Myanmar’s legal framework poof Intellectual Property protection could be understood as bit shaky. For years the colonial law for trademark didn’t serve much for the trademark regime rather it was the common law principles and criminal law which did the job of trademark law and for the other intellectual properties it was rather not protected at all and if it was the instances was rare.
Myanmar in 2019 enacted four intellectual Property Right Laws to sync it with the contemporary laws and bring it out from baggage from the outdated legal framework.
- Trademark Law (As enacted on 30.01.2019)
- Industrial Design Rights Law (As enacted on 30.01.2019)
- Patent Law (As enacted on 11.03.2019)
- Copyright Law (As enacted on 24.05.2019)
Myanmar Intellectual Property Office being the office dealing with registration of Intellectual Property Rights in Myanmar.
Trademark Registration
Myanmar’s new applicable laws on trademark is in coherence with the international trademark standards and hence giving clearing as to what is the entire mechanism revolving around the same.
- Establishing Myanmar’s Trademark Rights- Trademark rights are created through official registration with the Registrar in accordance with Section 15 of the Myanmar Trademark Law. The new law requires official registration in order to secure exclusive rights, in contrast to the former system that depended on ownership declarations and newspaper publication. Legal protection as provided under the new law is provide after the registration of the mark.
- Documents required to Apply for a Trademark- In order to register a trademark, applicants need to provide certain necessary paperwork, such as:
- A formal registration application
- The applicant’s name and address (person or entity)
- Details of an agent or representative (if appropriate)
- A thorough and lucid explanation of the trademark
- A list of products and services that the trademark covers
- Other documentation, such evidence of prior use, right of priority claims, or proof of legal entity registration, can be needed.
- Application prerequisites- Applications for trademarks must be filed in English or Myanmar in accordance with Section 16. The applicant must supply a signed verification of accuracy and a translation upon request.
- Date of Trademark Application Filing- According to Section 18, a trademark application’s filing date is the day it is sent to the Registrar in its entirety, along with the required payment.
- Right of Priority- According to Sections 31–33, applicants who have already submitted a trademark application in a nation party to the Paris Convention or a WTO member state have six months to do so in Myanmar while preserving their initial priority date.
- Analysis of Trademark Applications- Under Section 23, trademark applications are subject to examination for adherence to Myanmar’s trademark law. A trademark can be refused on absolute grounds if it fails to be distinctive, descriptive, deceptive, or against public order and morality (Section 13). It can be refused on relative grounds if it is the same as or confusingly similar to a registered trademark (Section 14). If the same or similar applications are made on different dates, the first applicant who fulfils all the requirements is given registration (Section 19). When two applications share the same filing or priority date, applicants need to negotiate the solution, or the Registrar will make the decision according to certain criteria (Section 20).
- Modifications, Revisions, and Withdrawals- Before the Registrar makes a final judgement, Section 21 permits applicants to make corrections, change information, or withdraw applications. Limiting the list of products and services or dividing applications into several are examples of amendments.
- Forfeited marks and late compliance- If applicants present good cause and supporting proof, Section 24 permits them to request registration even after deadlines have passed. Upon request and review, Section 25 allows the registration of forfeited marks.
Industrial Design Registration Process
The industrial design registration process in Myanmar begins with an initial examination by examiners, who forward compliant applications to the registrar. Non-compliant applicants are given 30 days to amend their applications; failure to do so results in abandonment. Once an application is deemed compliant, the registrar announces it publicly, allowing objections within 60 days. If no objections arise or are resolved, the applicant must pay the registration fee within 60 days to finalize registration. Approved designs receive a registration certificate, valid for five years and renewable twice for a total of 15 years. Corrections, amendments, waivers, and re-applications for abandoned registrations follow specified procedures within designated timeframes.[i]
Patent Registration
- In order to qualify for patent registration, inventions should satisfy three major criteria:
- Novelty: The invention should not have been made public earlier than the filing date in Myanmar or in a priority claim under international treaties.
- Inventive Step: The invention should have a technical improvement over the existing knowledge.
- Industrial Applicability: The invention should be able to be employed in industry.
- Impact on Prior Declarations of Ownership (DOO): Prior filed patents under a Declaration of Ownership (DOO) cannot be re-filed under the new Patent Law based on the requirement of novelty. The rights holders will have to seek new patents under the new legal regime in order to enjoy exclusive protection.
- Future Patent Application Process: The filing system for patents is scheduled to open late 2024, subject to issuance of Patent Rules. These regulations will stipulate application requirements, formal forms, charges, and procedural requirements for patents and utility models.[ii]
Copyright Registration
The Myanmar industrial design registration is initiated with a preliminary examination by examiners, who submit compliant applications to the registrar. Incompliant applicants have 30 days to correct their applications; if not done, the applications are abandoned. After an application is found to be compliant, the registrar publishes it, and objections can be made within 60 days. If no objections occur or are solved, the registrant has to pay the fee of registration within 60 days to complete the registration. Granted designs obtain a certificate of registration, whose validity is for five years but can be twice renewed for up to 15 years. Correction, amendment, waiver, and re-application on abandoned registrations pursue set procedures under set time periods.[iii]
Author: Devanshu Dey, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney.
[i] file:///C:/Users/KIIT/Downloads/Industrial-Design-law-a-comprehensive-guide.pdf
[ii] https://www.trade.gov/market-intelligence/burma-myanmar-patent-law#:~:text=The%20Myanmar%2FBurma%20Patent%20Law,inventive%20step%2C%20and%20industrial%20applicability.
[iii] https://www.tilleke.com/insights/myanmar-accepts-voluntary-registration-of-copyrights-and-related-rights/