Upcoming Changes to Myanmar’s Trade Mark Law
By Kevin Wong(Ella Cheong LLC)
Over the past year, Intellectual Property (IP) practitioners around the world have been eagerly anticipating the implementation of Myanmar’s new IP regime. On 15 February 2018, four IP laws – the Trade Mark Law, Patent Law, Industrial Design Law and Copyright Law were passed by the Upper House of the Myanmar Parliament. They will now be submitted to the Lower House of the Myanmar Parliament and then the Assembly of the Union for review and approval, before arriving at the President’s Office for his signature. It is expected that the new laws will be implemented within this year. However, there are currently no draft regulations that will assist us in determining how these laws would work in practice.
Myanmar’s current trade mark registration system involves the filing of a Declaration of Ownership of Trade Mark at the Office of the Registration of Deeds, before publishing a Cautionary Notice in at least one of the major newspapers to inform the public about the main details of the trade mark. It is customary to republish the Cautionary Notice every 3 to 4 years, to serve as a reminder and to keep third parties notified of the trade mark owner’s asserted rights. As there is no statutory framework in place, parties rely on common law rights instead.
The new law seeks to modernise Myanmar’s trade mark regime. Under the proposed law, it is likely the Myanmar Intellectual Property Office (MIPO) will be set up under the Ministry of Education (Science and Technology). The first person who registers the mark with the office shall receive rights to the mark, irrespective of previous use. This is known as the ‘first-to-file’ rule. Registration will be open to both domestic and foreign applicants, but local agents have to be appointed to file on the latter’s behalf.
Substantively, the new law seems uncontroversial and adheres to international standards. The draft provisions relating to the types of marks eligible for registration, term of registration (10 years), classification system, and registration process are largely similar to the standards used in other countries. An applicant will also be able to claim priority if they had made an earlier overseas application or registration of the mark in a Paris Convention country. Trade mark owners will have the option of pursuing either civil or criminal actions against alleged infringers. The new law further provides for the enforcement of border measures, such as applying to customs for a suspension or detention order of suspected infringing goods.
This upcoming shift to a statutory framework for the registration and protection of trade marks in Myanmar is indeed to be welcomed. Instead of filing a Declaration of Ownership of Trade Mark, the new registration process will involve the filing of a formal application with the MIPO, whereupon it will undergo formal and substantive examination, followed by publication, and then registration.
At this point in time there do not appear to be any transitional provisions in the new law which would facilitate the carrying over of currently registered rights into the new registration system. If this situation remains, existing trade marks are unlikely to receive automatic registration and protection once the new regime kicks into gear. Current trade mark owners would be required to re-register all their marks under the new law in order to benefit from the protections therein.
In these circumstances, a cautious approach would be for trade mark owners to ensure that all their important trade marks are filed on the very first day the new law comes into effect, especially if they are unable to make a priority claim for said trade marks under the Paris Convention. Brand owners may wish to undertake a strategic review of their current Myanmar trade mark portfolios in order to decide which trade marks take priority and are central to their commercial activities in the country.
It is likely Myanmar’s new trade mark law will come into effect this year. We will continue to monitor for any news emanating from the relevant Myanmar authorities and keep our clients updated accordingly, including any developments on the upcoming Patent Law, Industrial Design Law, and Copyright Law.
If you have any questions on the above, please contact our Mr. Kevin Wong (firstname.lastname@example.org) or your usual contact. For similar updates, please visit www.ellacheong.asia.
|Mr. Kevin Wong
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Disclaimer: The information here does not constitute legal advice and should not be relied on as such. If you require legal advice on a specific matter, advice from a lawyer should be sought. Please contact any of our lawyers for further assistance. Copyright in this publication is owned by Ella Cheong LLC. No part of this publication may be reproduced without our prior written approval.