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MYANMAR: Update on Trademark Law Soft Opening

Steps are now underway to putting into practice Myanmar’s new Trademark Law, which passed on January 30, 2019. During the current soft opening period, trademark owners have exclusive access until at least March 2021 to re-file their trademarks in Myanmar electronically with the Department of Intellectual Property and obtain an earlier filing date, prior to the registration process opening to anyone more generally.

The new law will effectively replace the traditional mode of trademark protection by way of registration of declarations of ownership (DTO) and publication of Cautionary Notices with a statutory framework, which is more aligned with international standards. The new Trademark Law was designated to be implemented in two phases from 2020, namely, a qualifying soft opening and a grand opening.

The grand opening refers to the period when it is open to anyone who is interested in seeking protection in Myanmar but does not have a prior registration or prior use in Myanmar, to file an application for registration of his trademark under the new trademark laws.

At the end of August this year, the Myanmar Ministry of Commerce announced that the much-awaited soft opening would commence on October 1, 2020. The soft opening period is a priority window period which allows trademark owners with previous registrations, or that have been using their trademarks in Myanmar, to re-file their trademarks in Myanmar and obtain an earlier filing date compared to those that have neither a previous registration, nor used their trademark in Myanmar. This soft opening is expected to last for a period of six months until the end of March 2021, or the effective date of the Trademark Law to be announced by the President of Myanmar, whichever comes later.

Trademark owners qualifying for the soft opening, as indicated above, will need to provide the following for purposes of re-filing:

• Clear specimen of the mark (must be same as registered under the DTO);
• Applicant details: name, complete address, registration and contact numbers;
• Classes of goods or services for which the registration is sought;
• Description of goods or services following the Nice Classification (specifications need to be same as registered under the DTO);
• Declaration of Ownership of the Trademark already registered in Myanmar;
• Cautionary Notice already published in Myanmar (if any);
• Description of color claimed and color code, if the mark is to be filed in color;
• Proof of transfer of rights or name change of the trademark owner (if applicable); and
• If the mark is already used but not registered, evidence of use and the date of first use in Myanmar.

As there were no prescribed provisions for description of goods and/or services previously, registrations filed under the old DTO regime may or may not follow Nice classification. For purposes of re-filing within the soft opening, the goods and services filed must be identical with those filed under the DTO regime. There will be an opportunity to amend the same during examination stage, albeit a limited one, in that the specification cannot be expanded to include new goods and/or services.

The official fees as well as the official format (and formality) of the Power of Attorney (POA) required to be filed are yet to be announced or released by the Ministry of Commerce. It is widely expected that this information will only become available just before the grand opening, and hence the collection of fees and submission of the POA will be made at that time. Trademark owners can re-file their trademarks without the requisite POA and fee payment but will be expected to complete these formalities at a subsequent date.

By: Gladys Mirandah

A version of this article first appeared in the INTA Law & Practice.