A modern trade mark system in Myanmar could be only months away with the draft trade mark law now under review by the Myanmar Parliament.
Myanmar has been working on its first formal trademark law for many years, as part of a broader process to overhaul the country's legal framework to facilitate and encourage businesses to invest and expand in Myanmar. Although there have been many delays in the past, it is expected the law will come into effect in late 2017 or at the latest by early 2018.
The biggest change from what was proposed in earlier versions of the law is the lack of a re-registration process from the current system to the new system, along with a strict first-to-file system. Brand owners should therefore be prepared to file all of their important trade marks on the first day the law comes into effect.
The proposed system
Types of marks
The law includes the following in the definition of the types of marks: trade marks, service marks, certification marks and collective marks. Registration of geographical indications will also be possible and famous marks that meet certain criteria will also exist under the law.
Right to apply
Both domestic and foreign mark owners have the right to apply for registration; however foreign applicants will be required to appoint an agent domiciled in Myanmar to act on their behalf. Priority can also be claimed to foreign applications/registrations.
The registration process includes application filing (in either Burmese or English), formalities and substantive examination, publication for opposition and certificate issuance.
Trade mark registrations will be valid for 10 years from filing date, and each renewal will extend the validity by 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 three consecutive years.
New official bodies
To operate and oversee the Law, the Myanmar Intellectual Property Office will be created and specialised IP courts will be established to handle trade mark litigations.
Trade mark infringement in Myanmar will constitute a criminal offence punishable by up to three years of imprisonment or fines or both.
Trade mark owners will also be able 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 to Customs for a suspension or detention order.
Injunctions can also be ordered from the IP courts, which will act on presentation of appropriate evidence demonstrating infringing activity. We expect other elements typically required for injunctions (such as likelihood of success on the merits) will be present as well.
Earlier versions of the law provided for a transitional period (three years in some drafts) where all trade mark owners whose rights had been registered under the current system would have been given the opportunity to re-register under the new system; and marks that were transitioned would have remained valid and received the earlier registration priority date.
The transitional process has been removed from the current draft Law.
While the draft law appears to be a strict first-to-file system, the 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.
When the new Trade Mark Office conducts its analysis of trade mark applications, the above provisions may be considered to include registrations under the current system and use now taking place in Myanmar. If so, trade marks registered and/or used under the current system may block trade mark applications under the Law. This is particularly true for famous marks. Nonetheless, it is uncertain how the law and the processes for the law at the new Trade Mark Office will be implemented and thus the best practice for brand owners is to ensure all important marks are filed on the first day the new law takes effect.
|Daniel Greif||Dhanasun Chumchuay|
Spruson & Ferguson
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