As detailed in our previous articles on Myanmar’s new Trademark Law (see here for example), under Myanmar’s new Trademark Law, all existing trademark owners who have recorded their rights under Myanmar’s old system must file new applications to protect their marks under the new law, or risk losing that protection.
We have now been notified that the online process for re-filing trademarks under Myanmar’s new Trademark Law is expected to be opened in December 2019, exclusively for existing holders of trademarks registered under Myanmar’s old system. The exact date will be confirmed shortly.
This will form part of a six-month “soft opening” period for the Myanmar Department of Intellectual Property (MDIP)’s new e-filing system, during which the MDIP will only accept applications to re-register old registrations with the Office of Registration of Deeds (ORD). The MDIP may periodically announce additional requirements or stipulations as the soft opening period progresses.
New trademark applications, and applications for any amendments or updates to existing trademarks, will be possible after the MDIP’s grand opening, the date of which is yet to be announced.
Applications for re-registration by any overseas rights-holders must be filed via their IP agents in Myanmar.
- To re-register the rights to a trademark under the new system, the following will be required:
- Clear specimen of the proposed mark;
- Owner’s name and address;
- Classes and list of goods and/or services (identical to those already recorded with the ORD);
- Claim of priority (if any) and its supporting documents;
- Claim of colors of the mark;
- A scanned copy of the recordation of the declaration of ownership or renewal with the ORD; and
- If the trademark is already used in Myanmar, evidence of use and the first date of use.
The following information must also be confirmed as being the same as the existing declaration with the ORD:
- Image of the recorded mark;
- Recorded owner’s name and address;
- Recorded classes and list of goods and/or services; and
- Registration number and date.
In the meantime, it is strongly recommended that any trademark assignments or changes to the owner’s name and address be updated at the ORD under the current practice. If the information in the previous recordation and the details of the application that is filed under the new Trademark Law are different, that trademark cannot be registered until after the grand opening.