1. Background
Myanmar’s Trade Marks Law was enacted on 30 January 2019. It is the first dedicated law on trade marks in Myanmar that is modelled essentially along international norms for trade registration systems. A new online electronic trade mark registration system is also being implemented in conjunction with the Trade Marks Law. However, the new Trade Marks Law and the related online electronic trade mark registration system are not yet fully implemented and are still being ‘soft launched’. During the soft launch phase, details of existing trade mark registrations under the current paper-based system can be filed online to obtain priority re-registration under the new Trade Marks Law system. However, registration of actual new trade marks under the new Trade Marks Law system has not yet commenced.
The following comments summarise some of the more notable features of the system under the new Trade Marks Law.
2. Re-registration of Existing Trade Marks and Registration of New Trade Marks
The Trade Marks Law and related trade mark registration system will operate on a ‘first to file’ basis. This means that the first person or company to submit an application to register a new trade mark will be assumed to have a right to do so, regardless of whether they have made any previous use of the trade mark. Existing trade marks that have been registered under the current paper-based system via the Office of Registration of Deeds will be revoked once the Trade Marks Law comes into full effect. However, during the current ‘soft launch’ period, owners of existing trade mark registrations are able to make priority filings for re-registration of their existing marks under the new system, allowing them to preserve their existing rights.
As with most trade mark systems, prior use of a trade mark will still be relevant even under the ‘first to file’ approach. New trade mark applications will be advertised and subject to an opposition period during which prior users can object to registration of the application. It will also still be possible to apply for partial or entire cancellation of registered trade marks for non-use in certain circumstances.
3. Types of Marks
As well as the common word and graphical representations of trade marks, the Trade Marks Law will for the first time allow registration in Myanmar of some other types of marks that are typically recognized in other jurisdictions, such as certification marks, collective marks, 3D marks (shapes and packaging) and geographical indications.
4. Application Filing and Registration Procedures
The filing process under the Trade Marks Law will be more streamlined than the current paper-based system and will also be in line with international trade mark registration standards, making it easier for both local and international IP owners to submit applications and obtain trade mark protection. A new Intellectual Property Department (IPD), formed under the Ministry of Commerce, will administer the new trade marks system and act as the trade marks Registrar.
The main steps in the registration process will comprise: filing of an application; examination of application formalities; and then examination of the substantive content and claims contained in the application. Once an application clears substantive examination by the Registrar, it will proceed to publication and an opposition period. If the application is not opposed, a Registration Certificate will be issued.
Trade mark applicants will also be able to claim priority under the Paris Convention on international recognition of trade marks, provided that the application is filed within six months from the date of application in another country that abides by the Paris Convention.
The documents and information that all applicants will need to submit to the IPD as part of a trade mark registration application will be:
an online application form for registration;
the name and address of the applicant (or the representative’s name and address, if submitted by a representative);
a clear and complete description of the mark; and
specification of the goods and services requested to be included within the registration in accordance with the international trade mark classification system.
In addition to the above required documents, where relevant the following additional information and documents may be required for some applications:
if the application is made on behalf of a legal entity, the registration number, type and country of registration of the entity;
where any priority right is claimed for the application, documents requesting, describing and supporting the basis of the claimed priority right;
if the mark has previously been registered for under the current paper-based system, a copy of the registered declaration of ownership; and
other requirements that may be set by IPD under implementing regulations.
5. Registration Date and Period
Once registered, trade marks will be protected for a period of ten years commencing from the date on which the IPD received the complete application, including all the required documents, and payment of the applicable fee. Registrations will be able to be renewed for further ten-year periods.
6. Geographical Identifications
Geographical identification rights can be applied for by:o persons who produce goods from natural products or resources; producers of agricultural products;o producers of handicraft or industrial products; ando responsible persons from government departments and organizations representing the persons described in any of the previous three categories.
The term of protection will be extended provided that the special characteristics, qualities or reputation for which protection has been granted to the mark continue to exist.
7. Registration of Trade Mark Licenses
Where the owner of a registered trade mark licences the right to use the trade mark another person or entity, the grant of the licence will be able to be recorded in the trade mark register. An application to record a granted licence will require the submission of certified copies of the document granting the license and payment of a prescribed fee.
8. Oppositions to Applications
Any person wishing to object to the registration of a trade mark application (for example, a person claiming to have made prior use of the same mark or a person who claims that the mark is too similar to another mark that is already registered) will be able to file an opposition to registration with the IPD within 60 days after the date on which the IPD publishes notice of the application. An opposition must be based on relevant grounds, such as the application being similar or identical to an existing mark, the application being unauthorized, or bad faith.
The IPD will decide on whether to allow reject an opposition in the first instance. Appeals requesting the IPD to reconsider a decision can be filed within 60 days after the initial decision. Appeals from a second IPD decision to the court can be filed with 90 days after the second IPD decision.
9. Actions for Invalidation and Cancellation for Non-use
Court actions can be brought seeking invalidation of a new registered trade mark within five years after the date of registration. An invalidation action would be based on a claim that the trade mark should not have been registered. Once a trade mark has been registered for five years, actions for cancellation of the whole or part of the trade mark registration can be brought on the basis that the trade mark has not been used at all, or not been used in relation to the relevant goods and services, (as the case may be) for a period of three continuous years.
10. Infringement
In the event of infringement of a registered trade mark, civil and criminal actions can be taken. Criminal penalties include up to 10 years imprisonment and fines of up to MMK10 million.