Myanmar IP Update: Soft Opening Window Opens for Applications under New Trade Mark Law
(Written by: Kevin Wong)
After an extended hiatus since the initial enactment of Myanmar’s new Trade Mark Law on 30 January 2019, the Department of Science and Technology under the Ministry of Commerce is finally easing the new Trade Marks Registry into actual operation, with the commencement of the “Soft Opening” period under the new law. A summary update on the current state of play is as follows: –
“Soft Opening” Period
1 October 2020 has been set down as the soft launch start date of the online system for re-filing of old marks previously registered at the Registry of Deeds and Assurances under the predecessor “Stamped Declaration” system (“Old Marks”). Such Old Marks re-filed during the “Soft Opening” window period will generally enjoy priority examination and benefit from trade mark rights under the new first-to-file system.
It may be worth noting (as further explained below) that filing for registration/renewal and Cautionary Notice publication under the old regime will still be possible during the “Soft Opening” re-filing period.
Although the “Soft Opening” launch has been set for 1 October 2020, we are still awaiting updates on the official release of key information relating to the re-filing requirements/process and associated online filing administration and official fees. Whilst such delays in official disclosure for the new system launch may be considered not ideal, we would like to assure our valued clients with existing Old Marks under our care that trade mark owners are allowed a “Soft Opening” window period from 1 October 2020 onwards to re-file their Old Marks under the new law and system, to allow for contingencies given the brand new system and Trade Marks Registry personnel, and thereby help ease e-filing portal congestion and reduce technical/processing issues.
Whilst there is no need to rush to re-file Old Marks based on the above (we also expect a relatively streamlined initial online re-filing process), we will nevertheless keep clients who previously provided provisional re-filing instructions promptly posted on next steps in this connection, with subsequent communications covering their trade mark portfolios more specifically.
Meanwhile, at this interim juncture we would strongly advise on pursuing the following preliminary measures now (if/where applicable), prior to “Soft Opening” re-filing action:
(1) For Old Marks
a. Declaration of Ownership/Renewal
Specifically, if the latest registration/renewal was more than 5 years ago, renew under the “Stamped Declaration” system as re-validation for “Soft Opening” re-filing.
b. Cautionary Notice
Specifically, if a Cautionary Notice in the local newspapers has never been published at all, or the latest publication was more than 5 years ago, publish/re-publish as important supporting evidence relating to use for the official examination stage.
(2) For New Marks
New marks that never get registered under the “Stamped Declaration” system (“New Marks”) will not be eligible for filing during the “Soft Opening”. A subsequent “Grand Opening” launch for New Mark filings under the new regime will be announced in due course (official priority examination of “Soft Opening” re-filed marks will only commence at “Grand Opening”, followed by processing and examination of New Mark filings).
As such, for any marks of interest that have yet to be protected at all, register under the “Stamped Declaration” system while the system remains in operation, in order to possibly still claim the benefit of further re-filing of the marks within the “Soft Opening” period.