Trademark Law

On January 30, 2019, Myanmar’s Trademark Law, expected for a long time was enacted into law, which establishes the framework for the complete trademark registration system, open to both foreign and local trademark proprietors. Once the administrative structures and enabling legislation to support this system will be in place, the existing trademark holders who have already registered their marks under Myanmar’s old system will have to file a new Trademark Application to secure their rights under the new law.

SIGNIFICANT CHANGES AND OVERVIEW OF THE NEW LAW

Under the new law, Trademark Registration will last for a period of 10 years from the date of filing and can be renewed after every 10 years. Registration will now be on a first-to-file system, rather than the previous first-to-use system. Registered Trademarks may also have an advantage from a right to claim priority from any application within the prior six months filed in a Paris Convention country.

Among several noteworthy changes, the new law also presents criminal penalties for the issues of Trademark Infringement and counterfeiting, which range up to imprisonment of three years with a fine of USD 3,250 approximately. The judiciary is also provided with special powers to set up specific IP courts, however, it is still not very clear if there is any place to implement the same in the coming future.

In addition, the new law also establishes the Central Committee for Intellectual Property Rights, and the Intellectual Property Rights Agency for collectively having the jurisdiction over the registration system of trademarks in Myanmar.

ESTABLISHING THE NEW LAW

As the administrative bodies necessary for the new system are still being established in Myanmar, the trademark applications for registration under the new law are still not being accepted. For the implementation of required regulations and establishment of Intellectual Property Offices, no timeline has been determined. New recordal applications, renewals of existing recordals, and other such trademark declarations are all being still accepted under the old system as of January 31, 2019.

RECOMMENDATIONS FOR TRADEMARK OWNERS

  • Though the procedures and administrative structures for the new system are yet to be in place, the documents required for the trademark application are the same as that of the previous draft. Therefore, the applicants can compile and prepare their documents well in advance.
  • The documentary evidence for new trademark applications consists of a proof of existing records with the Office of the Registration of Deeds. As it is still not clear how much importance will be given to these during the examination process of trademarks, the trademark owners are highly advised to make sure that their rights are well recorded and updated.
  • Likewise, the law also makes a reference to provide evidence of use for supporting the application for the trademark. Therefore, trademark owners should collect and combine all evidence of existing use comprising cautionary notices, advertisements, and office stationery.
  • In Myanmar, existing marks which are subject to licensing arrangements should also be audited and examined for updated depictions of the relationships with licensees to avoid any uncertainties.