Updated: Feb 8, 2019
Myanmar’s long-awaited Trademark Law was signed into law on January 30, 2019, establishing the framework for a comprehensive trademark registration system open to both foreign and domestic trademark owners.
Once the administrative bodies and enabling legislation to support this system are in place, all existing trademark owners who have recorded their rights under Myanmar’s old system will have to file new applications to protect their marks under the new law.
Overview of the New Law
Trademark registration under the new law will be valid for a period of 10 years from the filing date, renewable every 10 years. Registration is on a first-to-file system (replacing the old first-to-use system of recordal), and trademarks registered in Paris Convention member states benefit from a six-month priority period (which is particularly notable as Myanmar itself is not yet a signatory to the Paris Convention).
The law introduces criminal penalties for trademark infringement and counterfeiting, which range up to three years’ imprisonment and a fine of MMK 5 million (approximately USD 3,250), and grants the judiciary the power to establish specific IP courts, although it is not yet clear whether there is any plan to do so in the near future.
The law also establishes the Central Committee for Intellectual Property Rights and the Intellectual Property Rights Agency, which will collectively have jurisdiction over Myanmar’s trademark registration system.
Establishing the New System
It is important to understand that applications for registration are not yet being accepted under the new law, as the administrative structures necessary to do so are still being established. No timeline has been set out for the required implementing regulations and the establishment of the intellectual property office, and as of January 31, new recordal applications, renewals of existing recordals, and all other trademark declarations are still being accepted under the old system.
Next Steps for Trademark Owners
Although the procedure and administrative bodies for the new system are not yet in place, the new law does lay out the documents required for registration, which remain substantively unchanged from the previous draft. Rights owners can therefore begin to compile and prepare those documents in advance.The documentary evidence supporting new applications includes proof of existing recordals with the Office of the Registration of Deeds. Although it is not yet clear what weight will be given to these during the trademark examination process, trademark owners should audit their portfolios to ensure that their rights are recorded and up-to-date, to ensure maximum leverage under the new system.Similarly, the law makes reference to providing evidence of use in order to support a trademark application. Trademark holders should therefore begin to collate all evidence of existing use, including cautionary notices (which can still be published), advertisements, office stationery, and other clear evidence of use.For those whose existing marks are subject to licensing arrangements in Myanmar, these too should be audited and checked for up-to-date and accurate depictions of the relationship with franchisees and licensees, to avoid any ambiguities when evidencing use.
The effective date of the Trademark Law will be announced at a later stage, and we will provide details as they become available.
For further information, please contact:
Yuwadee Thean-ngarm, Tilleke & Gibbins