Myanmar: Analysing Myanmar’s new law on GIs

We have previously discussed Myanmar's new law on trademarks. It should also be noted that the same law is also the primary legislation on the protection of geographical indications (GIs) in Myanmar. Chapter 16 (Sections 53 to 60) of the Pyidaungsu Hluttaw Law No. 3 of 2019, fully titled the Trademark and Geographical Indications Law (TGIL), deals exclusively with GIs, and this is our summary of its contents, as well as our recommendations for those interested in registering GIs in Myanmar under the TGIL.

Definition of GI: In the TGIL, geographical indication (GI) is defined in Section 2(o) as an "...indication which identifies goods as originating in the territory of a country, or a region or locality in that territory, where a given quality, reputation or other characteristic of the goods is essentially attributable to its geographical origin."

Right to apply: Under Section 53, legal entities representing manufacturers of products derived from natural components or through natural methods, as well as products of handicrafts or industry, including government departments and government organisations, are attributed a standing to file an application for registering GIs in Myanmar.

Application requirements: When applying to register a GI, the following information must be clearly stated:

1) Name, nationality and address of the applicant organisation

2) The relevant GI

3) The relevant region of production

4) Description of the products to which the GI applies

5) Significant features, quality or reputation of the products under the relevant GI

6) Relationship between such features, quality or reputation and the place of origin

1) The subject GI does not meet the definition under Section 2(o).

2) The GI has become generic or subject to customary use within Myanmar.

3) The GI is contrary to public order or principles of morality or public policy.

4) If the GI is of foreign origin, it must remain validly protected in the country of origin.

• The GI can be used in Myanmar only by producers having the significant features, quality or reputation of the products under the relevant GI.

• The registered beneficiary has the right to prevent use of a relevant GI which 1) deceives the public as to the products' origin, 2) leads to unfair competition, or 3) is aimed to indicate manufacture style or method of a non-compliant product.

• Any approved GI application will be published for opposition in a yet-unknown platform for a yet-unspecified period.

• Opposition can be lodged, though the process for this is not yet determined. If no opposition is filed, the GI will be registered.

• After registration of the GI, any subsequent trademark applied for in relation to the goods covered by the GI will be refused if such goods do not comply with the registered GI standards.

• Trademarks registered before registration of the GI will be cancelled if the goods claimed under such registered marks do not meet the subsequently registered GI standards, unless subject marks had been applied for in good faith.

• A regulatory government agency is to be established to examine products in the market for compliance with any relevant GI, where the cost of such regulation is to be borne by the registered GI beneficiary.

• The registered GI beneficiary has the right to bring legal action against infringements of its GI rights through the same court procedures as trademark infringements.

The TGIL is not yet effective. Once the new government bodies and implementing regulations are established, the law's implementation date will be set, which is expected to be in the final quarter of 2019.

At this stage, it remains unclear how several provisions summarised above will be executed in practice, and further implementing regulations, currently under synthesis, will hopefully dispel these uncertainties. As GI protection is an entirely novel concept in Myanmar, the new government authorities to be formed with GI oversight responsibilities are not expected to apply the legal provisions in manners consistent with international practice.

Interactions between GIs and prior registered trademarks are increasingly a concern in Mekong-region jurisdictions that recently began providing for GI protection. The TGIL establishes that trademarks registered before registration of the GI will be cancelled if the goods claimed under such registered marks do not meet the subsequently registered GI standards, unless the subject marks had been applied for in good faith. The cross-reference process between trademark and GI registers in this regard is unclear. Thus, to prevent conflicts arising from prior trademark rights, we advise foreign GI beneficiaries interested in obtaining protection in Myanmar to file their GI applications as soon as possible once the TGIL takes effect: Day one of the TGIL will be day one for both trademarks and GIs.

Dhanasun Chumchuay