Trademarks in Myanmar

Trademarks Law in Myanmar

A trademark is a distinctive and recognizable sign, symbol, word, phrase, image, mark, logo etc., used by an individual, business organization, or legal entity to distinguish their products or services from those of others in the market. Trademarks not only help differentiate products, but also act as source identifiers for consumers. . There are two types of Trademarks

1. Conventional Trademarks
2. Non- Conventional Trademarks

Conventional Trademarks are basically traditional marks such as name, words, phrase, logo, symbol, design etc., Whereas, Non-Conventional Trademarks also known as Non-Traditional marks are marks which do not fall under the ambit of Conventional Trademarks and include marks which are based on olfactory senses like Smell, Texture, Taste etc.,

Trademarks Symbols used in Myanmar:

™ (This superscript is used in connection with an unregistered mark—a term, slogan, logo, or other indicator—to provide notice to potential infringers that rights in the mark are claimed in connection with specific goods or services)

℠ (This superscript provide notice that rights in the mark are claimed, but it is used in connection only with a service, such as banking or legal services, rather than tangible goods)

® (for a registered trademark) is used to provide notice to the public that a trademark or service mark is registered.

Relevant Office	Intellectual Property Department (IPD) Ministry of Commerce of Myanmar
Law in Force	The Trademark Law of Myanmar is in full force since April 2023.
Nice Classification	Applicable   Section 17(a) (v) states that the applicant for the registration of the goods or/and services for which the registration is sought, grouped according to the classes of the international classification i.e., Nice Classification.
Paris Convention	Applicable   Section 31 states that an Applicants have the right to claim priority based on an earlier application in a foreign nation that is a member of the Paris Convention or the World Trade Organization within six months of the date of filing at the foreign trademark office. Section 32 states that an Applicants may claim priority after the date of the worldwide exhibition in a foreign nation that is a member of the Paris Convention or the World Trade Organization within six months of the date of the first disclosure of the mark there.
Madrid Protocol	Applicable   Section 64 states that the Applicants for the registration of a mark from Myanmar or foreign countries may file with the Registrar in the prescribed manners if they want to exercise the International Trade Mark Registration System called Madrid System after the State has become a member of the International Trademark Registration System.
Multi – Class Declaration	Yes
Document(s) required for filing a trade mark application	The name and address of the applicant or legal entity The name, citizenship scrutiny card number and address of the representative where the application is filed by the representative, A sufficiently clear representation of the mark,  the names and classes of the goods and/or services for which the registration is sought, grouped according to the classes of the international classification (Nice Classification)If any Priority claims are there then, certified copies of the priority documents for evidence
Prosecution Process	Section 23: Examination Process Section 25: Advertisement Section 26: Opposition Section 28: Registration

Trademark Searches in Myanmar

An official trademark search cannot be conducted in Myanmar. Prior to filing Declaration of Ownership of Trademark with the Registration of Deeds Office, Yangon, it is advisable to conduct unofficial trademark search before registration of the mark with the Myanmar Registry Office to ascertain the availability of deceptively similar trademarks, existence of prior identical/similar marks on the register etc.

Trademark searches in Myanmar can be classified into following categories:

1. Word Search
2. Device Search

Trademark Applications in Myanmar

What marks cannot be registered in Myanmar

Section 13: Absolute Grounds of Refusal

A mark that falls under any of the following absolute grounds for refusal shall not be registrable if they

1. Lack Distinctive Character
2. Consist exclusively of signs or indications which may serve to designate the kind, subject matter, quality, quantity, intended purpose, value, geographical origin, time of production of the goods or rendering of services, or other characteristics of the goods or services
3. Affect the public order, morality, faith and conscience, culture, ethnic groups of the State
4. Are Generic and Customary in the current language
5. Mislead the public or trade circle in respect of subsection
6. Consist of the total or partial reproduction or imitation of a flag, armorial bearings, or other emblems adopted by a State or an international intergovernmental organization
7. Use the emblems protected under international treaties to which the State is a contracting party.

Section 14: Relative Ground of Refusal

A mark that falls under any of the following relative grounds for refusal shall not be registrable if

• The marks are identical with or similar to a registered mark or earlier applied mark or priority claimed mark 
• Using the mark affecting personality rights of a person or the reputation of the legal entity without the permission of the relevant person or legal entity
• Infringes the copyright or industrial property right of a third party
• Filed in bad faith
• The mark is identical with or similar to a well-known mark, the goods or services in respect of which registration of the sign is applied for are identical with or similar to the goods or services for which the well-known mark is used and the use of the sign would cause a likelihood of confusion with that mark.
• The mark is identical with or similar to a registered well-known mark, the goods or services in respect of which registration of the sign is applied for are dissimilar to the goods or services for which the well-known mark is registered, the use of the sign would indicate a connection between the goods or services for which it is used and the owner of the registered well-known mark, and the interests of the owner of the registered well-known mark are likely to be damaged by such use.

Trademark Applications in Myanmar

After the Trademark Law in Myanmar came in effect, in April 2023. Any person who wishes to have the right of the registered trademark under the Trademark Law of Myanmar can file a Trademark Application under the prescribed manner

Step 1: The Applicant for the registration of a mark may make the application for trademark registration either in English or Myanmar.

Step 2: The Applicant for the registration of a mark shall mention the following facts in the Application such as

• A request for registration
• The name and address of the Applicant or Legal Entity
• In case the Application is filed by a representative, then the name, citizenship scrutiny card number and address of the representative is required
• Clear representation of the mark
• The names and classes of the goods and/or services for which the registration is sought, grouped according to Nice Classification
• Where an Application is filed for a legal entity, registration number, type and name of the country of that legal entity
• In case an Applicant wants to claim priority of an earlier application should provide evidence to support the priority claim
• In case the mark is already registered at the Office of the Registration of Deeds then evidence of the same has to be provided.

Step 3: After complying with the requirements and filing trademark application in the prescribed form and payment of relevant fees, the application will be examined by the Examiner.

Step 4: Application is published in order to oppose for any person in the prescribed manner 

Step 5: After publication, any person who wants to oppose the application for registration of marks may, within 60 days from the date of publication, file an opposition to the Registrar by subscribing the prescribed fees

Step 6: The Registrar may either

• Grant the application for registration of a mark if the opposition is not filed within 60 days from the date of publication.
• Grant or refuse the opposition after examining in accordance with the provisions of section 13 or 14, if the opposition is filed
• Record such grant or refusal in the register, and notify the same to the Applicant
• Issue the certificate of a registered mark to the Applicant if the registration is granted

Term of Renewal

The term of registration of a mark shall be 10 years from the filing date of the registration of a mark. After the expiry of 10-year term of registration, each term of renewal shall be10 years at a time.

Rights of Registered Marks

The registered mark owner shall have the following rights

1. Enjoys an Exclusive Right over the mark
2. Prevent third parties from infringing his rights
3. The right to sue the infringer and take criminal or civil action or both against the infringer
4. To transfer or license the rights of a registered mark to any other person in accordance with the provisions

Offences and Penalties

1. Section 87(a) states that whoever commits any of the following acts of Counterfeiting a mark, Applying a counterfeit mark to goods or using it in connection with services, Possessing any materials or implements, the predominant use of which is likely to be to counterfeit a mark or applying a counterfeit mark to goods on the commercial purposes without the consent of the right holder shall, on conviction, be punished with imprisonment for a term not exceeding three years or with a fine not exceeding five million kyats (Approx2,400 USD), or with both:
2. Section 87(b) states that whoever commits the offenses of possessing counterfeit mark goods; importing into or exporting from the State are punishable by up to two years of imprisonment, a fine of up to five million kyats (Approx. 2,400 USD), or both.
3. Section 88 states that whoever commits any act under section 87, after prior conviction of the same offence shall be punished with imprisonment for a minimum of three years and a maximum of ten years as well as a fine of no more than ten million kyats (Approx.  4,800 USD).

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Read More : Soft Opening of Trademark Registration in Myanmar Jan 2020

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