In Myanmar, a new Trademark Law and was enacted on January 30, 2019.The new Trademark Law revamps the current trademark registration and protection policy in the country. Below given are the highlights of the Law with respect to the major principles and administrative bodies it establishes:
- For the administration of trademark registration, the new Law establishes the Myanmar Intellectual Property Office (MIPO) under the Ministry of Commerce. The MIPO will have the authority to examine, publish in the journal and handle opposition proceedings of trademarks.
- For implementation and administration of IP related policies, the Central Intellectual Property Committee (CIPC) and the Intellectual Property Agency (IPA) is to be set up under the Law.
- The trademarks registered under the old system are to be re-filled. A “first-to-file” system will be adopted under the new law for trademark registration and protection, unlike the “first-to-use” system followed earlier.
- The new Law recognizes the concepts of “service marks”, “collective marks”, “certification marks”, “trading names” etc. It also protects “famous marks” (also known as well known marks) and “geographical indications”.
- The new Law also contains provisions for cancellation of registration for ‘non-use’. It also provides for invalidation of a trademark on the ground of non-registrability.
- The term for registration under the new Law is ten years from the date of filing the application.
The introduction of these new provisions and administrative bodies need a lot of effort in order to bring about all the changes from the old system to the new system. Furthermore, no procedure has been provided for the re-registration of the marks under the old system. This means that these marks have to be re-filed to the MIPO which will then take on the examination and the subsequent processes. To facilitate this process of implementation of the new Law, two phases have been prescribed, namely; “soft opening period” and “grand opening period”.
Trademark Registration in Myanmar under the soft- opening period has commenced from October 01, 2020. The soft opening period is expected to last for a period of six (6) months i.e. till March 31, 2021, thereby allowing existing trademark holders to re-file applications for their marks(s).
The Myanmar IP Office is accepting the following types of new-applications re-filing under the soft opening period:
- Trademark applications based on Declaration of Use registered with Registrar of Deeds before October 01, 2020; or
- Trademark applications for the marks already in use in Myanmar subject to submission of concrete evidence of use (such as class and list of goods/services, tax receipt showing use of the mark, evidence of promotional activities featuring the mark, evidence of actual use of the mark in Myanmar and any other documents showing any use of the mark)
Power of Attorney/ Form of Authorization and the Official fee under the new law have not been announced yet and are likely to be informed around the Grand Opening Date of April 1, 2021.
FILING OF APPLICATION UNDER THE SOFT- OPENING PERIOD
- Filing of applications for re-registration of all the marks by uploading the same on the Government portal/ database. This is only a preliminary step and will not be considered as completion of filing formalities;
- As and when notified by the Ministry, official fees and Form TM2 will have to be submitted.
Please note that all the applications for re-registration of the marks filed during the soft opening period from October 01, 2020 until March 31, 2021 will have the same application date i.e. the grand opening date of April 01, 2021.
- Owner’s name and address;
- Clear specimen of the proposed mark;
- Classes and list of goods and/or services (identical to those already recorded with the Registrar of Deeds);
- Claim of priority (if any) and its supporting documents;
- Claim of colors of the mark;
- A scanned copy of the recordation of the declaration of ownership or renewal the Registrar of Deeds; and
- If the trademark is already used in Myanmar, evidence of use and the first date of use.