Our Reference: Newsletter No.01/MM/2019
TO OUR CLIENTS & ASSOCIATES
UPDATES ON NEW TRADEMARK LAW IN MYANMAR
Introduction
Myanmar’s long-awaited Trademark Law was signed into law on January 30, 2019, establishing the framework for a comprehensive trademark registration system open to both foreign and domestic trademark owners.
The only outstanding formality for the New Law to become is its presentation to the President for his signature.
However, once the President has signed the New Law, the state organs responsible for all the state’s trademark protection services still need to be established. Given the Assembly only approved the draft law last week, it is estimated that the New Law and its implementing bodies will not be functional for at least six to eight months from now.
Notables changes of the new Law
Among several notable changes, the new law introduces a “first-to-file” system from the previous “first-to use” system. Trademark owners may also benefit from a right to claim priority from any application or registration filed in a Paris Convention country within the prior six months.
There is no procedure for automatically re-registering marks which are recorded under the current system. Trademarks which have been recorded at the Office of the Sub-Registrar of Deeds and Assurance under the current first-to-use system will not be automatically protected under the new first-to-file system. Therefore, all marks currently recorded would need to be re-filed and examined once the new law enters into force in order to gain protection in Myanmar, otherwise they will lose their validity.
In addition, the law introduces formality and substantive examination of applications, publication for oppositions, granting certificate. Opposition on the absolute ground or related ground may be filed by anyone by paying an opposition fee within 60 days as of publication.
Recommendations
It is important to understand that applications for registration are not yet being accepted at this time under the new law, as the administrative structures necessary to do so are still being established. However, as the Law will be based on the first-to-file principle, we would like to suggest you and you clients to immediately undertake an updated comprehensive analysis of their current Myanmar trade mark portfolio and decide which marks are important to their current and future commercial ventures.
The documents required to re-filing marks are:
- A Request for registration.
- POA/Letter of Authorization to Agent will be required.
- Name and address of individual applicant or legal entity
- If the agent is authorized to file application, the name and address of the agent.
- Clear and complete representation of the mark.
- Goods and services classified by the International classification system of goods and services.
- Additional requirement if relevant:
- If the applicant is a legally constituted organization, to mention the registration number, type of organization and the Country.
- In case of priority claim, the request letter for priority claim is to be submitted along with authentic evidence and statement of priority rights.
- If a right of exhibition priority is claimed, a request letter for exhibition priority claim is to be submitted together with the supporting evidence and statement that there is an exhibition priority right.
- if a mark to file has already registered at the office of the Registry of Deeds , the applicant shall submit a certificate (confirming said registration ).
It is also very important to note that, for re-registration of marks under the new Law, the original Duly Stamped Declarations of Ownership will be required to be filed along with the new applications as evidence that the mark has been registered under the current system.
We have established a long-term partner in Myanmar specializing in intellectual property matters and shall be able to assist with the protection of your rights here with the most competitive price possible.
Should you need further information on protecting your marks in Myanmar, please do not hesitate to contact us.
We will keep you updated on any developments on this issue.
Yours sincerely,
INVESTIP
