Myanmar IP Update: “Soft Opening” Trade Mark Re-filing Continues Amidst Ongoing National Crisis

Myanmar IP Update: “Soft Opening” Trade Mark Re-filing Continues Amidst Ongoing National Crisis


 

(Written by: Kevin Wong)

The ongoing crisis in Myanmar following the military coup d’état on 1 February 2021 has devastated the country. The progress of this emerging ASEAN nation’s new trade mark regime has not been spared from the ensuing reverberations. Amidst the political and economic uncertainty, a summary update on the current state of play pertaining to trade mark protection in Myanmar is as follows:

“Soft Opening” Period

The “Soft Opening” period, a time period designated for initial priority re-filing of old marks registered at the Myanmar Registry of Deeds and Assurances under the old trade mark regime, had at least tentatively been scheduled to last until the end of March 2021. However, this period appears likely to continue for the time being due to the uncertain circumstances and resultant lack of developments, including any information about the “Grand Opening” date, being the official launch date for trade mark filings under the more conventional new trade mark registration system.

“Soft Opening” Re-filing

The Myanmar Intellectual Property Department’s online re-filing system remains operational, subject to technical (including internet-related) outages that may occur from time to time. The initial re-filing is a relatively smooth process, particularly in cases where the basic re-filing application details (e.g. trade mark, class(es), specification of goods/services) and applicant’s details (owner’s name and address) match the latest details of the mark as registered under the “old regime”, and the applicant is also able to submit copies of “old regime” registration/renewal (stamped Declarations) as well as newspaper-published Cautionary Notices for the mark to support the re-filing application. Owners of old marks without any Cautionary Notices published yet should therefore get publication done first before proceeding to take re-filing action.

The complete re-filing stage procedure has yet to be confirmed, and the IP Department currently accepts initial online re-filings without requiring payment of any government fees or submission of any additional official forms for the time being. Subsequent examination (including proof of use) requirements as well as the final registration stage procedure have also yet to be formalised; these appear likely to take more shape closer to the eventual Grand Opening launch.

New Marks

Trade mark owners who have sought to freshly register new marks in Myanmar under the “old regime” first, before undertaking “Soft Opening” re-filing with such supporting registration, have encountered the severely disrupted operations of the Registry of Deeds and Assurances as a roadblock. Under the current uncertain circumstances, the only logical alternative approach for the time being may be to consider requesting re-filing with supporting evidence of use in commerce instead, if such use had commenced prior to 1 October 2020 (the new registration system’s “Soft Opening” launch date).

Considering the legal complexities outlined above as exacerbated by post-coup instabilities, brand owners with business interests in Myanmar should obtain specialist support and advice to navigate the uncharted waters of Myanmar’s new trade mark regime.

If you have any questions or would like more information on trade mark protection in Myanmar, please contact Mr. Kevin Wong () or your usual contact. For similar updates, please visit www.ellacheong.asia.