Say Hello To Myanmar’s New Trademark Law (Part 1)

Years of international anticipation for Myanmar’s enactment of its first specialized trademark law culminated in the Pyidaungsu Hluttaw (Combined House of Parliament)’s Law No. 3 of 2019 (hereinafter “the Law”), approved on 30 January 2019. The President of the Union has now given his assent to the Law, which will take full effect on a later date as yet to be specified by the President under Section 1(b) of the Law.

In this Update, we would like to help our clients familiarize themselves with the new trademark protection régime soon to take hold in Myanmar. Pertinent provisions of the Law have been summarized for your ease of reference below:

1. Creation of New State Organ

The Central Committee

Section 4(a) obliges the Myanmar government to constitute the Central Intellectual Property Rights Committee charged with policy, strategy and business planning in terms of the country’s intellectual property agenda, as well as coordinating with internal and international bodies for purposes of developing Myanmar’s intellectual property system. The Vice-President of the Union will act as the Committee’s President, whereas Intellectual Property experts and NGO representatives are to be included as Committee Members.

The Agency

The Central Committee is obliged by Section 6(a) to establish the Intellectual Property Agency to undertake implementation of the national Intellectual Property policies as set out by the Central Committee through coordination with relevant local organizations. The agency is also importantly charged with responsibilities of considering appeals filed by trademark applicants against the Registrar’s refusals.

The Directorate

Section 9 of the Law requires establishment of a Directorate responsible for keeping intellectual property registers.

Registration Officers and Inspection Officers

Registration and inspection officers are to be appointed by the Ministry of Commerce. The inspection officers have duties in examining applications and objections submitted by trademark applicants, ordering submission of documentary evidence for interrogative purposes and submitting registration or refusal recommendations to the registration officers. The registration officers are authorized to make final decisions on registration or refusal of trademark applications.

Our Comments

Currently, none of the relevant organs has been created, and it remains unclear even where the offices of these organs will be located (i.e. in Naypyidaw or Yangon). Creating new organs and appointing new officers who need to be trained under the Law will require a considerable amount of time. Thus, it is not expected that the President of the Union will issue a Notification setting the Law’s effective date any earlier than September 2019.

2. Registration Process

Sections 15 to 22 of the Act sets out the trademark application process as:

• An application to register a trademark must be written in either Burmese or English and submitted to the Directorate.
• Due to a recent change in the law requiring all documents to be submitted to Myanmar government agencies to be translated in Burmese, we recommend filing in Burmese. However, the inspecting officer may request the application be translated into English in certain circumstance. Any authorization of agents for trademark registration purposes in Myanmar also empowers the agents to certify correctness of translations on the applicant’s behalf.
• The application must specify the applicant’s name and address (in case of a juristic person applicant, its type and registration number), clear description of the mark, descriptions of goods/services claimed (following the Nice Classification system) and any document constituting strong evidence of the applicant’s right to claim priority.
• Section 17(b)(4) requires that, if a mark was registered previously at the Office of the Registration of Deeds, documents evidencing such registration (i.e. original Duly Stamped Declaration of Ownership) must also be submitted with the application under the Law.
• Filing date of an application is the date on which the application is received by the Directorate.

Our Comments

Section 17(b)(4) seems to accord certain priority rights to marks previously registered at the Office of the Registration of Deeds. However, there is no indication of how far back priority can be claimed in this regard. It is expected that the relationship between prior registration of Declarations of Ownership and new registrations under the Law will be formally dealt with in implementing regulations yet to be formulated. Due to the lack of clarity on this point, we highly recommend that current trademark owners refile for registration of their marks under the Law on Day 1 of its effectiveness or very shortly after in order to avoid any doubt arising from priority issues.

Sections 15 to 22 of the Act sets out the process for examination and trademark registration as follows:

• If the inspection officer deems an application deficient under either the formal or substantive requirements, s/he will notify the applicant of this decision, and the applicant will have 30 days from the date of receiving the Notice to rectify the deficiency. Failure to submit a rectification by the 30-day deadline will result in forfeiture of the application, while the applicant will still have a chance to apply for revival of her/his application within 60 days after the forfeiture.
• Once all formal and substantive conditions are deemed satisfied, the Registrar shall order publication of the application. During the 60-day publication period, opposition can be filed by any person upon payment of official fees. Both inherent and relative registrability grounds can be raised by the opposer.
• If no opposition is filed, the Registration Certificate will be issued.

3. First-to-File System

• Where several applicants have filed for an identical mark or similar marks on different dates, Section 19 obliges the Registrar to register the mark which has the earliest filing date (or the earliest priority date if applicable).
• Where several applicants have filed for an identical mark or similar marks on the same date, Section 20 obliges the Registrar to instruct the relevant applicants to negotiate and re-submit the relevant applications which have been modified according to the agreement reached at the end of such negotiation. If the parties cannot agree, the Registrar will make the final decision.

4. Priority

• Section 31 allows an applicant to claim priority back to a foreign application, whereas such priority application must have been filed in a country which is a member of the Paris Convention or the WTO no earlier than 6 months prior to the filing date in Myanmar.

Our Comments

At this point, it is unclear how examination of trademark applications would commence after Day 1 of the Law’s effectiveness. As convention priority can be claimed, would the Directorate start examining applications without priority claims 6 months after their filing in order to ensure that all relevant priority marks have been entered Myanmar and similarity examination would be comprehensive? As mentioned above regarding claiming priority back to registrations made at the Office of the Registration of Deeds, we recommend filing on Day 1 or very shortly afterwards in order to avoid complications arising from questions of priority.

5. Mark Registrability

Section 2(j) defines a mark as any marking that can be seen by the eyes including proper names, alphabets, numbers, shaped designs and color combinations, which make a product or service different from other products or services. As such, auditory and olfactory marks are precluded from protection under the Law. Trademarks, service marks, collective marks and certification marks are the types of marks recognized under the Law.

Sections 13 and 14 set out grounds for rejecting a trademark, which include, inter alia:

• The subject mark lacks distinctiveness.
• The subject mark is descriptive of the type, quality, quantity, use, price, origin, time of production, or other characteristics of the goods/services claimed. However, descriptive marks may registrable if the applicant can show that either:
  • The mark has acquired distinctiveness through its use, or
  • The applicant has been using the mark honestly, continuously and solely in the relevant trade within Myanmar.
• Registration of the mark would disrupt peace, tranquility or morality of Myanmar. Under Section 52, if a mark has been rejected on this ground, its use is also prohibited with criminal penalties entailed.
• The mark has become common vocabulary of current or practical usage.
• The mark consists, whether in whole or in part, of an element identical or similar to the flag, memorial feature, symbol, or initial of a nation or an international governmental organization.
• The mark is identical or similar to a prior mark registered or applied for by another party in relation to identical or similar goods/services.
• The mark is identical or similar to a famous (well-known) mark, regardless of goods/service similarities, if it indicates that there is a connection between the famous (well-known) mark’s owner and the applicant.
• The application was filed in bad faith.

6. Prosecution and Appeals

• Section 21 authorizes the applicant to file for amendment of typographical errors, division of application or to restrict the goods/services originally claimed, with payment of official fees.
• In case the original application is subsequently divided, the filing date of the original application will apply to all divisional applications.
• Under Section 65, if the applicant disagrees with the Registrar’s objection and does not wish to file a rectification according to the Registrar’s order, the applicant may file an appeal against such decision to the Agency within 60 days after announcement of the Registrar’s objection. Additional evidence can be introduced under this appeal.
• Under Section 66, if the applicant disagrees with the Agency’s decision, the applicant may appeal such decision to the relevant court within 90 days after receipt of the Agency’s decision.

7. Term and Renewal

• Section 34 establishes that a trademark registration is valid for 10 years from the application filing date.
• Section 35 allows for renewal of trademark registrations, which can be filed any time within the 6 months preceding the expiration date. A 6-month post-expiration renewal grace period is also established under Section 35(b), where late renewal is possible upon payment of additional official fees.

In the course of the next weeks, we shall be publishing Part 2 of this update, which will deal with rights conferred by trademark registration, trademark cancellation, enforcement and legal action against infringements.

Please stay tuned, and should you need further information on protecting your marks in Myanmar, please do not hesitate to contact us.