The Myanmar Trademark Law 2019 (the “Trademark Law”) was enacted on 30 January 2019. The Trademark Law is the first official trademark law to exist in Myanmar. It is expected that the Trademark Law will come into force within the next few months.
The Trademark Law has many important provisions that increase the scope of protection for trademarks and provide for greater efficiencies in the trademark registration process.
The Trademark Law is an important development and brand owners should carefully consider what steps they need to take to ensure their trademarks are registered appropriately under the Trademark Law and are able to reap the benefits provided for trademark owners under the Trademark Law.
Definition of a Mark
The Trademark Law defines a mark as any visually perceptible sign that distinguishes the goods or services of one undertaking from those of other undertakings. It specifies the scope of protection to marks, famous marks, geographical indications and trading names. These provisions both clarify and expand the definition of trademarks and what types of trade indicia can be protected in Myanmar.
New Registration System for Marks and Geographical Indications
Under the current laws controlling trademarks, brand owners record their marks at the Registration of Deeds Office in Yangon by filing a “Declaration of Ownership,” followed by publishing the registered mark in a Myanmar Newspaper. The Myanmar Registry of Deeds is not a formal trademark office handling trademark applications and prosecution.
Under the Trademark Law, the Ministry of Commerce has created a formal Trademark Office for handling trademarks application and prosecution. The new Myanmar Trademark Office will have responsibility for registering marks and geographical indications.
An Inspection Officer will review applications according to the new criteria set by the Law, and a Registration Officer will issue registration certificates to the applicants.
Introduction of First-to-File System
Under the current system, unregistered marks are protected, provided their owners can prove their actual use in commerce. Therefore, an unregistered mark may prevail over a registered mark if the owner of the unregistered mark proves that its use predates the use of the registered mark.
The Trademark Law provides for a first to file system, where the first party to register its trademark will have priority over later filed trademark applications.
Under the Trademark Law, registered marks will have a presumption of validity over unregistered trademarks. However, it is unclear how the Myanmar Courts will treat trademarks in use but unregistered that predate trademarks registered un the Trademark Law. It is only after cases are litigated on this issue that there will be clarity on this issue.
Priority Right for Existing Registered Marks
Under the Trademark Law, marks already registered at the Register of Deeds can be re-registered to receive protection. In other words, marks recorded under the Trademark Law will not be automatically re-registered. Rather, trademarks owners of currently registered marks will be able to file an application for re-registration within a specified period that has yet to be determined. The re-registration will give trademark applicants priority over potential competitors as the re-registered trademark marks have priority going back to the date of the earlier applications filed under the current system.
Absolute and relative grounds for opposing registration
According to the Trademark Law, once an application is received, the Inspection Officer will determine whether the mark should be rejected on absolute grounds. They must review whether there is an absolute ground for opposing the registration (e.g., the mark lacks distinctiveness. The Inspection Officer, however, will not review whether there are relative grounds for rejecting the applied for mark (e.g., the applicant applied for registration in bad faith, the mark may violate the intellectual property rights of another person…).
If after being considered by the Inspection Officer, no grounds for rejection are identified, the applied for mark will be registered. After a mark is registered, any interested party will be allowed to request invalidation of the mark at any time based on absolute grounds and within five years based on relative grounds.
Registration of Marks Lacking Distinctiveness
The Trademark Law explicitly excludes from registration marks purely descriptive or generic terms or phrases such as “Myanmar Tours”, “Myanmar Accounting Services”, or “Global Business Solutions”.
Parties wishing to have such terms registered will have to prove that the terms have has acquired distinctiveness through extensive use over time such that consumers have come to associate the terms with a particular source. Otherwise, the terms will not be registered.
Also, the Registration Officer will delete the registration of any mark that is shown to have become a generic term, upon the request of any interested party.
Failure to Use a Mark
Non-use of a registered mark for three years without good cause, as well as non-use of the goods or services related to a registered mark within three years from the date of application, without good cause, will lead to the withdrawal of the registration for the mark, upon the request of any interested party.
The Trademark Law establishes a comprehensive trademark registration and protection system that, once it becomes effective, will greatly benefit brand owners. In turn, the economic well-being of Myanmar will increase, and Myanmar consumers will experience greater economic prosperity. Thus, the Trademark Law is a very welcome intellectual property development and all brand owners should prepare to reap the benefits provided by the Trademark Law.