DRAFT OF MYANMAR TRADEMARK LAW

DRAFT OF MYANMAR TRADEMARK LAW 

Introduction

Recently Trademark Bill was passed by Upper House of Parliament on 15 February 2018. New Law will replace current trademark registration practice. It is noteworthy to mentioned here that any trademarks registered before the new trademark law comes into force will continue to receive protection for three years from the effective date of the new law. Law will soon be further submitted for review and approval of the Lower House of the Myanmar Parliament and the Assembly of the Union of Myanmar respectively. 

Once approved by assembly, will further be submitted to the President for his signature.

The Law introduced first to file system and priority claim. Well known mark would also be recognized. Overall, Bill complies with the international standard set by World Intellectual Property Organization (“WIPO”). Following are the features;

Absence of Transition Period

One of the key characteristics of the Trademark Law is the absence of a transition period. It means, due to first to file system, trademark owners should be prepared to file all their important trademarks on the day the Trademark Law comes into effect. It is important to note that prior use of a trademark is not taken into account.

Broader Definition of Trademark

One of the significant thing about Trademark Bill is, it has introduced broader definition of Trademark. According to the Bill the definition of mark will cover perceptible signs including sounds, smells, and touch, or any visible signs including pictures, names, domain names, signatures, letters, words, numerals, brands, labels, configurations, trade dress, packaging, colors, or combination of colors. The definition reflects the most advanced and flexible trademark legislations and is consistent with TRIPS.

Re-registration of Existing Trademarks

Existing trademark those are registered under the current practice with Office of the Registration of Deeds will be required to file new application in order to enjoy protection under new Trademark Law. 

Although Bill provides that proof of earlier registration i.e. declaration of ownership, can be submit while applying for the registration but it remains to be seen how much weight it carries in the examination of application can be filed in English or Myanmar. 

Foreigners have to appoint a local agent to file the registration on their behalf, if their ordinary residence or principal place of business is outside of Myanmar.

First to File System

One of the significant change under the Bill is transition from “First-to-use” to “First-to-File”. The current practice relies on “First-to-use”. Bill introduced “First-to-File”, which means irrespective of prior use it is possible to someone to register trademark validly and prevent others from future use. Person or company to file their trade mark application first is generally granted the right to that trade mark and can stop others from using it.

Arrangement for Intellectual Property Office

Under the current practice Office of the Registration of Deeds is responsible to register the Trademark application. The Bill provides that separate intellectual property office will be established under the Ministry of Education.

Priority Rights

Although Myanmar is not a member of Paris Convention, the Bill introduced provision recognizing priority rights. It means applicant can claim priority right within six months from their first application in a foreign member state. The priority right is based on Article 4 of the Paris Convention for the Protection of Industrial Property of 1883.

Recognition of Well Known Marks

Bill also provides definition of famous mark. Famous mark means any mark in accordance with the specified criteria to be well-known in the country. 

However, Bill does not specify how mark will be considered as well know. This is expected to be clarified later under the rules and regulations when Bill is enacted into law.  Famous or Well-known mark may enjoy broader protection due to their reputation than an ordinary mark.

Validity

Registration of mark will be valid for 10 years, with the option to renew indefinitely at the end of 10 years’ term. However, non-use of trademark for 3 consecutive years will be sufficient ground for cancellation of registration. As per the current practice, trademark is to be renewed once every three years either by re-registration or republication. 

  

Border Control Regime

According to Bill, Trademark owner can also apply for suspension order to Myanmar Custom Department to prevent the entry of counterfeit goods. However, certain category of small quantities is exempted from the preview of suspension order. The Bill does not specify details point rights holder is to present to the Customs regarding the suspect goods.

Separate IP Court

Separate court will be constituted under the new law to examine and resolve cases relating to the intellectual property rights.  Both the civil and criminal remedies are available under the Bill.

Conclusion

Since pursuant to Myanmar Investment Law 2016 and Myanmar Companies Law 2017, foreign investment is increasing into Myanmar and investors are eagerly expecting enactment of Bill into law. Considering the current system, Myanmar steps towards stronger protection of intellectual property rights is significant.

By: Sandip Bhosale

Foreign Senior Legal Consultant

Biz Law Consult Myanmar

Email:sandip@bizlawmyanmar.com

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