A new trade mark system in Myanmar could be only months away with the draft trade mark law (the “Law”), Myanmar’s first trade mark law, currently under review by the Lower House of Parliament.
On February 15, 2018, the Upper House approved the Law. Soon, the Law will be considered by the Lower House, which is expected to approve it. After the Lower House approves the Law, the Law will be submitted to the combined House (the Union Parliament) for final approval and enactment.
Once the Law is approved by the Union Parliament, it will be sent to the Myanmar President for signature. Then, the Law will be published in the Government Gazette.
However, the Law will not take immediate effect. First, as specified in Section 1(A) of the Law, it will become effective on the date specified by the President by issuance of a presidential notification. This means the Law will become effective once the rules and regulations have been finalised.
As no certainty exists as to when the rules and regulations will be finalised, the final timing remains uncertain. However, all signs indicate that it should happen anytime soon.
Myanmar has been working on 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.
Once implemented, the Law will provide Myanmar with a modern trade mark system, which adheres to international standards and will bring clarity to the trade mark application, registration, maintenance and enforcement processes.
First-to-file system and absence of transition period
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. Therefore, brand owners should be prepared to file all their important trade marks on the first day the Law comes into effect.
Earlier versions of the Law provided for a transitional period (3 years in some drafts) where all trade mark 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 indicated transitioned marks would have remained valid and received the earlier registration priority date.
Yet 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 that brand owners should be prepared to file all their important trade marks 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 trade marks 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 their important marks on the first day the Law becomes effective.
How to ensure your marks are protected
As the Law will be based on the first-to-file principle, we strongly suggest brand owners:
- Immediately undertake an updated comprehensive analysis of their current Myanmar trade mark portfolio and decide which marks are important to their current and future commercial ventures.
- Undertake a cost-benefit analysis to determine which trade marks 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.