After the long-awaited enactment of Myanmar’s new Trademark Law in 2019, the Burmese finally ushered in a new age of intellectual property rights protection. The 2019 Law signals Myanmar’s important first step to improve intellectual property rights protection to international standards, and provides a more certain structure to its trademark registration regime as it emerges as one of the most exciting nations in South-East Asia for foreign investors.
Before the enactment of the new Law, there were no formal trademark registration and examination procedures in Myanmar. Trademark owners used to “register” a Declaration of Ownership with the Registrar of Deeds and publish cautionary notices regularly on Burmese newspaper to warn off other trademark infringers, but substantive examinations and oppositions were not possible before the new Law.
Starting from 1st October 2020, Myanmar’s new trademark regime kicked off with a Soft Opening Period of 6 months until 31st March 2021. There are four key takeaways:-
- Myanmar is to establish a proper trademark filing system which is more akin to what we have in most other jurisdictions;
- Myanmar will switch to a “first-to-file” system as opposed to the previous first-to-use;
- Trademark owners with existing registrations should refile their trademarks by 31st March 2021; and
- New trademark filings are expected to be available 1st April 2021 onward.
In the following, we offer our insights on how trademark owners can get the most out of Myanmar’s new trademark law.
I. WHO CAN FILE DURING THE SOFT OPENING PERIOD?
Two types of trademark holders will be eligible for filing during the Soft Opening Period:-
1. Owners of existing trademarks in Myanmar
If you have previously registered your trademarks in Myanmar by virtue of a Declaration of Ownership with the Registrar of Deeds, you must re-file your trademarks with the newly established Myanmar Intellectual Property Office (MIPO). Previously registered trademarks will NOT be automatically carried over to the new system.
2. Owners of unregistered trademarks that are already in use in Myanmar
If you did not previously register your trademarks with the Registrar, but the trademarks are nevertheless already in use in Myanmar, you may also seek to register these marks during the Soft Opening Period. Although there has yet to be guidelines or precedents on the examination of use evidence, it is expected that cautionary notices published on Burmese newspaper, photos of goods bearing the trademark, advertising materials (in the form of brochure, leaflets, posters, etc.), sales invoices and agreements that show the use of the trademark will be helpful. The evidence should be dated and generated in Myanmar.
II. WHAT DOCUMENTS DO I NEED TO PREPARE?
We have already successfully re-filed applications for our clients under the new Myanmar registration system. The following documents will be required for the re-filing:-
1. Re-filing your existing trademarks
- Scanned copies of the Declarations of Ownership that are previously registered with the Registrar of Deeds
- The original notarized Power of Attorney
- Company registration number of the Applicant, if applicable
2. Filing your unregistered trademarks that are already in use in Myanmar
- Use evidence of the trademarks in Myanmar
- The original notarized Power of Attorney
- Company registration number of the Applicant, if applicable
III. WHAT IF THERE HAS BEEN A CHANGE OF OWNERSHIP FOR MY REGISTERED TRADEMARKS?
Submission of relevant written evidence explaining the change of ownership, e.g. Deed of Assignment, Certificate of Name Change will be required. These evidences will have to be notarized.
IV. ARE MULTI-CLASS FILINGS/RE-FILINGS AVAILABLE UNDER THE NEW LAW?
Yes. For re-filings, if your existing registrations are comprised of registrations for the same mark in different classes, you may group these registrations together as a multi-class application for easier maintenance.
V. WILL MY TRADEMARK ENJOY PROTECTION FROM A PRIORITY DATE IF I RE-FILE DURING THE SOFT OPENING PERIOD?
According to an Official Announcement made by MIPO, the first day of the Grand Opening period will be considered as the official filing date of trademarks re-filed during the Soft Opening period. This means that the protection for the re-filed trademarks will commence from the Grand Opening, i.e. 1st April 2021. While it appears that the re-filed registrations do not entitle trademark owners to enjoy protection from the date of the previously registered Declaration of Ownership as the new priority date, current trademark owners in Myanmar should still take advantage of the re-filing procedure during the Soft Opening Period in order to secure the earliest possible filing date under new trademark system, especially given that the “first-to-file” principle is to be adopted under the new regime. Furthermore, it is expected that applications filed during the Soft Opening Period will only be examined on registrability and formality but not substantively. Applications will be published for opposition for 60 days after formality check and if they are inherently registrable. On the contrary, it is expected that new applications filed after the Grand Opening will be examined substantively and may be rejected on the ground of conflicting prior rights. In order to secure a registration as soon as possible, it is beneficial to file earlier and be ahead of the queue due to the expected influx of re-filing applications and new applications from 1st April 2021.
VI. WHAT ARE THE EXAMINATION PROCEDURES FOR APPLICATIONS FILED DURING THE SOFT OPENING PERIOD?
All applications accepted during the Soft Opening Period will be processed after the Grand Opening. MIPO will perform a formality check and a substantive examination on the trademark’s inherent registrability. If there is no objection from the Examiner, the application will be published on MIPO’s official website for 60 days, during which oppositions may be filed against the application. If no opposition is filed, the trademark will proceed to registration.
VII. WHEN CAN I FILE NEW TRADEMARK APPLICATIONS IF I HAVE NEVER REGISTERED IN MYANMAR BEFORE?
New trademark filings are expected to be made available from the Grand Opening i.e. 1st April 2021 onwards. However, due to COVID-19 and operational setbacks of Myanmar’s Ministry of Commerce, the Grand Opening may be delayed.
VIII. HOW MUCH ARE THE OFFICIAL FEES?
Myanmar’s Ministry of Commerce has yet to announce the official filing/re-filing fees. Rest assured that filing requests since the beginning of the Soft Opening Period are being entertained by the MIPO, only that official fees are expected to be paid at a later stage.
IX. WHAT ELSE CAN I LOOK FORWARD TO?
While Myanmar’s new trademark regime is still at its infancy, we may expect features that are more in line with international standards. Priority claims under Paris Convention, protection of well-known marks, multi-class applications, renewals, oppositions, invalidations and infringement claims are key highlights of the new Law. Given the deadline on 31st March 2021, existing trademark registrants/users in Myanmar should act promptly to file/re-file their trademark, while newcomers should mark 1st April 2021 on their calendar and prepare the required documents in advance to ensure that their trademarks are filed as soon as the Grand Opening commences.