E-briefing: Myanmar’s New Trademark Law- Save the date for the Soft Opening – End of December 2019

Myanmar’s Trademark Law (“TML”) was signed into law on January 30, 2019 and will be implemented in 2020. The TML establishes a framework for a comprehensive trademark registration system open to both foreign and domestic trademark owners. The introduction of Myanmar’s new trademark law shall be introduced in namely, two phases; the Soft Opening and the Grand Opening.

Soft Opening: Exclusive period for existing Trademark Holders to re-file

The soft opening phase is a six-month period whereby the Myanmar Department of Intellectual Property (“MDIP”) will only accept applications to re-register old registrations with the trademark owners who have previously recorded their trademarks with the Office of Registration of Deeds (“ORD”).

Myanmar will implement a “first-to-file” system, by which, earlier filed applications will take precedence at the time of grant. Since all marks currently recorded would not be given automatic recognition, the existing marks need to be re-filed and examined once the new law enters into force in order to gain protection in Myanmar.

The online process for re-filing trademarks under Myanmar’s new Trademark Law is expected to be opened by end of December 2019. If you have existing rights in Myanmar, be sure to confirm your instructions with your agents to re-file the marks as the existing rights are not automatically recognized.

Trademark Re-registration Steps under the TML

An overview of the Re-Registration Steps is as follows: - 

Step 1. Filling of Application

Step 2. Formalities Check

Step 3. Absolute Ground Myanmar Examination

Step 4. Publication

Step 5. Substantive Examination (Post opposition period)

Step 6. Registration or Rejection

Requirements for Application

The details required for the re-filing of marks are as follows: -

• Clear sample of the proposed mark;
• Name and address of individual applicant or legal entity;
• Classes and list of goods/services;
• Claim of priority (if any) and its supporting documents;
• Claim of colours of the mark;
• Recordation of the declaration of ownership or renewal with ORD;
• If the trademark is already used in Myanmar, evidence of use and the first date of use; and
• Power of Attorney, which will be prescribed by MDIP.

In the meantime, it is highly necessary that any trademark assignments or changes to the owner’s name and address are to be updated at the ORD under the current practice.

The following information must be confirmed as being the same as the existing declaration with the ORD: -

• Image of the recorded mark;
• Recorded owner’s name and address;
• Recorded classes and list of goods and/or services; and
• Registration number and date.

It is important to note that in the event, the information in the previous recordation do not correspond with the details of the application that is filed under the new Trademark Law, that trademark cannot be registered until after the grand opening.

MDIP may periodically announce additional requirements or stipulations as the soft opening period progresses.

Grand Opening: New Trademark Applications

All new trademark applications, and applications for any amendments or updates to existing trademarks, will only be possible after the MDIP’s grand opening that is expected to be in July 2020.

Under the new law, the marks shall be registered for a period of 10 years from the date of application and renewal may be filed six (6) months prior to the renewal deadline.

For further information contact:

Brian Law

Partner, Regional Head of IP

Eversheds Harry Elias

brianlaw@eversheds-harryelias.com

+65 6361 9303

Esther Wee

IP Counsel, Registered Foreign Lawyer

Eversheds Harry Elias

estherwee@eversheds-harryelias.com

+65 6361 9350