Mar 23, 2023 (Newsletter Issue 4/23)Long-Awaited Trademark Law in Force SoonOn 10 March 2023, the State Administrative Council issued Notice No. 80/2023 setting 1 April 2023 as the effective date of the long-awaited Trademark Law.
The IP registration system is to be introduced in four phases:
- First phase: The first soft opening of the registration system and online filing of trademarks registered under the Myanmar Registration Act, 1908 started in 2020.
- Second phase: The opening of the registration system for payment of fee and appointment of the representative (Form TM-2) expected to start at the end of May or early June 2023.
- Third phase: The grand opening of the registration system commencing one month after the second phase. Pursuantly, the old and new marks will be registrable on an ongoing basis. The time from the second phase to the third phase will be reconsidered in accordance with actual ground operations.
- Fourth phase: Establishment of the registry for Myanmar Copy Right Law and Industrial Design Law, tentatively in 2024.
The expected trademark filing will be MMK 150,000 and registration fees MMK 150,000 per class of goods and services.
Foreign trademark owners residing outside Myanmar must appoint a certified trademark representative by having the TM-2 form notarized. Foreign and Myanmar resident trademark owners must also complete and submit the TM-2 form. However, the TM-2 form does not need to be notarized.
For more information, please click hereSource: www.dfdl.com Jan 26, 2023 (Newsletter Issue 2/23)Trademark Law Expected to Be Enforced SoonOn 12 January 2023, Myanmar's Intellectual Property Department (IPD) announced that the Trademark Law, which was enacted in 2019, is expected to come into force in March 2023, without giving a specific date. Trademark registrations and procedures for accepting payments are anticipated to begin as soon as the Trademark Law comes into effect.
The grand opening of the Intellectual Property Office is scheduled for 26 April 2023.
For more information, please see here and hereSource: www.tilleke.com; www.rouse.com Aug 11, 2022 (Newsletter Issue 11/22)Official Forms for Trademark Matters IssuedOn 1 July 2022, the Ministry of Commence (MOC) issued its Notification No. 44/2022 to prescribe 19 official forms in the Myanmar and English languages for trademark matters under the Trademark Law 2019 as follows:
- TM 1 Form for filing a trademark application;
- TM 2 Form for appointment of representative(s);
- TM 3 Form of request for reinstatement of application;
- TM 4 Form of request for correction of an application;
- TM 5 Form of request for withdrawal of an application;
- TM 6 Form of request to limit the list of goods or services under an application;
- TM 7 Form of request to split an application;
- TM 8 Form for opposition against a trademark application;
- TM 9 Form of request for certified a copy of the registration certificate;
- TM 10 Form of request for amendment to a trademark registration;
- TM 11 Form of request for renewal of a trademark registration;
- TM 12 Form of request to record the transfer of a trademark registration;
- TM 13 Form of request to record the license of a registered trademark;
- TM 14 Form of request to cancel the recordal of a license of a registered trademark;
- TM 15 Form of request for invalidation of a registered trademark;
- TM 16 Form of request on cancellation of a registered trademark;
- TM 17 Form of request to change the representative(s);
- TM 18 Form of request for extension of time; and
- TM 19 Form for filing an appeal with the IP Agency.
Form TM 1 can be used for refiling for trademarks registered under the old trademark registration system and for filing for a new trademark registration. Forms TM 1 to TM 18 must be filed with the Registrar of Trademarks. Form TM 19 must be filed with the Chairman of the Intellectual Property Agency.
Foreign trademark owners must appoint a Myanmar representative for each matter. Form TM 2 (Power of Attorney) is required and must be duly notarized by a notary public. TM 2 must be filed digitally through the MOC's electronic trademark filing system or physically at the MOC's filing counters.
Source: LawPlus Ltd., Thailand Sep 10, 2020 (Newsletter Issue 14/20)
Soft Opening Starting on Oct. 1, 2020
On August 28, 2020, the Ministry of Commerce of Myanmar (MOC) issued Order No. 63/2020 to announce the Soft Opening for owners of registered trademarks and used trademarks to file their trademarks under the Myanmar Trademark Law 2019 (MTL2019). The key points of the Order are summarized below:
1. Owners of trademarks already registered with the Registry Office under the old system can re-file their trademarks starting from October 1, 2020, for the trademarks to be recognized under the MTL2019. Owners of trademarks used in Myanmar can file their trademarks with evidence of use during the soft opening. The end of the soft opening is not stated in the Order.
2. The priority registration date of the registered trademark under the old system and the priority right of the used trademark will be recognized. The application re-filing / filing date will the same as the effective date of the MTL2019 to be announced later.
3. The re-filing / filing can be made online by a non-Myanmar owner through a recognised Myanmar law firm as the local representative. A Myanmar owner can file the application in person or online without a local representative.
4. The major re-filing / filing requirements are:
- a specimen of the mark,
- a list of goods/services with the Nice classification (they must be the same as those under the DTO),
- a copy of the registered DTO,
- a copy of the published cautionary notice,
- evidence of use (such as copies of invoices/tax invoices and receipts for sales of goods/services) and evidence of advertisement for the used mark,
- evidence of trademark assignment or owner name change if the name of the owner under the DTO, and
- if the name under the application is not the same, a notarized power of attorney in case the owner is not a citizen of Myanmar.
The MOC will announce the official fee rates under a separate order before the effective date of the TML2019. This Order is not for filing a new non-registered / non-used trademark.
Registration of trademarks with the Registry Office under the old law can still be filed after October 1, 2020.
Source: LawPlus Myanmar Ltd.
Nov 19, 2019 (Newsletter Issue 16/19)
Soft Opening of New Trade Mark Register
Myanmar’s Trade Mark Act will be the first of the four new intellectual property legislation to be implemented and is expected to come into force in the middle of next year.
The Trademark Office of Myanmar is expected to begin working in form of a ‘soft opening’. Further details are expected to be released soon. During the soft launch the Office will only accept applications from trademark proprietors who have prior registrations with the Office of the Registration of Deeds.
Proprietors are strongly advised to secure the earliest filing date during this soft opening period which is expected to last three to four months. No official fees will be collected, and all applications submitted during this period will be treated as submitted on the first day that Myanmar’s Trade Mark Register is established.
For those who have not yet registered a Declaration of Ownership, should consider this as soon as possible in order to try to make use of the possibility of an early submission during the soft opening period.
Source: www.dentons.rodyk.com; www.kashishworld.com
Jan 31, 2019 (Newsletter Issue 1/19)Trademark Law EnactedOn January 31, 2019, President U Win Myint signed the Myanmar Trademark Law, approving the most anticipated piece of legislation in the country this year. The law includes 106 sections to regulate national and international protection of trademarks. The law includes the following:
- Introduction of the first-to-file framework to align with the international standards
- Term of protection is 10 years as from the date of application
- Renewable every 10 years for further 10-year periods as of section (34) of the Trademark Law
Registered trademarks recorded under current practice at the Office of the Sub-Registrar of Deeds and Assurance shall be re-registered in accordance with the provisions of the new law. Therefore, trademark owners need to re-apply their mark to gain protection under the new legislation.
The Trademark Bill is silent on whether there is a transitional period during which registered marks under the current practice remain valid for the preparation of re-application or whether there is a special examination procedure for such marks.
For more information, please click hereSource: www.bizlawmyanmar.com Oct 30, 2018 (Newsletter Issue 18/18)Draft IP Laws in Progress Progress has been made since the IP bills have been adopted by the Amyothar Hluttaw (“Upper House”) last February.
The Trademark Bill is being reviewed by the Lower House’s Bill Committee.
According to the Bill, all marks currently recorded with the Registry of Deeds and Assurance would need to re- applied when the new law enters into force, otherwise they won’t be valid. The Lower House considers adding a transitional period of 3 or 6 months to the Bill for trademark owners to re-apply their marks.
With regard to trademarks, the most important features of the Bill include:
- Introduction of first-to-file rule instead of the first-to-use rule as applied in the past;
- Registrable marks would include trademark, service mark, collective and certification marks and possibly three-dimensional marks (i.e. product shape);
For further information on the Trademark Bill, the Copyright Bill as well as on the Patent and Design Bill, please check the article of the law firm Rouse hereSource: www.rouse.com Mar 15, 2018 (Newsletter Issue 5/18)
Final Revisions of IP Bills
The pending IP bills in Myanmar on copyright, trademarks, industrial designs, and patents were passed by the National Parliament (Amyotha Hluttaw) on February 15, 2018.
This development signals the movement of the bills from the Myanmar National Parliament to the People’s Parliament (Pyithu Hluttaw), where the final revisions to the bills may be made.
This is the furthest stage to which the four IP bills have advanced in the legislative process since they were first announced to the public
Source: www.bakermckenzie.com
Oct 24, 2017 (Newsletter Issue 18/17)Draft Trade Mark Law PublishedFrom August 8-10, 2017, the draft of Myanmar’s Trade Mark Law has been published in newspapers for public comment.
The bill is now being reviewed by the concerned Draft Law Committee of the Parliament. Its approval is expected by the end of this year.
As a member of the World Intellectual Property Organization (WIPO) and the World Trade Organization (WTO), the nation is expected to deliver its IP laws in the near future to provide protection for trademarks, copyright, patents, and other intellectual property.
For further information, please read the article of the law firm Mirandah Asia from Singaproe here
Source: www.mirandah.com Dec 06, 2016 (Newsletter Issue 22/16)
Draft Trade Mark Law in Progress
Myanmar’s Draft Trade Mark Law is expected to be passed in 2017. This signals substantial changes to the current process which is based on common law and common practice rather than statute. The Draft Law intends to import structure and certainty into Myanmar’s trademark regime to generate greater protection and preservation of intellectual property and to meet international obligations derived from the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs Agreement).
The new laws set the parameters for what constitutes a trademark and confirms that trademark protection will also be available for service marks, collective marks, certification marks and series of marks.
Under the new laws, a draft of which was made public in July. The proposed changes are:
- First-to-use system will be replaced by a first-to-file system aligning Myanmar with other ASEAN nations.
- Registration will confer protection for 10 years from the filing date, and is renewable every 10 years.
- Trademark owners will have the ability to file litigation in both civil and criminal actions against infringers in specialist Intellectual Property courts, which are in the process of being established.
- Local agents are still required to file trademarks on behalf of individuals or corporations whose ordinary residence or principal place of business lies outside Myanmar.
- Trademarks under the new laws must be distinctive and must not be registered in bad faith.
- Upon receiving the requisite forms and information the Registrar will perform an inspection and publicise the trademark inviting opposition within a defined period of time (30 days if the opponent resides in Myanmar and 60 days if the opponent resides outside Myanmar).
- A trademark can be cancelled if determined as unregistrable under the new laws. The grounds for cancellation also encompass non-use for three consecutive years, and therefore trademark owners should ensure they are actively using their trademarks in Myanmar.
To facilitate the move from first-to-use to first-to-file a transitional period of three years has been proposed to commence on the date the new law enters into force.
Owners who have a trademark recorded on the Registry of Deeds and Assurance must re-file their trademark with the Myanmar Intellectual Property Office (MIPO) when the new law comes into effect. This would preserve priority under the new system.
If the mark has not been re-filed with the MIPO, the record on the Registry of Deeds and Assurances will automatically expire when the transitional period concludes.
Source: DLA Piper LLP, Australia
Jul 12, 2016 (Newsletter Issue 13/16)
Documentary Requirements for Trademark Application Changed
The Myanmar Registration Office has recently implemented amendments to the documentary requirements regarding applications for trade mark registration and maintenance. The changes came into effect as of June 1, 2016.
In particular, under the new regulation, in order for an application to be accepted by the Registration Office, any applicable Power of Attorney or Declaration of Ownership / Renewal / Change of Ownership form submitted must be notarized, authenticated and legalized up to the Myanmar Embassy/Consulate in the country where the applicant company is incorporated, or (in the absence of such embassy/consulate) the nearest Myanmar Embassy/Consulate. Previously, this requirement only applied to the Power of Attorney document, whilst the Declaration documents only needed to be simply signed.
The Registration Office is enforcing the new regulation strictly, with no grace period or exception made to comply. Unfortunately, this means that prospective applicants who have already executed documentation based on the old requirements will have to wait until they perfect the execution accordingly, before the Registration Office will accept their applications.
Source: www.ellacheong.asia
May 29, 2012 (Newsletter Issue 9/12)
Multiple Class Registration Now Possible
The Registration Office is now accepting multiple class registration. Previously this was objected.
It depends on the Registrar, and the new officer is currently allowing one application covering multiple classes.
Source: Tin Ohnmar Tun & The Law Chambers, Myanmar
The Trademark Law in Myanmar was passed into law on 30 January 2019. However, the Law is still pending to enter into force. Hence currently, trademark registration in Myanmar can be done in conformity with the "Old System" and the"New System".
Old System:
Myanmar does not have a specific trademark law. Myanmar is expected to enact a Trademark Law around the end of 2018. The draft of the Trademark Law as made available for public consultation in September 2017 adopted the registration proceedings used in other WIPO member states.
Currently, trademarks can be registered with the Myanmar Registration Office (Registry of Deeds and Assurances) under Section 18(f) of the Registration Act and Direction 13 issued under the Registration Act by refiling a Declaration of Trademark Ownership (“DTO”) with the Registration Office.
One DTO can cover one trademark for one or several classes of goods or services. There is neither examination nor opposition proceedings. The registration is granted in 4 to 6 weeks if the Registrar finds the DTO conform with the Registration Act. Once the trademark is registered, it is a practice to publish a Cautionary Notice (“CN”) in a local newspaper in order to notify the public of trademark ownership and to discourage infringement of the trademark.
To register a trademark in Myanmar, the required documents are (1) a specimen of the trademark, (2) a list of goods or services, (3) a DTO signed by the applicant and notarized by a notary public, and (4) a Power of Attorney (“POA”) signed by the applicant and notarized and legalized by the Embassy/Consulate of Myanmar in the applicant’s country.
Each document executed abroad must be filed in Myanmar within 3 months from its arrival date to Myanmar.
A trademark registration is valid without an expiry date. However, it is a practice for the owner of a registered trademark in Myanmar to publish a CN every 3 years to notify the public that the trademark is still owned by the owner or to re-register a DTO of the mark with the Registration Office every period of 3 years.
The actual use of a trademark in the local market is essential and the Court takes it into account in conjunction with its registration and publication when the Court considers a dispute in relation to the trademark.
The New System under the New Trademark Law:
Myanmar enacted its trademark law in 2019 but the law has not entered into force. The regulations for trademark registration are currently drafting and Web-based registration system also under construction. Currently the trademarks can be registered under the old system.
The Nice Classification is used for registration of a DTO but it is not officially adopted by the Registration Offices. After the enforcement of the new law, the Nice classification will be officially adopted.
As Myanmar does not have a trademark law, there are no clear guidelines on what constitute a registrable trademark. Under the Registration Act 1908, any visually perceptible sign, such as a word, device or their combination, can be registered as a trademark.
There is no Patent and Trademark Registration Office in Myanmar. Application is to be filed at the Myanmar Registration Office (Registry of Deeds and Assurances).
Applicant files the DTO and the POA with the Registration Office.
Registration is granted and registered DTO is returned to the applicant.
Applicant publishes CN in a local newspaper.
New System:
The Myanmar Trademark Law implements the “first-to-file” system from the previous “first-to use” System. Myanmar government (IP Section) will introduce procedure and implement trademark application in the very near future. Said period will last for 3 or 4 months. The Myanmar Trademark Office will mechanize the trademark registration process by utilizing an online e-filing system (IPAS), provided by WIPO.
All reregistration process shall be implemented by means of e-filing system. Seniority and/or prior rights and/or use can be claimed at the time of online e-filing process. But applicant shall need to provide relevant evidence. Therefore, previous DTO and cautionary notices will play a vital role for recognizing seniority and/or prior rights and/or use.
Multi-class applications will be allowed in Myanmar.
The trademark application date of any re-registered trademark shall be 1st January 2020.
The trademark registration shall be issued after fulfillment of formality process.
With regard to trademark application/registration fees, Myanmar Trademark Office awaits approval from Union Government of Myanmar. After the approval and/or permission from the Union Government, the Myanmar Trademark Office will declare all official fees relating with trademark application/registration.
The Trademark Gazette will be published bi-weekly in a digital format.
National:
There is neither examination nor opposition proceedings. Cancellation in Court is available post registration of a trademark. The new System to be implemented by enforcement of the pending new trademark law shall have examination and opposition proceedings.
N/A
Practical details on grace periods for trademark renewals are available in our publication
hereThe official fee for filing a trademark application is MMK 6.
Under the new system, it is expected that a trademark application, initial single mark/single class will be approximately MMK 260 to 310. Additional class shall be MMK 10 or 15.
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Mar 06, 2021
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