Knowledge Highlights 30 December 2019
On 30 January 2019, the Pyidaungsu Hluttaw (Myanmar’s Parliament) passed the long-awaited Trademark Law (“Law”), paving the way for the creation of a new, comprehensive and structured intellectual property (IP) regime in Myanmar. The Law is expected to come into force in 2020. In its current form, the Law brings about significant changes to the current process of trade mark registration and protection in Myanmar, bringing Myanmar’s trade mark regime into greater alignment with international frameworks and standards.
The passing of the Law marks a step forward for Myanmar, where businesses have traditionally had to rely on colonial-era laws to protect their intellectual property. It also replaces the current first-to-use system with a first-to-file system. In this Alert, we highlight some of the key changes the Law is expected to bring in which will have significant impact on businesses in the next year.
“Soft opening” of new registration system
The Law will be rolled out in two stages, the first stage being a “soft opening” period which is targeted to take place in early 2020 and is open exclusively to:
- trademark owners who have availed themselves of Myanmar’s old registration system by filing a Declaration of Ownership of their mark with the Office of the Registration of Deeds (“ORD”); and
- trademark owners whose marks have not been registered with the ORD but are in actual use in the markets of the Republic of the Union of Myanmar.
It should be noted that all existing trademark owners who have recorded their rights under Myanmar’s old system must re-file trademark applications to protect their marks once the new Law takes effect.
The “soft opening” will last for a period of six months before the hard launch of the new legal framework, which is targeted to take place in the middle of 2020.
The online e-filing system is expected to go live in early 2020 for “soft opening” applications. Applications for re-registration by any foreign right-holders must be filed via their local representatives or agents in Myanmar.
It will be possible to apply to register a mark in either English or the Myanmar language, though a translation may be requested by the Registrar. Further details of the specific documentation and information required are expected to be released within the year although trade mark owners should in the meantime collate the following information and documents:
- The name and address of the person or legally formed entity applying for registration. Where the owner is an entity, the registration, type and country of the entity will also be required;
- Name, National Register of Citizens card number and address of the local agent/representative (if the applicant will be entrusting an agent/representative with its application);
- A clear specimen of the mark;
- Classes and specifications of goods/services;
- Specific documentation relating to the types of right which are claimed (if applicable);
- Where the mark has been registered under the old system, a copy of the recordation of the Declaration of Ownership; and
- If the mark is already in use in Myanmar, evidence of use and the first date of use.
Parties who have yet to record a Declaration of Ownership are advised to do so as soon as possible before the “soft opening” to qualify for a “soft opening” application once the re-registration facility opens.