Electronic Trademark Registration in Myanmar

The Ministry of Commerce (MoC), on 28th August 2020, announced that the “soft opening period” shall begin from 1st October 2020, to refile trademarks under the new Trademarks Act. The period shall be available to the trademark owners who are registered under the old trademarks law of the country and the one who intend to prove the prior use of trademarks. The ministry has not provided any closing date but the process is expected to run for at least six months.

The key changes brought under the new filing system are discussed below:

  • Shift in the mode of filing: Under the previous regime of filing trademarks, the brand owners had to manually file an originally notarized declaration of ownership and the legalized power of attorney with the Office of Registration of Deeds (ORD) established under the Ministry of Agriculture, Livestock and Irrigation. However, the new filing system facilitates online registration and the documents have to be submitted to the Intellectual Property Department (IPD) established under the Ministry of Commerce.
  • Traffic Light feature: The system has introduced this feature wherein the colour of light automatically changes and it clearly screens whether specifications of goods or services are acceptable or not. Specifications acceptable for a particular class are in the green light whereas the once that are unacceptable are featured in red.
  • Priority rights and privileges: The implementation of the new Trademark law in 2019 in the country has changed the registration criteria from first-to-use to first-to-file system. In addition to the authorities related to the intellectual property rights, the courts and legislature also have to shift their decisions to match the new paradigm.
  • Examination Procedure: In the old trademark regime, the act did not provide for a specific examination procedure. The decision to accept or not was on the discretion of the officer and he/she could refuse the registration if he/she felt that the mark was legally or ethically objectionable or against the religious sentiments of any Myanmar citizen. The procedure, in the new regime is specific and it clearly provides that the trademarks that are already registered under the old system and have been used shall be examined according to the 2019 rules and regulations before being published in the Official Gazette. It shall assist any individual or organization to file an opposition if there is any conflicting mark.

However, the system does not only benefit the department but also imposes certain challenges before it. According to unofficial statistics, before the announcement of the soft opening, there are certainly around 100,000 trademarks recorded under the old trademark regime which were filed manually. But there are no official numbers because the authority keeps its statistics confidential. Therefore, the department has to keep into consideration that there shall be huge number of filings and many trademark owners are willing to participate in the process and file their trademarks with the new system. Now, keeping in mind, the huge pile of registration, the examination procedure must also be at par. Hence, educating and training the employees of the department regarding new regulations and the tech-related aspects of the filing system, is indispensable.

In January 2021, the department also provided certain details for clarifications related to applications. The series marks will not be registered. The colour claims shall be available and the applicants must clearly specify the colours claimed. Moreover, the applications must have the application number. The applications shall remain pending unless the fees are paid.

Despite the large number of applications, the process was put on halt from 13 to 19 April 2021 because of the New Year Holidays. Hence, this was the only time the function of trademark registration stopped.

Conclusion

The soft-opening period to refile trademarks is the culmination of a long period of laying the groundwork for an updated IP protection regime in Myanmar. In the coming months and years, IP owners can expect to see progressive implementation of all four of Myanmar’s recently enacted IP laws, resulting in a truly modern system that spurs growth and competition in the country. Moreover, the shift to the online trademark registration system, has led to less costly and time-saving procedures. Therefore, Myanmar is trying its best to ensure that it meets the needs of the organizations and individuals aiming at entering the Myanmar market.

Author: Tanya Saraswat – a student at School of Law, Narsee Monjee Institute of Management Studies, in case of any queries please contact/write back to us via email chhavi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney.

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