Date: 22-05-2019 by: Banca IP Law Firm
New Trademark Law are enacted in Myanmar
The Trademark Law were passed on 30 January 2019 but it will be effective “on the day specified by the president in a notification”. Myanmar government still needs some time for revising rules and regulations, establishing IP offices, and IP Courts etc... Thus, trademark filing under the new law system is not yet available. However, the Trademark Law might be came into force very soon and sudden, clients should be well aware in advance of this new change.
The trademark Law implements the “first-to-file” system from the previous “first-to use” system. All marks currently recorded would 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 trade marks in Myanmar re-apply for their marks as soon as possible when the new Trademark law comes into effect in order to be protected under the new trademark regime.
Here are some common questions and answers relating the Myanmar new trademark law:
1. When is the new Trademark Law expected to be effective?
It may take at least nearly six months counted from the enactment date for that the law comes into effect. Our expectation is about August 2019.
2. a. Will the trademark registered under the current regime have a priority right when being re-filed under the new TM Law?
Yes, the applicant shall produce and/or attached with strong and conclusive evidence for the prior rights claim while submitting the application
b. What are the required documents for obtaining the above mentioned priority?
Original certificate of trademark registration under the current regime, evidence of use of the trademark in Myanmar are absolutely required to have the use of priority right.
Other supporting documents that can be interpret as related ground of new law are published Cautionary Notice, prior registration certificate of principal jurisdiction, evidence of use of the trademark in other countries.
3. What should applicant do in case name/address of the owner of the trademark registered under current regime changed in the mean time?
The applicant should proceed with recordal of changes under the current regime.
4. What are the required documents and information for re-filing application under the new Trademark Law.
- A Request for registration.
- POA/Letter of Authorization to Agent will be required. POA needs to be notarized and legalized.
- Name and address of individual applicant or legal entity
- If the agent is authorized to file application, the name and address of the agent.
- Clear and complete representation of the mark.
- Goods and services classified by the International classification system of goods and services.
- Additional requirement if relevant:
- If the applicant is a legally constituted organization, to mention the registration number, type of organization and the Country.
- In case of priority claim, the request letter for priority claim is to be submitted along with authentic evidence and statement of priority rights.
- If a right of exhibition priority is claimed, a request letter for exhibition priority claim is to be submitted together with the supporting evidence and statement that there is an exhibition priority right.
- If a mark to file has already registered at the office of the Registry of Deeds , the applicant shall submit a certificate (confirming said registration – original Registered Declaration ), evidences of use of the trademark in Myanmar and other countries (if any), published Cautionary Notice (if any)
5. How will the trademark application be examined?
The trademark application shall be examined under formality examination and substantive examination. The substantive examination shall be based on absolute and relative grounds.
6. What is the time frame to oppose a trademark application?
Any interested party, who wishes to object an application, may submit an opposition within 60 days effective from the date of publication of mark based on absolute and relative grounds.
7. How long does a trademark registration not used continuously to face the risk of cancellation by a third party under new TM Law?
Non-use of the goods or services of a registered mark within a period of three years from the date of application to registrar and no reasonable ground for non-use.
8. What is the time frame for a trademark protection?
It is 10 years protection from the date of filing of application, extendable by a period of 10 years. Renewal of trademark shall apply 6 months before expiry of the term by paying the prescribed fees. Late renewal available within 6 months from expiry.
9. Which classification does the Myanmar TMO apply for the trademark application under the new TM Law?
The Myanmar Trademark Office will accept NICE classification, even though Myanmar is acceding said protocol.
10. In case the mark was registered in black and white but is used in combination of multiple colors or mark was registered in normal characters but is used in stylized characters in real market, is this be considered to be deemed to use the mark?
No specific provision. The registered mark should be used in correct version as registered.
Using a trademark includes the following: (1) using a registered trademark in a different form without changing its characteristics; (2) affixing the trademark on the goods intended to be imported or affixing the trademark on the packaging of such goods or using the same in Myanmar.
11. Does scope of protection for the mark registered in black and white larger than the one in color version under new TM Law?
No specific provision. The mark should be registered in all color versions that are used in practice.
12. Could mark that comprise only foreign characters like Chinese, Japanese other than English or Myanmar be registrable?
No specific provision. Mark (any perceptible signs such as name, letter, numeral, portrayed configuration, color combination, visible sign and any combination of such signs capable of distinguishing goods and services) are registrable. As for Chinese and Japanese characters mark, its transliteration and the meaning of the foreign characters would be required. For stronger protection, the applicant should consider to file their trademark under Myanmar transliterated version.
Banca IP Law Firm