A trademark is a distinctive sign or indicator used by an individual, business organization, or other legal entity to identify that the products or services to consumers with which the trademark appears originate from a unique source, and to distinguish its products or services from those of other entities.
A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements. There is also a range of non-conventional trademarks comprising marks which do not fall into these standard categories, such as those based on color, smell, or sound.
NEW TRADEMARK LAW IN MYANMAR
The new law regarding the Trademark law in Myanmar was approved on January 30, 2019. The Government of Myanmar enacted the Trademark law in March 2019 to establish the new Trademark system to replace the previous one where trademarks were registered with the office of the Registration of deed under Deeds of Trademark Ownership Declaration.
With the absence of trademark law in Myanmar earlier, brand owners had already adopted measures to protect their rights. Most of these brand owners opted for registering their marks under the Registration Act with the Office of the Registration of Deeds. This worked as an interim system for trademark protection and allowed the IP owner to protect their mark by applying to record a Declaration of Ownership.
The recordation system did not include a substantive examination and therefore, more than one owner could record the ownership of the same mark.
In the Myanmar e-Services Implementation and Knowledge Exchange Workshop hosted by the World Intellectual Property Organization and the Ministry of Education in October 2019, it was disclosed that:
- The New Intellectual Property Office of Myanmar will be set-up under the Ministry of Commerce of Myanmar.
- A ‘soft-opening’ period starting from January 2020 will be commenced by the IPO of Myanmar for recognizing existing trademark registrations by allowing these registrations to be re-filed within 6 months since the opening date on a first to file principle. Therefore, during this period, no new trademark will be received for registration. The new trademark law in Myanmar will implement the “first-to-file” system from the previous “first-to use” system. Please be advised that trademarks which have been recorded at the Office of the Sub-Registrar of Deeds and Assurance under the current first-to-use system will not be automatically protected under the new first-to-file system and all the marks currently recorded would need to be re-filed and examined once the new law enters into force to gain protection in Myanmar
- The new system aims at achieving compliance with international standards with the publication, examination, registration or rejection, etc.
- The IPO also planned to simplify the current practice by releasing a standard form for requirements for Power of Attorney, associated fees, etc.
Commencement of Soft Opening Period
The soft opening period in Myanmar was scheduled to commence from January 2020, however the same was delayed till mid-2020 and the delay was extended until further notification given the COVID-19 pandemic. The Ministry of Commerce of Myanmar issued a notification no. 63/ 2020 dated August 28, 2020, announcing that the soft opening period for re-filing trademarks under the new law in Myanmar will commence from October 1, 2020. The soft opening period will last for a period of six (6) months i.e. from October 1, 2020, to March 31, 2021. The Ministry may periodically announce additional requirements or stipulations as the soft opening period progresses.
The Rules and Regulations for the new law and the Power of Attorney still have not been released and are likely to be announced before the launch of the Grand Opening Period.
Key highlights of the notification are as follows:
During the soft opening period, it is also possible to file an unregistered mark that is already in use on the market in Myanmar, with evidence of use on the market. The requirements for doing so are similar to the requirements for re-filing, but with substantial evidence of use in place of the documentary evidence of prior registration. The requirement for re-filing, whether the mark to be re-filed was recorded or used in Myanmar, are as follows:
|Recorded Mark||Used Mark|
|Owner’s name and address Clear specimen of the proposed mark; Classes and list of goods and/or services (identical to those already recorded with the Registrar of Deeds); A claim of priority (if any) and its supporting documents; A claim of colors of the mark; A scanned copy of the recordation of the declaration of ownership or renewal the Registrar of Deeds; If the trademark is already used in Myanmar, evidence of use and the first date of use.||Class and list of goods/servicesTax receipt showing the use of the markEvidence of promotional activities featuring the markEvidence of actual use of the mark in MyanmarAny other documents showing any use of the mark|
- If the applicant’s name is not the same one which is registered with the Deeds and Documents Registration Office, additional evidence of an assignment of the mark must be furnished. Where the name of the applicant has changed, relevant documents evidencing the change of name must also be submitted.
- In applying the trademark applications, a mark registered at the Deeds and Documents Registration Office and a mark that is actually used in the markets of Myanmar must be identical and goods or services that the trademark is being used must also be the same. Any additional expansion of the classification of goods or services will not be considered.
- When describing the goods or services classes, the classes of goods or services shall be described in detail according to the Nice Classification.
For more information on Trademarks in Myanmar please write to us at: firstname.lastname@example.org