A modern trademark system in Myanmar could be only months away with the draft trademark law currently under review by the Myanmar Parliament.
Myanmar has been working on its first formal trademark law (“the Law”) for many years, as part of a broader process to overhaul the country’s legal framework to facilitate and encourage businesses to invest and expand in Myanmar.
Although there have been many delays in the past, it is expected the Law will come into effect in late 2017 or at the latest by early 2018.
Once implemented, the Law will provide Myanmar with a modern trademark system which adheres to international standards and will bring clarity to the trademark application, registration, maintenance and enforcement processes in Myanmar.
The biggest change from what was proposed in earlier versions of the Law is the lack of a re-registration process from the current system to the new system, along with a strict first-to-file system. Brand owners should therefore be prepared to file all of their important trademarks on the first day the Law comes into effect.
The Proposed System
The Law will be based on the first-to-file principle, with the following features:
Types of Marks
The Law includes the following in the definition of the types of marks: trademarks, service marks, certification marks and collective marks.
Registration of geographical indications will also be possible.
Famous marks that meet certain criteria will also exist under the Law.
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), 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 Law, the Myanmar Intellectual Property Office will be created. This Office will be under the Ministry of Education. In addition, the Law indicates specialized Intellectual Property Courts will be established to handle trademark litigations.
The 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.
Earlier versions of the Law provided for a transitional period (e.g., 3 years in some drafts) where all trademark owners whose rights had been registered under the current system would have been given the opportunity to re-register under the new system. Earlier drafts of the Law provided that marks that were transitioned would have remained valid and received the earlier registration priority date.
The transitional process has been removed from the current draft Law.
The lack of a re-registration process, along with a strict first-to file system, means brand owners should be prepared to file all of their important trademarks on the first day the Law comes into effect.
The 3-year transitional period in earlier drafts of the Law was welcomed by brand owners as it would have allowed brand owners to re-register their trademarks over 3 years and thus spread the costs of reregistration over that time. With the removal of the transitional period, brand owners must be ready to file all of their important marks on Day 1 the Law becomes effective.
While the draft Law appears to be a strict first-to-file system, in that the Law doesn’t include provisions addressing conflicts between marks registered at the Registry of Deeds and published in Myanmar newspapers under the current system and/or used in Myanmar and marks which will be registered under the Law, the Law indicates the following marks are not registrable:
- Marks that possibly infringe the intellectual rights of any other individual;
- Marks that were applied for in bad faith; and
- Marks that are identical or similar to famous marks.
When the new Trademark Office conducts its analysis of trademark applications, the above provisions may be considered to include registrations under the current system and use currently taking place in Myanmar. If so, trademarks registered and/or used under the current system may block trademark applications under the Law. This is particularly true for famous marks. Nonetheless, it is uncertain how the Law and the processes for the Law at the new Trademark Office will be implemented and thus the best practice for brand owners is to ensure all important marks are filed on Day 1 of the Law.
Ensuring your marks are protected
As the Law will be based on the first-to-file principle, we strongly suggest brand owners:
- Undertake an updated comprehensive analysis of their current Myanmar trademark portfolio and decide which marks are important to their current and future Myanmar commercial propositions.
- Undertake a cost benefit analysis to determine which trademarks to file on Day 1 of the new Law.
- Budget for the cost of filing for all necessary marks on Day 1.
- Coordinate with counsel in preparing all applications and supporting materials as soon as possible to be ready for the multiple filings on Day 1.