From August 8‒10, 2017, the draft of Myanmar’s Trade Mark Law was published in newspapers for public comment. The bill is now being reviewed by the concerned Draft Law Committee of Parliament.
This article serves to provide an overview of the existing system of trademark registration procedures and the proposed new laws.
Current System of Trademark Laws
In the absence of a dedicated IP office, registration procedures are presently administered by the Office of the Registration of Deeds. Applications must be filed using one Declaration of Ownership for each mark, pursuant to Section 18 of the Registration Act. Moreover, for foreign applicants, a notarized and legalized power of attorney (POA) in favor of a local trademark agent, with an address for service in Myanmar, is also required.
Once the the legal procedures for trademark registration have been completed, the registered mark is then published in Myanmar newspapers as a “Cautionary Notice” to keep third parties on notice of the mark holder’s ownership.
Subsequently, a trademark renewal may be declared with the submission of a Declaration of Renewal of Trademark and a further POA to the local agent. Nevertheless, if an applicant does not renew, there will be no invalidation of the applicant’s trademark since, upon registration, it is valid indefinitely. However, it is advisable to renew every three to five years and also to republish the “Cautionary Notice” every three years.
New Trademark Bill
First-to-File Ownership: The new registration system will recognize trademark owners on a first-to-file basis. This means that—irrespective of prior use—it is possible for someone else to validly register a mark and prevent anybody else from future use. Foreign businesses will be able to apply to register trademarks under the new rules; however, their application must still be made through local agents.
IP Office: Under the new law, the Myanmar Intellectual Property Office (MIPO) will be established under the Ministry of Education (Science & Technology).
Registrable Marks: Under the draft law, a more liberal definition of registrable marks—to include trademarks, service marks, collective marks, and certification marks—will be adopted. It will also protect geographical indications and well-known marks. Opposition and cancellation actions will become available, and trademark infringement will become a criminal offense under the new law.
Validity: Registration of marks under the new law will be effective for ten years, with the option to renew indefinitely at the end of every ten-year term. Non-use of a mark for three consecutive years will be sufficient grounds for cancellation.
Lastly, there have been preliminary discussions on introducing specialized IP courts covering trademark infringement. However, nothing has come to light in the draft law concerning conflicts between marks recorded under the current system.
The bill’s approval is expected by the end of 2017 and it is hoped that its enforcement as an Act will follow in 2018.
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.
© 2017 International Trademark Association