August 13, 2020

Myanmar implements official Trademark law

The summer of 2020 has seen various amendments to IP laws across the world, and amongst those countries advancing new legislation is Myanmar. The new trademark law established on January 30, 2019 was expected to commence in April 2020 with a "soft opening", but due to COVID-19 outbreak was postponed and is expected to open in the next couple of months.

The soft opening allows for those with previously declared marks in Myanmar to claim priority by re-filing their trademarks under the new legislation. This possibility will be available for a period of 6 months before the filing process is opened up to all applicants upon the "grand opening". When filing, applicants must provide evidence of use of the mark they wish to protect.

Applicants who previously filed a Declaration of Ownership with the Registration of Deeds Office, but failed to re-register their mark with the official Myanmar Intellectual Property Office to secure protection within the stipulated 6-month term can apply for protection thereafter on the general terms without any priority right.

The introduction of the law on trademarks is meant to greatly benefit applicants and trademark right holders by means of a determined scope of protection and a new efficiency of the filing process. According to the old legislation, brand owners would notify the Registration of Deeds Office of the existence of the mark by filing the above-mentioned declaration , however, this process did not ensure an official route as to trademark protection.The implementation of the law and subsequent formation of the new Myanmar Intellectual Property Office (MIPO) therefore establishes a more robust and clear method of trademark prosecution.

The new legislation in Myanmar will cover several types of trademark, including service, collective, certification and well known marks, and also geographical indications and trading names.

Previously, protection covered unregistered marks, in case they were in use in commerce prior to a registered mark. The new law establishes that the date of priority for trademarks in Myanmar will be decided on a first to file basis, allowing the initial applicant filing for a mark priority over those filed thereafter.

In relation to the requirements of a trademark, the law sets forth that a mark must be visually distinguishable from other marks within the same class of goods or services. Trademarks filed under the new legislation will only be examined as to absolute grounds, and examination does not include relative grounds. Thus, examination will be decided upon in terms of distinctiveness, and does not allow for generic terms or phrases. If no absolute grounds for refusal are found by the examining officer, a mark will be registered.

Relative grounds, such as filing in bad faith, may be used as a basis for a request by a third party to invalidate the mark within 5 years from the date of registration. Furthermore, those who wish to request cancellation on the basis of absolute grounds after registration may do so at any time. The cancellation of a trademark may also be justified by the non use of a registered mark with no appropriate reason, with the period of non use constituting 3 years from the filing date. This also covers the non use of the goods or services associated with the mark registered. The validity of all marks registered under the new law will be 10 years, further renewable for 10 years after expiry.

The incorporation of the trademark law demonstrates great strides of advancement in Myanmar, allowing those wishing to protect their brand in the country a higher clarity of an official registration process. An established legislation provides a greater sense of security for applicants who wish to protect their trademarks in Myanmar, thus encouraging an influx of trademark applications.

Author: Danielle Carvey