Knowledge Highlights 28 September 2020

On 28 August 2020, the Myanmar Ministry of Commerce issued Order No. 63 of 2020 announcing the long-awaited commencement date of the soft opening of the new trademark registration system (“soft opening period”). The duration of the soft opening period, which begins on 1 October 2020, has yet to be announced although it is anticipated to last for six months.

Re-filing of trademarks

The soft opening period will be open exclusively to:

(a) trademark owners who had 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 

(b) trademark owners whose marks have been in actual use in Myanmar whether registered with the ORD or not,

to re-file their trademarks with the Myanmar Department of Intellectual Property (“MDIP”).

No new trademark applications

During the soft opening period, it will not be possible to file “new” trademark applications.

Trademark owners who do not meet the criteria set out above will have to wait until the official opening of the new registration system before they are able to file any “new” trademark applications.

Trademark application process

The re-filed trademarks must match the details recorded in the Declaration of Ownership (“Declaration”). Applications by any foreign trademark owners must be made via their trademark agents in Myanmar.

Further details of the official fees, specific documentation and other information required are expected to be released in due course, although trademark owners should in the meantime collate the following information and documents if there is any interest to re-file their trademarks:

(a) Registered trademarks under the Declaration

  • The name and address of the person or legally formed entity applying for registration. Where the owner is an entity, the registration number, 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 trademark identical to the representation in the Declaration;
  • Classes and specifications of goods/services to be identical to or narrower than in the Declaration;
  • Specific documentation relating to the types of rights which are claimed (if applicable);
  • Where the mark has been registered under the old system, a copy of the recordation of the Declaration. A scanned copy of the Declaration would suffice for purposes of re-registering the trademark although originals may be subsequently requested for review by the MDIP.

(b) Unregistered trademarks in use in Myanmar

  • The name and address of the person or legally formed entity applying for registration. Where the owner is an entity, the registration number, 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 trademark; 
  • Classes and specifications of goods/services; 
  • Specific documentation relating to the types of rights which are claimed for (if applicable); 
  • Date of first use; 
  • Evidence of use of the trademark as follows:

(i) Cautionary notices published in local newspapers and/or journals; 

(ii) Proof of use in the markets of Myanmar (e.g. labels or signages depicting the manner in which the trademark is being used); 

(iii) Advertisement or promotion of goods and services bearing the trademark (e.g. leaflets, brochures, photographs); 

(iv) Tax receipt or expenses receipt (e.g. invoices, purchase orders or other similar documents to Myanmar entities/individuals depicting the trademark).

More

Knowledge Highlights 30 November 2020

Harnessing opportunities from the Regional Comprehensive Economic Partnership, the world’s largest free trade pact, in ...

Read more