Latest News: 12-06-2016 (Newsletter Issue 22/16)
Draft Trade Mark Law in Progress
Myanmar’s Draft Trade Mark Law is expected to be passed in 2017. This signals substantial changes to the current process which is based on common law and common practice rather than statute. The Draft Law intends to import structure and certainty into Myanmar’s trademark regime to generate greater protection and preservation of intellectual property and to meet international obligations derived from the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs Agreement).
The new laws set the parameters for what constitutes a trademark and confirms that trademark protection will also be available for service marks, collective marks, certification marks and series of marks.
Under the new laws, a draft of which was made public in July. The proposed changes are:
- First-to-use system will be replaced by a first-to-file system aligning Myanmar with other ASEAN nations.
- Registration will confer protection for 10 years from the filing date, and is renewable every 10 years.
- Trademark owners will have the ability to file litigation in both civil and criminal actions against infringers in specialist Intellectual Property courts, which are in the process of being established.
- Local agents are still required to file trademarks on behalf of individuals or corporations whose ordinary residence or principal place of business lies outside Myanmar.
- Trademarks under the new laws must be distinctive and must not be registered in bad faith.
- Upon receiving the requisite forms and information the Registrar will perform an inspection and publicise the trademark inviting opposition within a defined period of time (30 days if the opponent resides in Myanmar and 60 days if the opponent resides outside Myanmar).
- A trademark can be cancelled if determined as unregistrable under the new laws. The grounds for cancellation also encompass non-use for three consecutive years, and therefore trademark owners should ensure they are actively using their trademarks in Myanmar.
To facilitate the move from first-to-use to first-to-file a transitional period of three years has been proposed to commence on the date the new law enters into force.
Owners who have a trademark recorded on the Registry of Deeds and Assurance must re-file their trademark with the Myanmar Intellectual Property Office (MIPO) when the new law comes into effect. This would preserve priority under the new system.
If the mark has not been re-filed with the MIPO, the record on the Registry of Deeds and Assurances will automatically expire when the transitional period concludes.
Source: DLA Piper LLP, Australia
07-12-2016 (Newsletter Issue 13/16)
Documentary Requirements for Trademark Application Changed
The Myanmar Registration Office has recently implemented amendments to the documentary requirements regarding applications for trade mark registration and maintenance. The changes came into effect as of June 1, 2016.
In particular, under the new regulation, in order for an application to be accepted by the Registration Office, any applicable Power of Attorney or Declaration of Ownership / Renewal / Change of Ownership form submitted must be notarized, authenticated and legalized up to the Myanmar Embassy/Consulate in the country where the applicant company is incorporated, or (in the absence of such embassy/consulate) the nearest Myanmar Embassy/Consulate. Previously, this requirement only applied to the Power of Attorney document, whilst the Declaration documents only needed to be simply signed.
The Registration Office is enforcing the new regulation strictly, with no grace period or exception made to comply. Unfortunately, this means that prospective applicants who have already executed documentation based on the old requirements will have to wait until they perfect the execution accordingly, before the Registration Office will accept their applications.
05-29-2012 (Newsletter Issue 9/12)
Multiple Class Registration Now Possible
The Registration Office is now accepting multiple class registration. Previously this was objected.
It depends on the Registrar, and the new officer is currently allowing one application covering multiple classes.
Source: Tin Ohnmar Tun & The Law Chambers, Myanmar
There is no Procedural Law in Myanmar. Trademarks can be registered with the Myanmar Registration Office (Registry of Deeds and Assurances) under Section 18(f) of the Registration Act and Direction 13 of the Registration Act by means of Declaration of Ownership at the Registration Office.
In filing an application for registration of the Declaration of Ownership of trademark, the requisite documents are as follows:
- Special Power of Attorney (POA) executed by the applicant. This document must be duly notarized, authenticated and endorsed by the Myanmar Embassy.
- Declaration of Ownership of Trademark (DOT), executed by the applicant. This document must also be duly notarized, authenticated and endorsed by the Myanmar Embassy.
Following the above registration, it is advisable to publish a Cautionary Notice in the designated local newspaper / journal for public awareness.
The validity period of trademark registration is not prescribed by existing Myanmar laws. However, as per current well-established practice, trademark registration is to be renewed in one of the following three ways:
- by re-registration of DOT once every three years after first registration;
- or by re-publication of Cautionary Notice once every three years after first publication;
- or by both re-registration and re-publication as mentioned above (the recommended approach: re-registration in order to update the record of the registered mark at the Registration Office, followed by re-publication for public awareness in the market), which aims at bolstering the trademark registrant’s legal position vis-à-vis infringers, as well as reminding the public, including potential infringers, of the trademark registrant’s interest in the mark.
The registration procedure takes about 6-8 weeks.
Reference to the Nice Classification is acceptable.
Word mark, Device mark
There is no Patent and Trademark Registration Office in Myanmar. Application is to be filed at the Registry of Deeds and Assurances, which is under the Ministry of Agriculture and Irrigation.
Multiple class registration within a single declaration is accepted.
All documents that were executed in countries of origin need to be filed in Myanmar within 3 months from the date of execution, which is a requirement of the Registration Act. If it is beyond the validity period, the application will either be rejected or levied a penalty.
Country Index is a free service of SMD Group.
We thank the following law firms for their assistance in updating the information provided.
Further practical details are available in our publication on this topic here
Ella Cheong LLC, Singapore, Singapore
Myanmar Trademark and Patent Law Firm, Yangon, Myanmar
Tin Ohnmar Tun & The Law Chambers, Yangon, Myanmar
Myanmar Trademark and Patent Law Firm, Yangon, Myanmar