The long-awaited trademark law will be implemented in 2020 in Myanmar and will bring major changes to its trademark practices. Following this, marks’ owners will no longer have to rely on a definition of a “trademark” as per the Penal Code, 1861. Also, the rights of the parties setting up rival claims to ownership of a trademark will no longer be determined in accordance with the principles of common law.
The new trademark registry in Yangon and Naypyidaw will begin operating on 1st October 2020 for a soft opening. During this time, the registry will only accept applications of marks that have been registered as per the old system, or used in this country before that date.
The owners of trademarks registered under the old system will benefit from a transitional period to re-file their trademarks under the new system and will enjoy a right of priority over new applicants who will have to wait until the end of this soft-opening period to file new applications. It is important to note that trademark owners who have recorded their rights under the old system need to file new applications to protect their marks, failing which they will lose their rights.
Requirements for re-filing
If you wish to maintain your rights as per the new system, please let us have, as soon as possible:
1. Applicant/owner’s details;
2. Clear specimen of the mark to be re-registered;
3. Classes and list of goods and/or services;
4. Scanned copy of the stamped Declaration of Ownership of Trademark;
5. In case the mark has not been registered yet: copy of the Cautionary Notice as published (if any) and/or evidence of use of the trademark in Myanmar if the mark is already in use.
Major changes in the 2020 new trademark law in Myanmar
The new system will bring major changes to the trademark practice, among which are the following main features:
1. A classic application process: the law will introduce standard formality and substantive examination, a publication for oppositions and issuance of a Certificate of Registration.
2. The new definition of the mark: a “mark” will include trademarks, service marks, collective marks, certification marks, 3D marks (shapes and packaging) and geographical indications. Well-known marks and trade names will also be granted protection.
3. Priority claim: the trademark owners will be able to claim priority from any application or registration filed in a Paris Convention country within a period of six months from the first filing.
4. A new “first-to-file” system: Myanmar will shift from a “first-to-use” system to a “first-to-file” system aligning Myanmar with other ASEAN countries.
5. 10-year validity: registration of a mark is valid for ten years from the trademark application filing date. It can be renewed every ten years for a further 10-year term.
6. Cancellation and invalidation: a trademark registration can be cancelled for non-use or invalidated for non-registrability by third parties.
7. Language: the documents can be submitted either in English or in the local language.
The new trademark law in Myanmar will streamline the process of trademark registration, prosecution, and litigation. It will also establish a framework for a comprehensive trademark registration system. It is a clear message to all marks’ owners that the government is taking serious steps to establish a simple and cost-effective intellectual property system which is expected to attract foreign investments into Myanmar.
At IPHub Asia, we specialize in trademark prosecution and provide Asia-wide coverage from one central location, Singapore. If you have any questions about the new trademark law in Myanmar, you can contact one of our specialists.
You can also visit our website to know more about what we do and the services we offer.
*This article was updated on September 1st, 2020