Source of the Law
The Union Parliament of Myanmar finally passed the Myanmar Trademark Law on 30th January 2019 (Law No. 3/2019). It will be enforced on a date to be stipulated in a Notification to be issued by the President of Myanmar. The government is currently working on the establishment of the administrative bodies and the implementing regulations to support the new system.
For the first time in Myanmar, legislation will pave the way for important provisions that increase the scope of protection for trademarks and provide for greater efficiencies in the trademark registration process.
About the Trademark
Trademark as the Marks under the new Myanmar Trademark Law 2019, means any visible mark, which includes names, letters, numbers, illustrated parts, or combinations of colors, or one such mark combined with another, to distinguish a particular product or service from other products or services.
The Trademark Law has established a new trademark system with the following major principles:
1. The Myanmar Department of Intellectual Property Office (“MDIP”) will be established under the Ministry of Commerce. MDIP will open the new e-filing so that law firms can file applications to register those trademarks that have been previously registered with the Office of Registration of Deeds (“ORD”).
The MDIP is implementing a ‘soft opening’ of the e-filing system starting with the registration of these existing trademarks, before moving to a full launch of the e-filing system in the middle of 2020, when new trademarks will be accepted for registration.
2. The Central Intellectual Property Committee (“CIPC”) and the Intellectual Property Agency (“IPA”) will be established to issue and implement intellectual property policies in compliance with the principles and provisions of the IP-related treaties and conventions of which Myanmar is a member state.
3. The first-to-file system for trademark registration and protection will be adopted to bring Myanmar to be in line with other ASEAN countries.
4. Trademarks, service marks, collective marks, certification marks, geographical indications will be given protection. Well-known marks and trade names will also be protected.
5. A trademark application can be filed with the MIPO with or without a priority claim. A trademark examination and opposition proceedings will be handled by the MIPO.
6. Registration of a mark is valid for ten years from the trademark application filing date and can be renewed every period of ten years. Trademark registration can be cancelled for non-use and it can be invalidated for non-register.
7. Each trademark already registered under the Registration Act 1908 or the Deeds Registration Law 2018 must be re-filed with the MIPO because the current trademark registration is not automatically recognized under the new Myanmar Trademark Law 2019.
Marks Not Eligible for Registration
According to Section (13) and (14) of the Myanmar Trademark Law 2019, any of the following characteristics of a mark constitutes absolute grounds for refusal and the mark will not be eligible for registration:
lack of distinctiveness;
containing only marks or indications of a good’s or service’s type;
may be detrimental to public order, reputation, beliefs, the Union’s reputation, or traditions valued by ethnic minorities;
becoming common usage in contemporary expressions or becoming a part of traditions and is becoming used practically in the commercial area;
concerning subsection (b), misleading the public or commercial area;
directly copying or imitating or misleading, without the approval of relevant authorities, all or part of a country’s flag, ceremonial appearance, other marks and symbols, a legal mark indicating the management or guarantee by a State, or a mark of quality guarantee, or a multilateral international organization’s ceremonial appearance, flags, or other marks, names, including the said organization’s acronyms, full name, or any part; or
use of marks and signs separately protected under the international agreements in which the Republic of the Union of Myanmar is a Party.
If any of the following applies to a mark, then it constitutes relative grounds for refusal and the mark is ineligible for registration:
if the mark misleads consumers through its use by being identical or like any other person’s registered mark or mark for which registration or right of priority has been applied for beforehand for identical or similar goods and services for said marks;
if it uses, without the consent of a relevant person or legally formed organization, a mark which may be harmful to the individual rights of any person or the name and reputation of a legally formed organization;
if it is a mark which may infringe upon the intellectual property rights of any other person;
if the registration of a mark is applied for without good faith;
if a mark registration application is made for a mark that misleads consumers by not only being identical or like a well-known mark but is also used in identical or similar goods or services; or
if a mark registration application is made for a mark that is identical or similar to a registered well-known mark but the goods or services are not identical or similar but may indicate that there is a connection between the owner of the well-known mark and the goods or services that the mark in question is being used for and such use may be harmful to the interests of the owner of the well-known mark.
Trademark Application
Section (17) of the Myanmar Trademark Law 2019 requires the following for a trademark application:
- The application of registration request in the form;
- The name and address of the applicant or legal entity;
- Name, NRC No. and address of the representative if the application is filed by a representative;
- A clear description of the mark; and
- Names and class of the goods or services according to the international classification or names and types of goods or services.
Additionally, the following should be provided where applicable:
- The registration number, type, and jurisdiction of origin if the applicant is a legal entity;
- If the applicant requests a priority right: submission of a priority right request together with proof and a description showing the existence of the priority right;
- If the applicant requests a priority right relating to an exhibition: submission of a priority right relating to an exhibition request, together with proof and a description showing the existence of the priority right relating to an exhibition;
- If the mark had been registered previously at the Registration of Deeds office: proof of such registration; and
- Other requirements specified by the Agency and the Department from time to time.
Terms of Registration and Renewing a Trademark
The registered trademark is 10 years from the date of application. After this expiration of the registration, the trademark holder can be renewed for another 10 years at a time.
Geographical Indication
According to Section 53 of the Myanmar Trademark Law 2019, any legally formed organization or representing persons from the relevant area may apply the registration of the geographical indications where the related goods are produced, following stipulations.
International Registration System
A person who wishes to register a mark using the international registration system may apply to the Registrar from within Myanmar or abroad, following stipulations.
Rights of Registered Marks
The owner of a mark complies with this Law, he shall enjoy the registered mark-related rights is an exclusive right, to prevent use by any other person, without his consent in the course of trade for identical or similar goods or services if such use misleads the public. The rights of a registered mark may be transferred or licensed. And the right to pursue criminal action, civil action or both against those who infringe on the rights relating to a registered mark.
Soft-Opening Launch to re-file the Existing Trademark
The electronic system for new applications for trademark registration is not yet available and interested parties can still use the old system requiring lodgement of a Declaration of Ownership. Existing registrants under the current system and owners of marks that have been put to use in Myanmar (regardless of whether having registered the mark) will be entitled to re-file their marks during a 6-month transitional period known as Soft Opening to ensure that prior rights are not lost. During this period, no new trademark will be received for registration under the new system.
It is important to note that re-filing is not an automated process and further fees will be applied. Documents required for re-filing existing trademarks include: (a) a legalised Power of Attorney, (b) the Declaration of Ownership documentation used for registration under the old system and (c) caution notice/s, if any were published.
Conclusion
Brand owners have every reason to be excited about these new developments and are awaiting eagerly for systems and processes to be finalised. Once in place, analysts are confident that many more world known brands will make entry into Myanmar a serious consideration. This which will eventually lead to greater prosperity for the country.
If you are interested in registering, protecting or enforcing your trademarks in Myanmar, do reach out to our legal team by emailing your enquiry to social@mravilaw.org.