or 84-903 287 057

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