If you are working in Asia. This Deacons article might be of interest.
This circular is to alert you to substantial changes to Myanmar’s trade mark regime. Myanmar has been working on improving protection for intellectual property as part of its plan to overhaul its legal framework to facilitate and encourage foreign investment in the country.
The Upper House of the Myanmar Parliament passed the Trademark and Geographical Indication Bill on 15 February 2018. The proposed new Trademark Law will bring Myanmar’s trade mark regime more in line with international standards, including the adoption of the Nice Classification. The Bill still needs to be approved by the Lower House but it is expected that the new law will be in effect and implemented as early as around June 2018.
At present, there is no formal trade mark registration system or trade mark database in Myanmar. The current practice is for trade mark owners to submit a Declaration of Ownership of a trade mark and register the Declaration with the Office of the Registrar of Deeds and Assurances. Once the Declaration is registered, a Cautionary Notice is published in a local newspaper or a weekly journal to put the public on notice of the claim to ownership of the trade mark and to warn against any potential infringement. However, trade mark owners still need to show first use in Myanmar for enforcement purposes.
First-to-File Rule to be Adopted
A key feature of the new law is the adoption of a first-to-file rule which will replace the first-to-use principle. Trade marks protected under the current Declaration of Ownership system will NOT be carried over to the new system. Marks recorded under the old system will need to be re-applied for under the new law. Currently, there is no provision for any transitional period to allow owners of trade marks recorded under the old system to re-apply in advance of general applications. It is possible that this may be announced at a later date, but this has not been officially confirmed.
In the meantime, trade mark owners with existing Declarations of Ownership should prepare to re-file applications for their marks in all relevant classes as soon as possible. Our understanding is that the original Declaration of Ownership will need to be submitted.
This will also be an important opportunity for all trade mark owners to consider filing in Myanmar and to review their portfolios to ensure that applications for key marks in relevant classes are filed as soon as the new system is available. It is also advisable to audit portfolios to check that any housekeeping matters (such as changes of name or address, or portfolio re-organisations) are addressed.
Other Key Changes
- Under the Trademark Bill, a mark is defined as any visible sign, or combination of signs, including proper names, letters, numbers, figurative elements or combination of colours, which enable a good or service to be distinguished from other goods and services. The expression covers collective marks and certification marks.
- Distinctiveness is a key requirement for registration but the law recognises acquired distinctiveness by reason of continued use in good faith in commerce in Myanmar.
- Priority may be claimed in Myanmar under the Paris Convention.
- Applications will be subject to formalities and substantive examination.
- The law provides for opposition, invalidation and cancellation. In particular, a registration may be cancelled if the mark has not been used for a consecutive period of 3 years.
- There are specific provisions regarding the protection of geographical indications, trade names and well-known trade marks. “Well-known” is defined in the law as being well-known in Myanmar in accordance with criteria set by the Ministry of Education of the Union Government.
- Trade mark registrations will be valid for 10 years from the filing date, with renewal every 10 years.
- As part of the new regime, a new official body, the Myanmar Intellectual Property Office will be established.
The Bill sets out both civil and criminal liability for trade mark infringement and also provides for enforcement through Customs, interim injunctions and evidence preservation orders. Please note that the Bill still has to go through the Lower House of the Myanmar Parliament so there is a chance that there may still be changes. Further, implementing regulations are also expected to clarify aspects of the Bill, but the timetable for the publication of these have yet to be announced.
What action do you need to take now?
- Owners of existing Declarations of Ownership should now prepare to re-file their marks in all relevant classes.
- Owners of all other trade marks should also be prepared to file. It is not yet clear how conflicts between the many applications that may be filed on the same day will be resolved, or whether owners of marks recorded under the old system will have any enhanced grounds of objection, but this makes it all the more important to file quickly. Although the law does provide that marks infringing upon the intellectual property of others, marks applied for in bad faith, and marks that are identical or similar to well-known marks, may not be registrable, it is not clear how these provisions will be implemented as they have yet to be formalized. Therefore, it will be safer to file quickly than to test the provisions.
New laws and regulations to facilitate foreign investment in Myanmar will mean significant new trade and investment opportunities for international businesses. We recommend that businesses review their brand protection strategy now in preparation for the transition.
However, despite the lifting of economic sanctions, it is important to be aware that certain Myanmar-related restrictions remain in place. Also, financial transactions involving Myanmar may still be subject to enhanced anti-money laundering due diligence requirements or anti-corruption laws, which can complicate, or deter, certain commercial activities involving Myanmar. Sanctions programs can change rapidly and be extremely complex. It is crucial for foreign businesses to conduct proper due diligence prior to conducting business in Myanmar and to ensure compliance with sanctions and other regulatory risks including human rights.