New trademark registration system expected in Myanmar

Myanmar’s new Trademark Law, enacted last year, establishes the framework for a comprehensive trademark registration and protection system, which will enter into force soon.

This is relevant and important to both foreign and domestic trademark owners, who should review their portfolio in light of these significant legal changes.

The law is also a positive move for businesses in Myanmar as they have long relied on outdated colonial-era laws to protect their intellectual property rights.

The Myanmar Times spoke to Anja Schwarz, a lawyer with Luther Law Firm who specialises in intellectual property, about the changes under the new system and what it means for the business community.

What is the current situation and what will change?

In the past, trademark protection in Myanmar was obtained by filing a Declaration of Ownership with the Registration of Deeds Office and publishing the trademark via a Cautionary Notice in a Myanmar newspaper.

This will change with the implementation of Myanmar’s new trademark registrations system, scheduled to become effective in early 2020. In the first “soft opening” phase, which is expected to last for six months, trademarks registered under the former system may be refiled with the new register, allowing such trademarks to claim seniority rights, meaning that in the event of a dispute, they will prevail against trademarks which have been filed at a later point in time.

Aside from trademarks that have been registered by filing a Declaration of Ownership, trademarks which have been put to actual use in Myanmar – without any formal registration – may also be accepted for registration.

Upon completion of the soft opening period, all applications for registration will be reviewed and trademarks meeting the formality requirements will be published for opposition purposes, if there are no absolute grounds of refusal.

Thereafter, the new register will accept the filing of any trademark registrations, including such that have not previously been registered or used in Myanmar.

What should trademark owners and companies be aware of?

Trademark owners should review their portfolio and decide which of their trademarks have to be registered under the new system for protection in Myanmar. International trademark owners should further be aware of the common miss-use of well-known international marks in Myanmar and be ready to oppose any filings which violate their rights.

It is important to note that the re-registration during the soft opening period must be done by the same trademark owner and with the same scope of protection, which can however on request be limited.

If a trademark shall be registered in the name of a new owner – for example if the trademark is currently registered in the name of a Myanmar subsidiary, but shall be re-registered in the name of the foreign holding company – a record of the assignment or transfer of the ownership has to be lodged prior to the filing. Seniority rights will only be granted for trademarks registered in the name of the previously registered owner.

Although it is assumed that all trademarks re-registered during the soft opening period will be accorded the same filing date, namely the date falling on the last day of the soft opening period, an early application is recommended to avoid any unpleasant surprises arising from unexpected delays.

After the soft opening period, trademark owners will no longer be allowed to refile previously registered trademarks claiming seniority, but will have to submit new applications for the registration of their trademarks.

Why is this a key development in Myanmar’s efforts to establish a modern intellectual property regime?

Myanmar’s new Trademark Law 2019 establishes the framework for a comprehensive trademark registration and protection system in line with international standards. This is an important step by the government to attract new investments, relevant for both foreign and domestic trademark owners.

Although some details remain to be published (such as the fees), the enactment of the new law represents an important milestone in Myanmar’s transition to a modern trademark system. – This interview has been edited for length and clarity.

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Source : Myanmar Times

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