For many years, Myanmar has been working on its first formal trademark law, as part of a broader process to overhaul the country’s legal framework to facilitate and encourage businesses to invest and expand in Myanmar.
Implementation of the Trademark Law is now projected for 2017. Once the Trademark Law is implemented, the current practice of registration of Declarations of Ownership at the Registrar of Deeds and Assurances, followed by publication of newspaper Cautionary Notices, will be replaced by a modern trademark system which adheres to international standards.
The Trademark Law will greatly benefit brand owners as it will bring clarity to the trademark application, registration, maintenance and enforcement processes. Given the importance of the Myanmar market, the implementation of the Trademark Law will be a welcome development for brand owners and will assist in the further growth and prosperity of Myanmar.
The Proposed System
The Trademark Law will be based on the first-to-file principle, with the following features:
Types of Marks
The Trademark Law includes in the definition of protectable marks: perceptible sound, smell and touch signs as well as traditional visual marks. These are then categorized into trade, service, certification and collective marks. Registration in the form of series of marks will also be possible.
Right to Apply
The right to apply for registration of trademarks is given to both domestic and foreign mark owners. However, foreign applicants will be required to appoint an agent domiciled in Myanmar to act on their behalf.
Priority can also be claimed to foreign applications/registrations.
The registration process includes application filing (the application can be filed in either Burmese or English and must be accompanied by a Declaration of Intention to Use), formalities and substantive examination, publication for opposition and certificate issuance.
Trademark registrations will be valid for 10 years from filing date, and each renewal will extend the validity by 10 years.
There will also be a provision for lodging non-use cancellation actions against registrations which are not in use for any period of 3 consecutive years.
New Official Bodies
To operate and oversee the Trademark Law, the Myanmar Intellectual Property Office will be created. In addition, specialized Intellectual Property Courts will be established to handle trademark litigations.
The Trademark Law sets both civil and criminal liabilities for trademark infringements. Trademark infringement in Myanmar will constitute a criminal offence punishable by up to 3 years of imprisonment or fines or both.
Another welcome feature is the possibility for trademark owners to enforce their rights through customs. With sufficient reasons for suspecting import, export or transit of infringing goods into, out of or via Myanmar, mark owners will be able to apply to customs for a suspension or detention order.
Injunctions can also be ordered from IP Courts, which will act on presentation of appropriate evidence demonstrating infringing activity. We expect other elements typically required for injunctions (e.g. likelihood of success on the merits) will be present as well.
All trademark owners whose rights have been registered under the current system will be required to re-register under the new law within three years.
As the Trademark Law will be based on the first-to-file principle, we strongly suggest brand owners re-register their marks as soon as the Trademark Law becomes effective. Also, we suggest brand owners conduct trademark portfolio analysis now to determine which marks they want to re-register under the Trademark Law and to create appropriate budgets to address the fees associated with re-registering earlier registered trademarks.
For brand owners with large trademark portfolios in Myanmar, the fees associated with re-registration under the Trademark Law will be high. Thus, we suggest a careful analysis of trademark portfolios take place as soon as possible, as well as discussions with business teams to address budgetary issues.