Myanmar's Impending Trademark Law - What does the new law encompass?

Myanmar will soon have a formal trademark registration system in place once the Myanmar Trademark Law 2019 comes into effect. The Trademark Law was passed by the Lower House on 12 December 2018, following its adoption by the Upper House on 15 February 2018, and was enacted on 30 January 2019. The coming into effect date has yet to be announced though recently, the Myanmar Ministry of Commerce announced that the “soft-opening” period for existing trademarks that were registered by way of a Declaration of Ownership with the Office of Registration of Deeds or trademarks that are in actual use in Myanmar to be re-filed/filed will commence on 1 October 2020. ​ Apart from establishing a formal framework for a comprehensive trademark registration system which adheres to international standards, the enactment of the Trademark Law also signifies the inception of a modern intellectual property regime for the country. With the new Trademark Law, the current practice of registration of Declarations of Ownership with the Office of Registration of Deeds and publication of Cautionary Notices in newspapers in Myanmar will no longer be relevant. Once the new law enters into force, the existing Declarations and Cautionary Notices will no longer be sufficient to demonstrate ownership of marks in Myanmar. ​ Some of the notable features of the system under the new Trademark Law are as below:- ​ System The new law introduces “first-to-file” system which replaces the “first-to-use” principle under the current law, and requires no evidence of prior use or ownership in Myanmar. ​ Types of Marks The Trademark Law includes provisions for registering well-known marks and recognition to trade, certification, collective and 3D (shapes and packaging) marks. ​ Registration

• The registration process includes application filing, formalities examination, followed by substantive examination. Once the application clears the substantive examination by the Registrar, it proceeds to publication for opposition and the Registration Certificate will be issued.

• Once registered, trademarks will be protected for ten (10) years from the date of application, and can be renewed every ten (10) years.

• The new trademark law introduces multi-class applications, whereby applicants can apply for a trademark under several classes in one (1) application.

• Trademark applicants can also claim priority under the Paris Convention, provided the application is filed within six (6) months from the date of application in another country abiding the Paris Convention.

• The new law provides for opposition, invalidation and cancellation actions too.

New Official Bodies To operate and oversee the Trademark law, the Myanmar Intellectual Property Office (MIPO) will be established under the Ministry of Commerce. In addition, specialized Intellectual Property Courts will be established to handle all IP disputes. ​ Transition Period There is no procedure for automatically re-registering marks which are recorded under the current system. Therefore, all marks currently recorded with the Office of Registration of Deeds would need to be re-filed and examined during the “soft-opening” period, in order to gain protection in Myanmar. ​ ​

Launch of "Soft-opening" Period

The “soft-opening” period will commence on 1 October 2020. During the “soft-opening” period:

• Existing trademarks must be re-filed with the MIPO as the current registration system will no longer be recognized.

• Filing of new trademark application will be on a first-to-file basis. Trademark owners will lose out on getting an early filing date, or worse still, lose their trademark rights to a third party, if they do not take advantage of the “soft-opening” period.

• New trademarks are not accepted for registration during this period

• Addition of goods/services to the specification of goods or services of existing registered trademarks is not allowed.

What Should You Do? ​ (i) For trademark owners without existing trademarks in Myanmar For trademark owners who consider Myanmar as an important market, but who do not have existing registrations for their trademarks under the current registration system, we advise you to take immediate steps to register your trademark before 1 October 2020 under the current system to qualify for re-filing during the “soft-opening” period, otherwise, all new trademark applications can only be filed after the end of the “soft-opening” period. (ii) For trademark owners with existing trademarks in Myanmar Trademark owners with existing registrations of their marks under the current registration system should collate and prepare the necessary documents and information in readiness for re-filing of all their marks during the “soft-opening” in October 2020. Requirements for Re-filing of Trademark Documents required to re-file your trademarks are as follow:-

1. Completed application form provided by Myanmar Intellectual Property Office

2. Declaration of Ownership of Trademark filed with the Office of Registration of Deeds

3. Trademark Cautionary Notice previously published in a local newspaper in Myanmar

4. Evidence of use and date of first use, if the trademark is already in use in Myanmar, particularly if there is no existing registration of the trademark with the Office of Registration of Deeds. Evidence of use may include advertisement and promotional materials, invoices, catalogues, photo of the product which bears the trademark or shop in Myanmar which offers for sale the product which bears the trademark, tax receipts, Customs clearance document or any other documents that may show use of the trademark in Myanmar

​ If you have any questions, wish to protect or file your trademark in Myanmar now or wish to re-file your trademark during the "soft-opening" period, please do not hesitate to contact us. ​ We will keep you updated with further information. ​ Thank you!