Myanmar’s first-to-file trademark registration regime under the Trademark Law 2019 – which became fully operational in April 2023 – provides mark owners with enhanced legal protection compared with the country’s former system. Correspondingly, the current system imposes more rigorous statutory requirements for obtaining, maintaining, and enforcing rights in marks.
In this first-to-file trademark registration system, however, evidence of use remains particularly significant, as it may establish acquired distinctiveness, support a claim that a mark is well known, and strengthen the owner’s position in both registration and enforcement proceedings. Accordingly, it can be said that this framework is underpinned by three key concepts: distinctiveness, well-known status, and, importantly, use of the trademark.
Trademark distinctiveness
Under the Trademark Law, signs that lack distinctiveness are generally ineligible for mark protection. These signs include:
Generic terms;
Basic shapes;
Unstylised single letters or numerals; and
Signs that merely describe the kind, quality, quantity, intended purpose, value, geographical origin, production time, or other characteristics of the relevant goods or services.
However, a mark that would otherwise be refused on distinctiveness or descriptiveness grounds may be registrable if it has acquired distinctiveness through its use prior to the filing date. To show this, the applicant must demonstrate that the mark became distinctive to relevant consumers through continuous, exclusive, and good-faith use in trade within Myanmar.
The burden of proving acquired distinctiveness rests with the mark owner. Accordingly, sufficient evidence demonstrating both use of the mark and the level of consumer recognition attained should be prepared in advance.
Well-known mark criteria
Myanmar’s Trademark Rules, which govern the substantive examination of mark registration applications, establish criteria for determining well-known marks, aligned with international standards. Where an applicant claims well-known status – whether to overcome a refusal on relative grounds or to oppose a third party’s registration – the registrar will assess the claim based on the following statutory criteria and supporting commercial evidence:
Public recognition of the mark in the relevant sector;
Duration, extent, and geographical area of the use of the mark;
Extent of promotion and advertising of the mark, including participation in trade fairs and exhibitions;
Official records demonstrating successful enforcement or recognition of the trademark;
Commercial value and reputation of the mark; and
Any other relevant information that supports the conclusion that the mark is well known.
Applicants should be prepared to submit comprehensive documentary evidence addressing these factors when asserting well-known status.
The importance of providing evidence of use
The duration and continuity of use may support a claim that a mark has acquired distinctiveness or has become well known. Evidence of continuous and good-faith use in the Myanmar market may also strengthen the owner’s position in opposition proceedings, cancellation actions, and enforcement matters.
Accordingly, mark owners interested in gaining protection for their brand in Myanmar should maintain comprehensive records of use of their marks, as this evidence may be relevant to the assessment of distinctiveness and can be a factor in determining whether a mark is well known. Furthermore, such evidence may prove valuable in establishing the strength and reputation of a mark in the event of a dispute. This proactive approach can help businesses and brand owners substantiate the reputation and commercial value of their marks in Myanmar.
