Following our Myanmar Update on the New Trade Mark Law from September 2018, this Update is to report on the recent progress of the New Law.
Myanmar’s legislative process requires that a Bill be passed by both houses of the Legislative Assembly and given assent by the President of the Union. The law will come into force on the day of its publication in the Government Gazette. As of 12 December 2018, both houses of the Myanmar Legislative Assembly have passed the Trademark and Geographical Indication Law, but it must still proceed though the requisite formalities of assent and publication before becoming effective. In this regard, we expect Myanmar’s long-awaited Trademark and Geographical Indication Law to be promulgated within the first few months of 2019, and below is our summary of the Law and recommended steps for trademark owners preparing for its imminent implementation.
First-to-file system
The biggest change from what was proposed in earlier versions of the Law is the lack of a re-registration process from the current system to the new system, along with a strict first-to-file system. Therefore, brand owners should be prepared to file all their important trade marks on the first day the Law comes into effect.
No automatic transposition of current trade mark registrations
The Law does not provide for automatic conversion of registrations under the current régime to registrations under the new, and mark owners must file new applications to obtain protection for their marks. It is expected that there will be a three to six month transitional period after the Law’s promulgation during which owners of registrations under the old system can re-register their marks. As the mechanisms of claiming priority in the new applications back to previous registrations remain unclear at this point, we strongly recommend that mark owners aim to file their new applications on the first day the Law becomes effective or very shortly afterwards.
How to ensure your marks are protected
As the Law will be based on the first-to-file principle, we strongly suggest that mark owners:
- Immediately undertake an updated comprehensive analysis of their current Myanmar trade mark portfolio and decide which marks are important to their current and future commercial ventures;
- Undertake a cost-benefit analysis to determine which trade marks to file on Day 1 of the new Law;
- Budget for the cost of filing for all necessary marks on Day 1;
- Coordinate with counsel in preparing all applications and supporting materials as soon as possible to be ready for the multiple filings on Day 1.
We advise that, for re-registration of marks under the new Law, it is likely that the original Duly Stamped Declarations of Ownership will be required to be filed along with the new applications as evidence that the mark has been registered under the current system.
We expect further updates very soon and will keep you updated on any developments on this issue.
Should you need further information on protecting your marks in Myanmar, please do not hesitate to contact us.