Considered by many to be one of the last economic frontiers, Myanmar has been the object of significant investment interest. Its potential for growth is unparalleled – and the protection of intellectual property is essential to developing its business environment.
Despite joining the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) in 1995 and the World Intellectual Property Organization (WIPO) in 2001, protection of IP in Myanmar still mostly relies upon common law. The current Copyright Act provides protection for original literary, dramatic and artistic works if they are published in Myanmar or, if unpublished, would be deemed the work of an individual or entity in Myanmar at the time of creation.
Growth of Myanmar’s IP landscape
A new IP regime presently being drafted is expected to result in redesigned laws that enhance the protection of copyrights, trademarks, patents and industrial designs. The new legislation will also align Myanmar’s legal framework on IP laws with international standards. Most importantly, it will establish a Myanmar IP Office for the administration and protection of new IP. Signing international treaties will be the eventual aim, and this is a welcome and long-overdue step in the right direction for the country.
As per the ASEAN Economic Community’s Harmonisation plan, Myanmar is set to accede to the Madrid Agreement Concerning the International Registration of Marks (known as the “Madrid Protocol”). This will mean that Myanmar trade mark filings will be able to be done in conjunction with other Madrid-signatory countries, in one language only and abiding by a standard schedule of fees.
Myanmar announced the passing of its new Trademark Law in January 2019, under which law Myanmar will now operate on a first-to-file system in line with other ASEAN nations and international standard.
With this change, there is a transitional window period known as the “Soft Opening”, which is expected to last 6 months, followed by a “Grand Opening”, when new applications are accepted generally.
The Soft Opening (“SO”) is open only to trademark proprietors with prior registrations in Myanmar by way of Declarations of Trademark Ownership (“DTO”) and/or publication of cautionary notices, or who have been using their trademark in Myanmar, to re-file their trademarks before anyone else.
|Requirements for Re-filing:
- Clear specimen of the mark (must be same as registered under the DTO)
- Applicant’s details such as name, complete address, registration and contact numbers
- Classes of goods and/or services for which the registration is sought
- Description of goods and/or services as per NICE Classification (specification needs to be the same as the registered under the DTO)
- Declaration of Ownership of Trademark that is already registered in Myanmar
- Cautionary Notice that is already published in Myanmar (if any)
- Description of colour claimed and colour code, if the mark is to be filed in colour
- Proof of transfer of rights or name change of the trademark owner (if any), and
- If the mark is already used, evidence of use and the date of first use in Myanmar
- Power of attorney, as per format to be provided by authorities.
During the six-month period, an unregistered mark that is already in use in Myanmar may be filed only by the applicant with appropriate evidence of use. The requirements are similar in re-filing, but with substantial proof of use in place of the documentary evidence of prior registration. The evidence may include:
- Cautionary notices published in local newspapers;
- Evidence of use or promotion of goods or services bearing the mark in Myanmar;
- Tax receipts or expense vouchers; and
- Any other appropriate evidence.
Official fees and format of the Power of Attorney are not announced at this time, and are expected to be declared and collected at the end of the 6-month window period.
In light of the recent events in Myanmar, the announcement of the Grand Opening has been suspended. Meanwhile, those who wish to avail themselves to the Soft Opening may file a “Declaration of Ownership of Trademark” pursuant to Section 18 of the Registration Act. Each trademark must be filed using one Declaration separately.
The minimum requirements for trademark registration in Myanmar are as follows:
- Applicant needs to be a Myanmar national or juridical person or, if a foreign applicant, must act through an agent with an address for service inside the country;
- Applicant must execute a Declaration of Ownership of Trademark pursuant to Section 18 of the Registration Act;
- A foreign applicant must execute a Special Power of Attorney in favour of the local agent; and
- It is customary to publish a “Cautionary Notice” in a Myanmar newspaper, advertising the mark holder’s ownership. It is also customary (and advisable) to republish the Cautionary Notice every three years to keep third parties on notice of the mark holder’s ownership
The relevant trademark must be in use and registered in the country of origin, although not necessarily in use in Myanmar yet.
The Power of Attorney and Declaration of Ownership must be executed and authenticated in the presence of a Notary Public. Notarial authentication requires diplomatic legalization at the Myanmar Embassy/ Consulate in the country where the Applicant’s company is incorporated. The Power of Attorney MUST be signed by the representative/officer of the company who signed the Declaration of Ownership.
After submission of the Declaration of Ownership of Trademark and Power of Attorney forms, the trademark application will then be registered. After registration, a Cautionary Notice will be published.
It is important to note that at the time of application for registration, all documents must have a validity period of three (3) months from the date of execution in their country of origin.
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