Myanmar welcomes the long-awaited Trademark Law

Myanmar will not be mentioned just for his amazing panorama. Indeed, on January 30, 2019, Myanmar's long-awaited Trademark Law was signed into law, finally establishing the framework for a comprehensive trademark registration system open to both foreign and domestic trademark owners.

Once the notification is issued by the President of Myanmar, the New Trademark Law will be effective.

Let's have an overview of the New Law.

Firstly, the old first-to-use system is replaced with the a first-to-file systemand trademarks registered in Paris Convention member states benefit from a six-month priority period (which is particularly notable as Myanmar itself is not yet a signatory to the Paris Convention).

Once registered, the Trademark registrations will be valid for a period of 10 years from the filing date, renewable every 10 years.

A new system of penalties is forecasted as well. The law introduces criminal penalties for trademark infringement and counterfeiting, which range up to three years’ imprisonment and a fine of around USD 3,250, and grants the judiciary the power to establish specific IP courts (although it is not yet clear whether there is any plan to do so in the near future).

The law also establishes the Central Committee for Intellectual Property Rights and the Intellectual Property Rights Agency, which will collectively have jurisdiction over Myanmar's trademark registration system.

However, if those are the premises, we point out that the new system is still to be established.

That means that applications for registration are not yet being accepted under the new law, as the administrative structures necessary to do so are still being established. No timeline has been set out for the required implementing regulations and the establishment of the intellectual property office.

Must be underlined that once the notification is issued by the President of Myanmar, and the New System will be established, the trademark owners which have already registered their marks under the old system, must apply – again – for registration in order to “confirm” their IP rights.

Given the above, what does remain unchanged?  

The new law does not change the system of the documents required for registration, which remains substantively unchanged.

The documentary evidence supporting new applications includes proof of existing recordals with the Office of the Registration of Deeds. Although it is not yet clear what weight will be given to these during the trademark examination process, trademark owners should audit their portfolios to ensure that their rights are recorded and up-to-date, to ensure maximum leverage under the new system.

Similarly, the law makes reference to providing evidence of use in order to support a trademark application. 

Trademark owners should begin to collate all evidence of existing use, including cautionary notices (which can still be published), advertisements, office stationery, and other clear evidence of use.

For those whose existing marks are subject to licensing arrangements in Myanmar, these too should be audited and checked for up-to-date and accurate depictions of the relationship with franchisees and licensees, to avoid any ambiguities when evidencing use.

In conclusion, as per the final date of effectiveness of the Trademark Law, it will be announced at a later stage, and we will keep you updated on details as they become available… stay tuned!