OLD TRADEMARK LAW IN MYANMAR
Myanmar had an existing legal framework for trademarks under the Myanmar Trademark Law of 2019. This law introduced significant changes to the previous legal regime and aimed to align Myanmar's trademark system with international standards.
Before enacting the 2019 law, Myanmar had an outdated trademark law, the Myanmar Registration Act of 1908. This old law did not adequately protect intellectual property rights and lacked international trademark registration and enforcement provisions. As a result, Myanmar's intellectual property system faced various challenges, including limited protection for trademarks, counterfeiting issues, and inadequate legal remedies.
Enacting the new trademark law in 2019 was a significant step towards modernizing Myanmar's intellectual property regime and aligning it with international standards. The new law aimed to provide more robust protection for trademarks, facilitate trademark registration and enforcement, establish a more efficient intellectual property office, and promote economic development and investment in the country.
GRAND OPENING
The 'grand opening' of Myanmar's Intellectual Property Department (IPD) on April 26, 2023, marked the official implementation of the long-awaited first-to-file trademark registration system. The full implementation of this law is a significant step in Myanmar's long-term effort to create an efficient, contemporary framework for trademarks. The Trademark Law was enacted in 2019 as a part of an array of laws aimed at modernizing the nation's handling of intellectual property rights, and it came into effect following Notification No. 82/2023 issued by the State Administration Council on March 10, 2023.
The new Trademark Law would bring Myanmar to par with other Southeast Asian countries that have already implemented the IP laws and procedures by giving brand owners much-needed protection and encouraging innovation and investment. It will also help streamline the filing procedures.
RE-REGISTRATION OF TRADEMARKS
During a period called the "Soft Opening Period" (i.e., from October 01, 2020, to March 31, 2023), the owners of the registered trademarks under the old system were required to re-file applications for registration of their marks for substantive examination at the Myanmar Registrar to maintain their registrations. The soft opening period was restricted to trademarks registered via Declarations of Ownership filed with the Office of the Registration of Deeds and/or trademarks that have enjoyed use in Myanmar ("Registered/Used Marks"). In contrast, all other trademarks ("New Marks") can only be filed after the grand opening.
Mark owners must also submit a notarized Appointment of Representative form – a newly introduced form different from a power of attorney – to the IPD to enable their trademark representative in Myanmar to carry out this step.
Why should you register in Myanmar?
- Myanmar operates on a "first-to-file" system, meaning that the first party to file a trademark application will have priority over others, regardless of prior use. Therefore, trademark owners must file their trademarks promptly to secure their rights and prevent third parties from registering similar or identical trademarks.
- A delay in filing can result in third parties registering the famous marks in their favor leading to disputes, loss of rights, and potential infringement issues. Therefore, trademark owners must file their trademarks promptly to secure their rights and prevent third parties from registering similar or identical trademarks.
- Another advantage of registering trademarks in Myanmar is the relatively low cost compared to several other countries. Therefore, it is an attractive option for the trademark owners looking to expand their portfolio.
CONCLUSION
The new law represents a milestone in modernizing Myanmar's legal landscape for intellectual property. The law provides a comprehensive legal framework for trademark protection in Myanmar and is expected to boost foreign investment there. It also aligns with international standards and practices, making it easier for businesses to navigate the trademark registration process.
However, Myanmar being a first-to-file country, the brand owners need to strategize to secure their trademark rights there. A timely application would help prevent third parties from registering similar marks and minimize the risk of misuse. Additionally, the cost-effectiveness of trademark registration in Myanmar makes it an appealing choice for trademark owners.
Originally published 26 June 2023
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