New era of IP protection begins in Myanmar as Trademark Law takes full effect
Yuwadee Thean-ngarm, Sher Hann Chua and Khin Myo Myo Aye of Tilleke & Gibbins summarise the main features of Myanmar’s new Trademark Law as the country strives to establish a modern IP framework
Myanmar’s long-awaited first-to-file trademark registration system came into full effect on April 26 2023, with the ‘grand opening’ of the country’s Intellectual Property Department (IPD). This followed the issuance of the Trademark Rules and other related notifications at the beginning of April, in conjunction with the Trademark Law coming into force.
Full enforcement of this law is a milestone in Myanmar’s long quest to establish a functioning, modern framework for trademarks in particular and for IP in general. The Trademark Law was passed in 2019 as part of a suite of laws meant to modernise the country’s treatment of IP rights. Previously, IP rights holders in Myanmar relied on outdated systems based largely on laws from the colonial period under British rule.
For example, brand owners could achieve some measure of protection through establishing use in the country and recording their marks with the Office of Registration of Deeds (ORD). However, these protections were limited and did not provide the same level of security and legal recourse as a comprehensive trademark registration system. Without a proper system in place, businesses were vulnerable to infringement and counterfeiting, which could be detrimental to their reputation and bottom line.
The new Trademark Law will provide much-needed protection to brand owners and encourage innovation and investment in Myanmar, bringing the country in line with other Southeast Asian nations that have already implemented modern IP laws and systems, such as Thailand and Vietnam.
Features of the Trademark Law
In addition to the increased protection and streamlined filing procedures, the Trademark Law offers a range of other salient features:
Administration – the core government ministry administering the new Trademark Law is the Ministry of Commerce. Four other ministries – the Ministry of Information, the Ministry of Industry, the Ministry of Agriculture, Livestock and Irrigation, and the Ministry of Education – are named as having supervisory roles.
Requirement to refile – if trademark owners that previously recorded their marks with the ORD, or did not record their marks but can provide evidence of actual use in Myanmar, want to enjoy rights relating to their marks, they must apply for registration in accordance with the new law.
Opposition – oppositions are allowed for the first 60 days from the date of publication. Oppositions can rely on relative grounds of refusal (for example, identical or similar to existing marks, unauthorised applications and bad faith).
Appeal – registry appeals can be filed within 60 days of the decision date. Further appeals can be filed with the court within 90 days of receipt of the registry’s decision.
Invalidation – invalidation actions can be lodged against registered marks. A limitation period of five years from the registration date applies, unless the claimant is relying on bad-faith claims.
Non-use cancellation – if a registered trademark has not been used for three continuous years, it may become vulnerable to a cancellation action.
Mediation – the availability of mediation procedures remains unclear. However, if one or more parties apply to register identical or similar marks on the same day, or for the same priority date, the registration officer will instruct all applicants to negotiate among themselves to determine the name of the applicant for the mark and to resubmit within a specified period.
Geographical identifications – geographical identification rights can be applied for by (i) persons who produce goods from natural products or resources, (ii) producers of agricultural products, (iii) producers of handicraft or industrial products, and (iv) responsible persons from government departments and organisations representing the persons described in the previous three categories. The term of protection will be extended provided the special characteristics, qualities or reputation for which the geographical indication has been allowed protection continue to exist.
Licences – trademark licences must be recorded.
Trade names – trade name protection is available as part of a trademark or separately and will be protected with or without registration. There is no mandatory requirement for registration.
Infringement – civil and criminal actions are available to address infringement. Criminal penalties include up to 10 years’ imprisonment and a fine of up to MMK 10 million (approximately $4,740).
The grand opening means that marks filed during the IPD’s ‘soft opening’ period, and for which all fees have been fully paid, will be officially accorded the first filing date on the date of the IPD’s grand opening. This marks a significant change under the Trademark Law’s new first-to-file system, and mark owners that submitted marks during the soft opening period had to pay the official filing fees before April 26 to secure the earliest possible filing date (i.e., April 26, 2023).
Mark owners also need to submit a notarised Appointment of Representative form – a newly introduced form that is different from a power of attorney – to the IPD to enable their trademark representative in Myanmar to carry out this step.
With the trademark system coming into full effect with the IPD’s grand opening, mark owners will be able to file registration applications for new marks, which was not permitted during the soft opening period. To expedite this process, mark owners should start preparing all necessary documents for filing their new trademark applications.
This is a significant development for Myanmar, as the country has previously lacked a robust system of IP protection. The new Trademark Law is a strong affirmation of Myanmar’s commitment to creating a modern, market-oriented economy that can attract foreign investment and promote economic growth.