03 Nov A new trademark law in Myanmar
From 1 October 2020, owners of marks who have already registered their marks at the Office of Deeds Registration (“ORD”) as well as owners of unregistered marks who sufficiently asserted their rights in such marks through actual use in Myanmar, are eligible to submit registration applications to register their marks, in order to preserve their rights of priority and enjoy the rights relating to registered marks under the Law in respect of their existing marks.
The Ministry of Commerce of Myanmar has announced that the soft opening period for re-filing trade marks under the new trade mark law in Myanmar will start from 1 October 2020.
The new trade mark system in Myanmar will operate in two stages:
- Soft opening period (from 1 October 2020 to 31 March 2021)
- Grand opening (from 1 April 2021)
During the soft opening period, only applications for the following trade marks may be filed:
- Trade marks recorded with the Registry of Deeds under the current system; and
- Trade marks which are not recorded with the Registry of Deeds but have been used in Myanmar.
It is essential for existing registrants to re-file their trade mark applications during the soft opening period in order to maintain the protection of their trade marks under the new law. If a registrant fails to re-file the application for existing rights during the soft opening period, the relevant trade marks will be available for registration by third parties from 1 April 2021.
Requirements for re-filing
If you wish to maintain your rights as per the new system, please let us have, as soon as possible:
- Applicant/owner’s details;
- Clear specimen of the mark to be re-registered;
- Classes and list of goods and/or services;
- Scanned copy of the stamped Declaration of Ownership of Trademark;
- In case the mark has not been registered yet: copy of the Cautionary Notice as published (if any) and/or evidence of use of the trademark in Myanmar if the mark is already in use.
Major changes in the 2020 new trademark law in Myanmar
The new system will bring major changes to the trademark practice, among which are the following main features:
- A classic application process: the law will introduce standard formality and substantive examination, a publication for oppositions and issuance of a Certificate of Registration.
- The new definition of the mark: a “mark” will include trademarks, service marks, collective marks, certification marks, 3D marks (shapes and packaging) and geographical indications. Well-known marks and trade names will also be granted protection.
- Priority claim: the trademark owners will be able to claim priority from any application or registration filed in a Paris Convention country within a period of six months from the first filing.
- A new “first-to-file” system: Myanmar will shift from a “first-to-use” system to a “first-to-file” system aligning Myanmar with other ASEAN countries.
- 10-year validity: registration of a mark is valid for ten years from the trademark application filing date. It can be renewed every ten years for a further 10-year term.
- Cancellation and invalidation: a trademark registration can be cancelled for non-use or invalidated for non-registrability by third parties.
- Language: the documents can be submitted either in English or in the local language.
The new trademark law in Myanmar will streamline the process of trademark registration, prosecution, and litigation. It will also establish a framework for a comprehensive trademark registration system. It is a clear message to all marks’ owners that the government is taking serious steps to establish a simple and cost-effective intellectual property system which is expected to attract foreign investments into Myanmar.
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.