Date: 20-02-2019 by: Banca IP Law Firm
10 things to know about newly approved Myanmar Trademark Law
The Myanmar president has recently passed by the Trademark Law and the Industrial Design Law on 30 January 2019. The Government will enter into effect “on the day specified by the president in a notification”, as stated in the law.
However, the Myanmar Government still needs some further period in preparation and issuance of rules and regulations, establishing IP offices and IP Courts, etc… Trademark filing under the new law system is not possible yet. The new Trademark Law implements the “first-to-file” system from the previous “first-to-use” system. All the marks currently recorded shall need to be re-filed and examined once the new law enter into force in order to gain protection in Myanmar. Trademarks which have been recorded at the Office of the Sub-Registrar of Deeds and Assurance under the current first-to-use system will NOT be automatically protected under the new first-to-file system. It is therefore very important that registrants of the current recorded trademarks in Myanmar must re-apply for their marks as soon as the new Trademark law comes into effect in order to be protected under the new trade mark regime.
1, Myanmar Intellectual Property Office
Creation of the office will be responsible for the registration of trademarks.
2, First-to-file system
The new trade law will replace the current “first-to-use” system by a “first-to-file” system as most of ASEAN nations.
3, Accepted signs
Pictures, names, signatures, letters, words, numerals, brands, labels, colors) shall be accepted for registration as a trademark. The protection will be available for trademarks, service marks, collective marks, certification marks, and series of marks.
4, Grounds of refusal
The trademark shall not be accepted for registration if it is:
- Not distinctive
- Similar or identical to other registered marks or well-known marks
- Misleading the public
- Infringing others IPR
- Filed in bad faith
- Using a State flag, emblem of State, government institution, intergovernmental organizations, foreign state or international organizations.
5, Registration process
The registrar will perform the formality and substantive examination of the application and publish the trademark. Once the trademark has been published, it shall be open for opposition which can be lodge against the trademark application during the publication period.
6, Non-use cancellation action
The registrar may cancel the registration of a mark if the trademark owner failed to use the mark for 3 consecutive years commencing from the date of registration without sufficient justification.
Remedies for enforcement would be administrative (custom), criminal and civil.
8, Term of the Registration of Marks
The term of registration is set at 10 years with provision for renewal for ten years periods.
9, Transitional period
There is neither a procedure for automatically registering marks which are recorded under the current system nor current provisions on whether existing marks recorded under the old system shall continue to receive protection during a certain period of time once the new trademark law becomes effective. Such issue shall be addressed by the Parliament before enactment.
10, Summary of IP Registration process
-Examination for opposition
|Banca has been an IP agent of thousands of both Vietnamese and international companies to establish and enforce their IP rights in Vietnam, Laos, Cambodia and Myanmar. For every further consultation you may need to know more about this newly approved Trademark law of Myanmar which you and your clients assume to affect your industrial properties, please don't hesitate to contact us.|
Compiled by: Banca IP Law Firm