Trademark Protection in Myanmar under the New Trademark Regime 

Joyce Tan discusses the changes brought about by Myanmar’s new Trademark Law 2019 and the strategies that trademark owners may explore during the transition period.

The Myanmar Trademark Law 2019 (“MTL 2019”) was passed by the Parliament of Myanmar on 30 January 2019, establishing a formal framework for a comprehensive trademark registration system which adheres to international standards. The new legislation will completely overhaul Myanmar’s trademark regime and will replace its old system which required brand owners to file a Declaration of Trademark Ownership (“DTO”) with the Office of Registration of Deeds and publish a Cautionary Notice in a local paper. Under the new registration system pursuant to the MTL 2019, trademarks will be formally registered with the Myanmar Intellectual Property Office (“MIPO”). Once the new MTL 2019 comes into force, the existing DTOs and Cautionary Notices under the old registration system will no longer be valid. While it is still not known when the MTL 2019 will come into force, a “Soft Opening” period for limited trademark filings had commenced on 1 October 2020.

Overview of the registration process under the MTL 2019

Similar to China, the new MTL 2019 is based on the “first-to-file” principle and introduces a formal application procedure through online filing whereby trademarks, service marks, collective marks, and certification marks will be eligible for registration. Unlike the old registration system which had no substantive examination, the new registration system will implement a registration criteria whereby MIPO will conduct formalities and substantive examinations based on “absolute grounds” and “relative grounds”. The MTL 2019 also introduces multi-class applications whereby applicants can apply for a trademark covering several classes in one application. Once registered, the trademark will be valid for a period of 10 years from the filing date, renewable every 10 years.

The new trademark registration system under the MTL 2019 will be implemented in two phases:

  • “Soft Opening” period which commenced on 1 October 2020; and
  • “Grand Opening” (date yet to be announced).

1st Phase – Launch of “Soft Opening” Period

Prior to the official implementation of the new trademark registration system under the MTL 2019, MIPO has launched a “Soft Opening” period giving priority to (a) existing trademark owners; and (b) users of unregistered trademarks in Myanmar to file their trademarks under the new system. There is no automatic conversion or re-registration of marks which have been recorded under the old registration system. In the event existing trademark owners wish to maintain protection of their trademarks, they are given the opportunity to re-file their trademarks during the “Soft Opening” period before others may do so after the “Grand Opening”.

All applications filed during the “Soft Opening” period will have the same filing date i.e., the date of the “Grand Opening”. The “Soft Opening” period is expected to run tentatively for at least 6 months or longer, the exact closing date of which has yet to be announced.

Aside from the 2 categories of priority exclusions above, new applications will not be accepted under the new trademark registration system during the “Soft Opening” period, and will only be possible during the “Grand Opening” period. However, since the filing of DTOs and Cautionary Notices under the old registration system is still available for now and presumably up till the end of the “Soft Opening” period, a brand owner may still opt for registration under the old system to qualify for re-filing under the new system.

2nd Phase – “Grand Opening” Period

This phase will begin after the end of the “Soft Opening” period and will allow any interested party to file a trademark application at MIPO on a first-to-file principle.

What Should You Do Now?

It is essential for trademark owners with existing registrations of their marks under the old registration system to re-file their trademarks immediately during the “Soft Opening” period in order to maintain the protection of their trademarks under the new law. If a trademark owner does not take advantage of the “Soft Opening” period and fails to re-file its trademark during this period, the trademark owner will lose out on getting an early filing date, and the relevant trademark will be available for registration by third parties when the “Grand Opening” period begins.

For parties that do not have any existing registration for their mark under the old registration system, it may be prudent to take immediate steps to register their trademark under the old registration system of filing a DTO and publishing a Cautionary Notice, and then re-file such mark under the new registration system during the “Soft Opening” period to ensure that the trademark carries an earlier filing date over those which are filed after the commencement of the “Grand Opening” period.

 

Joyce is an Associate at Wong Jin Nee & Teo. She is focused on trademark prosecution matters and has vast experience in worldwide trademark coordination.