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Get ready for the soft-opening period

16 Nov 2019

The Trademark law and draft Trademark rules provide for the soft opening period also know as the sunrise period. It is a special period during which trademark holders will be able to refile their existing marks. This period will occur prior to the opening of the Myanmar Department of Intellectual Property (MDIP) which is scheduled to be in the middle of 2020, possibly on the World IP Day (April 26, 2020). All trademark owners who have recorded their marks with the Registry of Deeds and Assurance (RDA) must re-file their marks under the new law, or risk losing that protection.

 

Filing date

 

The filing date of all re-filed marks will be the same regardless the date at which the marks are refiled within the 6 month period. The filing date will be the date at which the IP Office will be established (possibly April 26, 2020).

 

E-refiling system

 

The WIPO and the Ministry of Education of Myanmar have been cooperating in setting up an online platform for re-filing trademarks which is expected to start in early 2020, exclusively for existing holders of trademarks registered under Myanmar’s old system. The MDIP will only accept applications to re-file old registrations with the RDA during the soft-opening period.

 

New trade mark applications

 

New trademark applications, and applications for any amendments or updates to existing trademarks, will only be possible after the MDIP’s official opening.

 

Documents and information for re-filing marks

 

To re-file a trademark under the new system, the following will be required:

 

  1. Specimen of the proposed mark;

  2. Applicant’s details; name, address, nationality, type of business activity

  3. Classes and list of goods and/or services (they must be identical to those already recorded with the RDA);

  4. Claim of priority (if any) and its supporting documents;

  5. Claim of colors of the mark;

  6. A scanned copy of the recordation of the declaration of ownership  with the RDA; and

  7. If the trademark is already used in Myanmar, evidence of use and the first date of use.

The following information must also be confirmed as being the same as the existing DOO recorded with the RDA:

  • Recorded mark;

  • owner’s nationality, name and address;

  • classes and list of goods and/or services; and

  • Registration number and date.

 

What are the key benefits of re-filing trade marks during the sunrise period?

 

  • Maintain the validity of existing marks registered with the RDA;

  • Priority to re-file their marks before new trademarks are filed and newly marks are filed;

  • Secure a filing date which will be the same date as the official opening of the IP Office of Myanmar;

  • Provide an opportunity to claim seniority right corresponding to the first date of use of a mark in Myanmar. Evidence to establish first date of use include cautionary notice.

Unresolved question

 

Would refiled marks be enforceable during the soft-opening period?

 

There is no guidance provided in the Trademark law or Trademark rules on this point. However, we are of the view that refiled marks should still be enforceable under

 

the Specific Relief Act and Criminal Code.

 

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