Trademark owners who have assured their rights in Myanmar through the current best practice combination of Declaration of Ownership registration and Cautionary Notice publication are now being faced with a challenge deciding how to prepare for the imminent implementation of the Trademark Law, which is the first of its kind in the country. While it is certain that the Trademark Law will take effect in 2019, its specific mechanisms, which may be well-defined in many instances in the text of the law, are far from settled.
Not only is the Trademark Law a new piece of legislation, but concepts embodied therein are novel and foreign to Myanmar's civil service, which will be the prime operator of the law. Such personnel not only must familiarise themselves with the provisions of the law but must also gain adequate insight into the legislative intent behind every substantive provision before the new legal infrastructure can become operative. The law was drafted with involvement from WIPO, but its implementation will be exclusively Burmese, and it would be unreasonable to expect internationally-familiar concepts transplanted into Myanmar through the law to be interpreted in the usual internationally-familiar manner.
The most significant cause of worry for trademark owners is the lack of clarity in terms of what additional rights would be obtained through submission of a duly stamped Declaration of Ownership with a new trademark registration under the Trademark Law. Chapter 10 of the law contains three sections on priority rights under the Paris Convention or the WTO, i.e. application or exhibition priority with which we are familiar. However, Section 17, which provides a list of documents and evidence required that must be submitted with applications filed under the new law, lists proof of registration made at the Office of the Registrar of Deeds alongside other proofs of valid rights to claim priority, which suggests that complementing a new application with the duly stamped Declaration of Ownership would give the applicant some form of priority. While the Paris Convention or WTO priority claims are subject to a time limit of six months, the law is silent on how far back priority can be claimed based on a registration made under the former (now still current) practice. Further, it is unclear how priority thus claimed would affect the examination process of the IP office, which is yet to be established in a yet unknown location.
A critical new official body to be set up under the Trademark Law is the Intellectual Property Court. Section 67 provides that the Myanmar Supreme Court may establish intellectual property courts and may confer powers and jurisdiction to any relevant court of law to adjudicate intellectual property cases prior to establishment of the specialised intellectual property courts. While these provisions clearly allow for the establishment of specialised IP courts, there is no guarantee that such bodies will in fact be formed. Specialised IP courts require a specialist judiciary, which is currently unavailable in Myanmar.
Despite an atmosphere of uncertainty enveloping the formative period of Myanmar's Trademark Law, we believe this should be seen as an exciting time. Where no trademark registration system has existed before, in a matter of months trademark owners will be able to apply to register their marks under a regime that resembles and is motivated by international standards, complete with a specifically delineated scope of protection and penalties, even with a promise of efficient vindication of trademark rights through customs recordals. These benefits are not to be lightly discounted because of uncertainties in their details, and we highly recommend that brand owners eyeing the vast business opportunities in Myanmar take advantage of the new possibilities.
However, in the same spirit as Mrs Wallis Simpson's remark that a woman can never be too thin or too rich, we advise that, at this time of myriad ambiguities in Myanmar, brand owners can never be too cautious. Commercially significant marks must be prioritised, and, if they have been previously registered through Declarations of Ownership, registering fresh declarations with the most complete and updated details should be contemplated, as well as Cautionary Notice re-publication, even if it has not been three years since the last publication. These steps will arm a brand owner with evidence of rights and public notice of the same. Once the Trademark Law takes effect, time will be of the essence, and having all documents ready for application filing on the first days of the new law will provide an added edge against would-be squatters, who are also seeking to take advantage of the new law.
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