trademark law

The onset of the year 2019 herald quite a new and prospective journey for  Intellectual Property Laws in Myanmar, progressed by the passing of a new Trademark Law, Industrial Design Law, Copyright law, as well as a Patent law. Many of these are yet to come into effect. Specifically divulging into the sphere of trademarks, the new legislation intends to introduce a system of registration and enforcement in line with the international scenario aligned with the TRIPS Agreement. It also looks forward to implementing the law in an official capacity and rendering an electronic registration system.

One of the primary changes introduced by the Act is the transition from the “first-to-use” system to the “first-to-file” system, much like the hard-line approach in China and the UK. For guaranteeing a smooth transition, the CIPC (the Central Intellectual Property Committee) and the IPA (Intellectual Property Agency) have been concretely founded for better implementation and administration. Therefore, to ensure that the owners of legit trademarks continue obtaining protection under the current and reformed law, the priority right has been afforded to the marks previously registered. This priority right can be availed only by re-filing the existing marks under the new-system for further continuation of rights as elucidated in section 93 of the Act, which provides that marks currently registered with the Registration of Deeds Office have to be re-registered under the new system once it is up and running.

The system for re-filing and prospective filings has been bifurcated into a Soft-Opening Period and a Grand Opening Period.

Initially, the soft-period of the Myanmar Department of Intellectual Property (MDIP) was to be hoisted before May 2020; however, the Myanmar Ministry of Commerce later announced (via Notification No. 63/2020) the same to commence from 1st October 2020. During this period, re-filings and submissions from proprietors of previously registered marks shall be accepted. The system excludes the proprietors of new marks (proposed trademarks) to be entertained herein at this stage. This phase mandates the registration only through law firms and service provider companies as specified by the Department of Consumer Affairs.

To procure the re-filing of already existing registered marks or trademarks in use under the previously prevailing system, the proprietor would have to adduce the following pieces of information:

  • A clear specimen of the trademark
  • The proprietor’s name and address
  • Classes and list of goods and/or services under the Nice Classification; (no new classes can be added at this stage for enhanced protection)
  • POA – Duly legalized by the Consulate of Myanmar as per the respective country
  • A scanned copy of the Declaration of Use (DOU)
  • Evidence of use, which is the sine qua non for re-filing
  • A scanned copy of Cautionary Notices, which may be published in any local or regional newspaper

The proprietors of marks shall give utmost importance to collating and amassing these documents, which will be advantageous to both the proprietors and the administrative bodies since it will lessen the burden on the bodies when the ‘Grand Opening’ commences. Also, as mentioned above, new filings would not be entertained; however, the same would be admissible after the Grand Opening of the MDIP.

The obvious question here is, “Why should you file during the soft-period and whether or not it warrants any privilege?” The ORD will continue to accept the recordation of the Declaration of Ownership of a Trademark until the Grand Opening. After the commencement of the Grand Opening, trademark applications will be granted on a first-to-file basis, and the existing rights obtained through recordation with the ORD and publication of cautionary notices will no longer suffice to demonstrate the ownership of a trademark in Myanmar. Therefore, the threshold of the evidentiary requirement would see quite the incline.

The second stage consequent to the soft-opening is that of the Grand Opening Period. The dates of this period have not yet been announced; however, it is expected to commence in the first half of the next year (anticipated to be from 1st April 2021) as the first phase is likely to last for at least six (06) months. Proprietors who failed to tick the check-list for the “soft-phase” will be able to apply herein.

Although the experts have expostulated that such a sudden overhaul of the prior existent framework results in a lot of struggle; however, it cannot be denied that the new legislation at hand is contemporary, in-line with the established international standards, and provides for an elaborately effective and dynamic framework for trademark registration as well as enforcement. Furthermore, such stringent and strong enforcement of intellectual property like the trademark itself will strengthen the economy by attracting capitalists and entrepreneurs not only from within the country but also from nations abroad, which is even more called for in a developing country like Myanmar.