Updated: Apr 19, 2019
The four pending Myanmar Intellectual Property Bills have finally advanced to the People’s Parliament where the final discussions and revisions to the bills may be made.
The bills cover trademark law, industrial design law, patent law, and copyright law.
We had the opportunity to speak with Tilleke & Gibbins specifically about the new Trademark Bill, and here is what they had to say about the basics of the bill.
Conventus Law: Focusing on the Trademark Law Bill, how will the Bill affect the rights of current holders of trademarks?
Tilleke & Gibbins: Current trademark owners who have filed and registered Declarations of Ownership in Myanmar are required to file new applications to enjoy protection under the new trademark framework. The Trademark Bill provides that trademark owners who have existing Declarations of Ownership shall furnish copies of the same when applying for trademark registration under the new trademark, but is silent on the weight which such documents would carry in the examination of applications. The government is currently considering the potential methods for ensuring a smooth transition from the current system to the new system anticipated under the Trademark Bill.
CL: Is a current trademark owner who timely files an existing declaration of ownership guaranteed a renewal of his/her trademark or is there a chance that additional documentation may be required to secure the trademark?
TG: The current Trademark Bill does not state that current trademark owners are guaranteed a renewal of their trademarks. On the contrary, it states that existing trademark owners who have recorded their trademark rights at the Office of Registration of Deeds will be required to file new trademark applications under the new trademark framework to enjoy trademark protection. The Trademark Bill states that the following information must be submitted for a trademark application:
(i) the request for registration;
(ii) the name and address of the person or legal entity applying for registration;
(iii) if the application is submitted by a representative on behalf of the applicant, the representative’s name and address;
(iv) clear and complete representation of the mark; and
(v) names and types of goods and services requested for registration in accordance with international trademark classification.
The Trademark Bill also states that the following information and documents should be provided, where applicable:
(i) the registration number, type, and country of origin of the entity, if the applicant is applying on behalf of a legal entity;
(ii) documents supporting, describing, and requesting the claim of priority right, if the applicant requests such right;
(iii) documents supporting, describing, and requesting the exhibition priority right, if the applicant requests such right;
(iv) a certificate of registration (Declaration of Ownership), if the mark in the application is registered at the Myanmar Office of the Registration of Deeds; and
(v) other requirements that may be set from time to time by a directorate that will be established to oversee trademark registration.
CL: The Bill requires that trademark applications be subject to a substantive examination against both absolute and relative criteria for refusal, as well as procedural checks, before they proceed to registration. What is the criteria for refusal?
TG: The absolute grounds of refusal include the lack of distinctiveness and descriptiveness and marks that adversely affect public order, morality, faith or the dignity and cherished culture of Myanmar. It also includes the generic nature of the mark, misleading nature of the mark, where a mark is a total or partial reproduction or imitation of a flag or other protected and official emblems, marks which violate prohibitions under existing laws, or marks protected by international treaties in which Myanmar is a member.
The relative grounds of refusal include marks which are identical or confusingly similar to other registered marks or well-known marks, marks which affect personal rights of a person or unauthorized use of name and goodwill of a lawful organization, marks which infringe on others’ intellectual property rights, application made without good faith.
CL: Under the bill, trademarks that lack distinctiveness, that are generic through use of common vocabulary, or that adversely affect public order, morality, faith, or the dignity and cherished culture of Myanmar, are deemed as non-registrable marks under the Bill. By what standards is the latter determined? Are there examples of what may be adverse to public order, morality, faith, or the dignity and cherished culture of Myanmar?
TG: There is currently no explanatory note or official guidance available on what constitutes examples that may be adverse to public order, morality, faith, or the dignity and cherished culture of Myanmar. It is nonetheless worthy to note that under the current trademark recordal framework, marks which are “likely to hurt the religious susceptibilities of any class of citizens of Myanmar” and trademarks which “bear the image of General Aung San” are unregistrable under Direction 13 of the Registration Act No. 16 of 1908. Some of the marks which are not allowed under the current framework include those that feature names or images of political leaders and national heroes, those which feature the image of the Buddha, and those which feature symbolic guardians such as the Chinthe.
CL: Other than the standard trademark, what else can be registered under the bill, such as tradenames, slogans, logos, geographical indications, and colors?
TG: Under the Trademark Bill, a mark is defined as any visually perceptible sign, including words, own names, letters, numerals, figurative elements and combinations of colours, as well as any combination of such signs capable of distinguishing the goods or services of one’s undertaking from those of other undertakings. The definition includes trademarks, service marks, collective marks and certification marks.
Tradenames, slogans, logos and colors which fulfil the criteria of what constitutes a mark, and do not contravene the absolute, relative, and procedural grounds of refusal under the Trademark Bill, can be registered. The Trademark Bill also contains provisions on geographical indications.
For further information, please contact:
Sher Hann Chua, Tilleke & Gibbins