E-briefing: Protecting Your Trademarks in Myanmar under the New Trademark Law
The Ministry of Commerce, the Government of the Republic of the Union of Myanmar has announced that the "Soft Opening Period" for the trademarks registration process under Myanmar’s new trademark law shall commence on 1 October 2020.
What Does This Mean?
Under the new trademark law, one needs to protect their trademarks by registering their trademarks with the Myanmar Department of Intellectual Property (“MDIP”). The trademark rights under the new trademarks registration system will generally be granted on a first-to-file basis.
The Declaration of Ownership (“DOO”) recorded at the Office of Registration of Deeds (“ORD”) and Cautionary Notice(s) published may no longer be sufficient to protect your trademarks in Myanmar once the new trademark law comes into force.
What is “Soft Opening Period”?
In light of the upcoming implementation of the new trademark law in Myanmar, the Myanmar Government will be launching a Soft Opening Period giving priority to existing trademark owners to re-file their trademark application with MDIP. All applications filed during the Soft Opening Period will bear the same filing date, i.e., the first day of the “grand opening” of the MDIP. The duration of the Soft Opening Period has yet to be determined and it will continue until further announcement is made by the Myanmar Government.
Who is Eligible to File During the “Soft Opening Period”?
All existing registrants of trademarks by way of DOO recorded with the ORD and all existing users of trademarks in Myanmar are eligible to refile their trademarks under the new trademark law during the Soft Opening Period.
How to Refile the Trademark Application?
The following information or documents would be required to refile a trademark application under the new trademark law:
- Clear specimen of the proposed mark;
- Owner’s name and address (please indicate if there are any changes from the DOO);
- Classes and list of goods and/or services under the Nice Classification;
- Description of colour claims of the mark (if any);
- Certified translation and transliteration of any words in the proposed mark other than Burmese or English;
- A copy of the notarised Power of Attorney and Form TM2 (subject to confirmation by MDIP) appointing a trademark registration agent in Myanmar; and
- A copy of the DOO recorded with the ORD; or
- If the owner of the proposed mark does not hold any DOO recorded with the ORD, Evidence of Use of the proposed mark in Myanmar (see below for elaboration).
If the applicant of the new trademark application is not the same person who registered the said proposed mark at the ORD previously, additional evidence of the change of ownership such as assignment of the said proposed mark shall be provided. If the name of the applicant has changed, documents showing the change of name shall be provided.
Evidence of Use
In the absence of a DOO, an application for registration of trademark can be filed during the Soft Opening Period if there is extensive evidence of use of the proposed mark solely by the applicant in Myanmar. The evidence of use should contain the said proposed mark and date of use of the said proposed mark in Myanmar. The evidence of use may include:
- Cautionary notice relating to the said proposed mark published in the local newspapers in Myanmar;
- Promotional materials showing the goods/services bearing the said proposed mark;
- Receipts or invoices for the goods/services bearing the said proposed mark; and
- Any other appropriate evidence showing use of the said proposed mark.
What if There is No DOO Recorded with the ORD nor Evidence of Use in Myanmar?
As new trademark filings will only become available after the grand opening of the MDIP (the date of which is yet to be announced), parties who have not filed their trademarks under the current system with the ORD and cannot provide extensive evidence of sole use in Myanmar are not qualified to file trademark application during the Soft Opening Period. In order to avoid the risk of being unable to file a trademark application for an unspecified period of time, it may be prudent for interested rights holders to apply for the recordation of their trademarks under the current system with the ORD as soon as possible before the end of September, and then re-file them under the new system during the Soft Opening Period.
How Much Does It Cost?
At the moment, the official government filing fees have yet to be announced. We are also working on a price package with our associates in Myanmar to re-register our clients’ existing marks in Myanmar. If you are interested to pursue the above, please let us and we will inform you once we have all these details confirmed.
In the meantime, it would be advisable to gather all the documents ready for filing of applications before the Soft Opening Period as we anticipate that the number of filings at the same time would be extensive.
We trust the above information is helpful. Should you require further clarification, please feel free to contact us.
For further information, contact:
Harry Elias Partnership LLP
+65 6361 9376
IP Counsel, Registered Foreign Lawyer
Harry Elias Partnership LLP
+65 6361 9350