The Myanmar Trademark Law was passed by the Assembly of the Union on January 30, 2019 following its adoption by the Lower House on December 12, 2018 and the Upper House on February 15, 2018.
Among several notable changes, the new law introduces a "first-to-file" system that requires no evidence of prior use or ownership in Myanmar. The law significantly improves the ability of trademark owners to counter bad-faith trademark squatting and, in cases where infringement is found, provides higher fine amounts, imprisonment and customs and civil remedies, including temporary and permanent injunctions. In addition, the law introduces substantive examination of applications, oppositions, and cancellation actions, and envisages establishing a specialized Intellectual Property Court to handle all IP disputes and the possibility for Myanmar to join the Madrid system. The new law also clarifies protection for “well-known” trademarks, provides trademark publication, amendment, withdrawal and renewal procedures, makes available multi-class applications and priority claim. Geographical indications are also protected through registration.
There is no procedure for automatically re-registering marks which are recorded under the current system. Therefore, marks and geographical indications recorded with the RDA must be re-applied for once the law enters into force, otherwise they will lose their validity. Use of the mark is still critical in re-filing process. This is according to Articles 93 a) and b), and 17 b) of the new law,
Art. 93 “In accord with the Registration Act before this law enters into force:
The owner of a mark which is registered with the Registry of Deeds and Assurance or who has been using its unregistered mark in the market is desirous of obtaining protection under this Act, shall file an application in compliance with this law to obtain protection .
Regardless the mark is registered with the Registry of Deeds and Assurance or not, the goods and services for which marks are used in the market shall enjoy priority rights within the prescribed timeline.
Art. 17 (b) “supporting documents if the mark applied for registration is a registered mark at the Registry of Deeds and Assurance Office”
The trademark law will require implementing regulation(s) to address various procedural aspects including the transitional period to refile marks under seniority claim, criteria to protect well-known marks, prosecution fees etc.. This will involve three main steps:
President of Myanmar to issue notification for enforcing the Trade Mark Law
Implementing Regulation to be issued
IP Office to be established for receiving trademark applications
The implementing regulation and IP Office may well be completed and established by end of April 2019.