In a further development of the implementation of Myanmar’s first formal trademark law, on February 15, 2018, the Upper House of the Myanmar Parliament approved Myanmar’s trademark law (“the Trademark Law”), as well as the Industrial Design Law, Copyright Law and the Patent Law. The Trademark Law now has to be approved by the Lower House of Parliament and Assembly of the Union before being submitted to the President’s Office for signature.
It is anticipated that the Trademark Law could come into effect in June or July this year.
This new Trademark Law, which has been under preparation for many years, comes as a great opportunity both for Myanmar and brand owners. It is part of a broader process to reform the country’s legal framework to facilitate and encourage businesses to invest and expand in Myanmar.
Once implemented, it 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.
Further to our previous reports we recap on some of the key features of the new Trademark Law:
Absence of transition period
One of the key characteristics of the Trademark Law is the absence of a transition period. Earlier versions of the Trademark Law provided for a transitional period during which previously registered trademarks would remain valid and owners would have been able re-register their marks and receive the earlier registration priority date.
The absence of such transition period in the new Trademark Law, along with a strict first-to-file system, means brand owners should be prepared to file all their important trademarks on the day the Trademark Law comes into effect.
Types of marks
The Trademark Law includes the following types of marks: trademarks, service marks, certification marks and collective marks. Registration of geographical indications is also possible and famous marks that meet certain criteria will also exist under the Law.
Right to apply & registration of trademarks
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 for 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 can be renewed for periods of 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.
Uncertain handling of conflicts
The Trademark 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.
Based on this provision, trademarks previously registered and/or used under the current system may block trademark applications under the new Trademark Law. This is particularly true for famous marks. Nonetheless, it is uncertain how conflicts will be handled by the Trademark Office. Therefore the best practice for brand owners is to ensure all important marks are filed on the first day the Law comes into effect.
Application & enforcement of the trademark law
The Myanmar Intellectual Property Office will be created and placed under the Ministry of Education and specialised Intellectual Property Courts established to handle trademark litigations.
The Trademark Law also sets both civil and criminal liabilities for trademark infringements. Trademark infringement in Myanmar will constitute a criminal offence punishable by fines and/or up to 3 years of imprisonment.
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 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) will be included (e.g likelihood of success on the merits).
How to ensure your marks are protected
As the Trademark Law will be a first-to-file system, we strongly suggest brand owners prepare now, including undertaking audits of Myanmar trademark portfolios and coordinate with counsel to prepare applications and supporting materials ready to file on Day 1. We will keep you updated of further developments on the Trademark Law. Should you need additional information on preparing for the new trademark law or protection of your marks in Myanmar, please don’t hesitate to contact us.